{"id":1419,"date":"2009-12-28T14:03:05","date_gmt":"2009-12-28T20:03:05","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=1419"},"modified":"2009-12-28T14:53:15","modified_gmt":"2009-12-28T20:53:15","slug":"how-many-references-are-too-many","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=1419","title":{"rendered":"How many references are too many?"},"content":{"rendered":"<p>The Federal Circuit recently\u00a0decided <span style=\"text-decoration: underline;\">In re Medicis Pharmaceutical Corp.<\/span>, 2009-1291, (Fed. Cir. December 14, 2009), an appeal from the Board of Patent Appeals and Interferences.\u00a0 An interesting issue that\u00a0arose during oral argument was how many references\u00a0may the PTO reasonably\u00a0combine in making a 103 rejection.<\/p>\n<p>Many patent attorneys have been\u00a0frustrated at one time or another by an examiner seemingly\u00a0hell-bent on rejecting a claim by combining an endless number of references so that\u00a0all the elements of\u00a0the claim could be accounted for in a 103 rejection.\u00a0 Therefore, it was interesting to hear this exchange between Judge Rader and the Associate Solicitor for the PTO during the oral argument of <span style=\"text-decoration: underline;\">In re Medicis Pharmaceutical Corp.<\/span> as to how many references are too many: [<a href=\"http:\/\/www.717madisonplace.com\/wp-content\/uploads\/2009\/12\/2009-1291-excerpt-1.mp3\">Listen<\/a>].\u00a0 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.<\/p>\n<p>Those who have researched this issue in the past are probably familiar with the MPEP section 2145, V. which states:<\/p>\n<blockquote>\n<p class=\"PARA\">Reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention. <em>In re<\/em> <em>Gorman<\/em>, 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.).<\/p>\n<\/blockquote>\n<p>In light of the Supreme Court&#8217;s decision in <span style=\"text-decoration: underline;\">KSR Int&#8217;l Co. v. Teleflex, Inc.<\/span>, 550 U.S. 398 (2007),\u00a0 perhaps it would be clarifying for the Federal Circuit to\u00a0consider Judge Rader&#8217;s position in a forthcoming opinion.<\/p>\n<p>\u00a0At another point during the oral argument, Judge Rader commented about long-felt need.\u00a0 The patent\u00a0(which was on appeal from the Board after a\u00a0reexamination) concerned a facial cleansing product.\u00a0 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\u00a0shouldn&#8217;t that be a significant factor to consider in the obviousness analysis: [<a href=\"http:\/\/www.717madisonplace.com\/wp-content\/uploads\/2009\/12\/2009-1291-excerpt-2.mp3\">Listen<\/a>].<\/p>\n<p>The panel issued a Rule 36 affirmance of the Board decision.<\/p>\n","protected":false},"excerpt":{"rendered":"<p>The Federal Circuit recently\u00a0decided In re Medicis Pharmaceutical Corp., 2009-1291, (Fed. Cir. December 14, 2009), an appeal from the Board of Patent Appeals and Interferences.\u00a0 An interesting issue that\u00a0arose during oral argument was how many references\u00a0may the PTO reasonably\u00a0combine in making a 103 rejection. Many patent attorneys have been\u00a0frustrated at one time or another by [&hellip;]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[8],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/1419"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1419"}],"version-history":[{"count":20,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/1419\/revisions"}],"predecessor-version":[{"id":1441,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/1419\/revisions\/1441"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1419"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1419"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1419"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}