Primary reference/secondary reference

The Federal Circuit overruled the Rosen-reference test today with respect to design patents. The Rosen-reference test utilized a “primary” reference for obviousness analysis. In some oral arguments concerning utility patents, I think some of the younger Federal Circuit judges have infused “primary reference” into oral arguments when informally discussing utility patent obviousness. That always alarmed me, as it seemed improper. Today, however, I saw this quote from Judge Rich:

In a case of this type where a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary. It would perhaps have saved much argument of the kind we have before us if the Patent Office had stayed with its rejection of the claims as unpatentable over A and B “considered together” and had merely stated its reasons for such rejection without formal alinement of the references. Fifteen years ago this court pointed out in In re Cowles, 156 F.2d 551, 554, 33 CCPA 1236, that such differing forms of expression did not constitute different grounds of rejection, were of little consequence, and that basing arguments on them was “attempting to make a mountain out of a mole-hill.”

Application of Bush, 296 F.2d 491, 496 (C.C.P.A. 1961).

Comments are closed.