Five-reference rejection sent packing by the Federal Circuit back to the PTAB

You probably read the IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020) opinion and saw reference to the appeal concerning a five-reference rejection:

 It is unclear why the Board found a skilled artisan would be motivated to combine the five separate references. It is also unclear precisely what the Board was using the different references for in this five-reference rejection.

IN RE ANOVA HEARING LABS, INC., No. 2019-1507 (Fed. Cir. Apr. 7, 2020)(slip opinion at page 6 ).

There is more to the story. During the oral argument, Judge Moore highlighted that the rejection was a five-reference rejection and the concern that raised about hindsight bias:

So, here’s my problem — I feel like the Board’s opinion, for me, is troubling because it’s five references with wildly differently designed hearing aids. And, I don’t even understand really what it’s picking from some of the references that it says are missing in the primary reference. I don’t understand why it’s motivated to go to some of those references. And, I feel like there is a lot of hand-waving.

And, what I’m worried about is a five-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it’s even worse than that because I’m not sure which elements are being chosen from some of these references. I’m not sure what some of these references even add to the primary reference. That hasn’t been made clear to me. So, I am a little bit veiled in my understanding of the Board’s analysis.

Oral Argument of IN RE ANOVA HEARING LABS, INC., No. 2019-1507, beginning at 24:28.

You can listen to the entire oral argument here:

You can read the court’s opinion here: [Link].

(I have added this sound bite to my previous “Too Many References?” post.)

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