The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991). On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.
In the most recent comment, Judge O’Malley commented about an Inter Partes reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims: [Listen].
In two previous appeals, Judge Moore had more pointed comments.
In the oral argument of In re Neill, she had this exchange with the PTO’s Associate Solicitor:
Judge Moore: How often do you see four reference obviousness rejections? Because I’ll be honest, I’ve never seen one. That’s a lot of references you’ve got to piece together to get to obviousness.
Associate Solicitor for the USPTO: It’s a good number of references; but, in this case the Examiner found the motivation to ….
Judge Moore: The question I asked is actually quite personal. How often have you seen a four reference obviousness rejection; because, I never have. Not out of the PTO. Never. I’ve seen people try to argue it in litigation, sure. But, I’ve never seen the PTO go to four separate references and cherry pick items and then combine them together.
Associate Solicitor for the USPTO: Well, I don’t know if I’ve seen a four reference one; but, I don’t believe that the Board….
Judge Moore: Or anything greater than four, let’s be clear so that this deposition transcript reads right, four or greater. (Laughter) That’s a lot of references!
Associate Solicitor for the USPTO: It is; but, the Examiner here . . . All of those references come from the same field of art. It’s all the transmission and recording of video programming data….
Judge Moore: Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony. Like the whole reason they came up with this is to get around the copyright problems with DVR’s in homes and try to reduce the amount of storage you need in your home. That’s so different than pulling together these pieces … ‘well, this one mentions in the background cost savings;’… ‘and this one mentions in the background efficient bandwidth;’ … ‘and this one mentions’. . . . And then you’re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it’s . . . I don’t know, I mean you’re awfully lucky this is a very deferential standard of review, that’s for sure.
I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman), and Hughes are in the same camp.
I forgot about a similar comment that Judge Rader made when he was on the bench. Judge Rader was also part of the panel in In re Gorman. His comment from the oral argument of In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen].
Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC., No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen]. This is from an appeal of a district court decision, rather than an appeal from the USPTO.