The Federal Circuit recently decided In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009), an appeal from the Board of Patent Appeals and Interferences. An interesting issue that arose during oral argument was how many references may the PTO reasonably combine in making a 103 rejection.
Many patent attorneys have been frustrated at one time or another by an examiner seemingly hell-bent on rejecting a claim by combining an endless number of references so that all the elements of the claim could be accounted for in a 103 rejection. Therefore, it was interesting to hear this exchange between Judge Rader and the Associate Solicitor for the PTO during the oral argument of In re Medicis Pharmaceutical Corp. as to how many references are too many: [Listen]. Judge Rader commented that when you start combining three references together rather than two, that suggests the person of ordinary skill has to have an awful lot of understanding.
Those who have researched this issue in the past are probably familiar with the MPEP section 2145, V. which states:
Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991) (Court affirmed a rejection of a detailed claim to a candy sucker shaped like a thumb on a stick based on thirteen prior art references.).
In light of the Supreme Court’s decision in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), perhaps it would be clarifying for the Federal Circuit to consider Judge Rader’s position in a forthcoming opinion.
At another point during the oral argument, Judge Rader commented about long-felt need. The patent (which was on appeal from the Board after a reexamination) concerned a facial cleansing product. And, Judge Rader noted that since the need for a good facial cleansing product has probably been in existence since the origin of mankind, that shouldn’t that be a significant factor to consider in the obviousness analysis: [Listen].
The panel issued a Rule 36 affirmance of the Board decision.