Legal Definitions - old-combination rejection

An old-combination rejection occurs in patent law when a patent examiner denies a patent application's claim because the specific combination of features or steps described in the claim is not considered new or inventive. This typically happens when the examiner finds that the claimed combination, or a very similar and obvious one, already exists in the "prior art" (existing patents, publications, or public knowledge) or would have been obvious to a person with ordinary skill in the relevant field at the time the invention was made. Essentially, while individual components might be known, the *way* they are put together to form the claimed invention is deemed to be an "old combination" rather than a novel and non-obvious advancement.

Here are some examples to illustrate this concept:

• Example 1: Smartwatch with Standard Features

  An inventor applies for a patent on a new smartwatch that displays the time, tracks the wearer's steps, and receives notifications from a paired smartphone. The patent examiner reviews the application and discovers existing prior art: one patent describes a wrist-worn device that displays time and counts steps, and another publication describes a separate device capable of receiving smartphone notifications. If the inventor's patent claim simply describes the combination of these already known functionalities in a smartwatch without any new or inventive interaction between them, the examiner might issue an old-combination rejection. The examiner would argue that merely combining these existing, well-known features is not a new or non-obvious invention, but rather an "old combination" of known elements.

• Example 2: Automated Coffee Maker with Existing Components

  A company seeks a patent for an innovative automated coffee maker that includes an integrated bean grinder, a drip brewing unit, and a programmable timer. During the examination process, the patent examiner finds numerous prior art references: patents for coffee makers with integrated grinders, other patents for coffee makers with drip brewing units, and even older patents for coffee makers with programmable timers. If the company's patent claim is for a coffee maker that *merely combines* these three well-established components without any unique synergy or novel method of operation resulting from their combination, the examiner could issue an old-combination rejection. The basis for the rejection would be that the specific combination of these existing components is already known or would have been obvious to someone skilled in the art of coffee machine design.

• Example 3: Online Learning Platform with Standard Modules

  An educational technology startup applies for a patent on a new online learning platform that integrates video conferencing capabilities, a discussion forum, and a multiple-choice quiz module. The patent examiner conducts a search and finds that there are many existing online platforms offering video conferencing, numerous platforms with discussion forums, and countless educational tools featuring multiple-choice quiz modules. If the startup's patent claim simply describes the integration of these standard, known functionalities into a single platform without any unique method of interaction, novel user experience, or inventive technical solution for their combination, the examiner might issue an old-combination rejection. The examiner would assert that the claimed combination of these widely available features is not new or inventive, but rather an "old combination" of existing technologies.