Cherry picking and smushing references together

Patent prosecutors — and applicants disillusioned with the patent process — will be particularly receptive to the comments that Judge Moore made during the recent oral argument of In re Neill.  During that oral argument Judge Moore remarked that it seemed like the PTO was merely cherry picking random elements of four different references and smushing them together to arrive at the claimed invention.  Judge Moore would further remark that the PTO was lucky that the standard of review for the case was very deferential.

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 was very surprised that Judge Moore had never before seen a four reference combination coming out of the PTO.  Patent prosecutors who run into her at future bar events might want to relate their war stories.  We already have case law that says construing claims to read out a preferred embodiment is rarely if ever correct.  Perhaps we’ll see case law in the future that says combining four or more references together to reject an applicant’s invention is rarely, if ever, correct.

Here’s a link to an old post about cobbling snippets together: [Link].

You can read the Federal Circuit’s Rule 36 opinion [here].

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