{"id":7950,"date":"2016-06-20T23:37:32","date_gmt":"2016-06-21T05:37:32","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=7950"},"modified":"2016-06-27T20:58:31","modified_gmt":"2016-06-28T02:58:31","slug":"cherry-picking-and-smushing-references-together","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=7950","title":{"rendered":"Cherry picking and smushing references together"},"content":{"rendered":"

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<\/span>. \u00a0During 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. \u00a0Judge Moore would further remark that the PTO was lucky that the standard of review for the case was very deferential.<\/p>\n

\n

Judge Moore: <\/span>How often do you see four reference obviousness rejections? <\/span>Because I\u2019ll be honest, I\u2019ve never seen one. <\/span>That\u2019s a lot of references you\u2019ve got to piece together to get to obviousness. <\/span><\/p>\n

Associate Solicitor for the USPTO:\u00a0\u00a0\u00a0 It\u2019s a good number of references; but, in this case the Examiner found the motivation to \u2026.<\/p>\n

\n

Judge Moore:\u00a0 The question I asked is actually quite personal.\u00a0 How often have you seen a four reference obviousness rejection; because, I never have.\u00a0 Not out of the PTO. Never.\u00a0 I\u2019ve seen people try to argue it in litigation, sure. But, I\u2019ve never seen the PTO go to four separate references and cherry pick items and then combine them together.<\/p>\n

\n

Associate Solicitor for the USPTO:\u00a0\u00a0\u00a0 Well, I don\u2019t know if I\u2019ve seen a four reference one; but, I don\u2019t believe that the Board\u2026.<\/p>\n

\n

Judge Moore:\u00a0 Or anything greater than four, let\u2019s be clear so that this deposition transcript reads right, four or greater. (Laughter) That\u2019s a lot of references!<\/p>\n

\n

Associate Solicitor for the USPTO:\u00a0\u00a0\u00a0 It is; but, the Examiner here . . . All of those references come from the same field of art.\u00a0 It\u2019s all the transmission and recording of video programming data\u2026.<\/p>\n

\n

Judge Moore:\u00a0 Yeah, but the whole reason that Cablevision came up with this invention was to get around Sony.\u00a0 Like the whole reason they came up with this is to get around the copyright problems with DVR\u2019s in homes and try to reduce the amount of storage you need in your home.\u00a0 That\u2019s so different than pulling together these pieces \u2026 \u2018well, this one mentions in the background cost savings;<\/em>\u2019\u2026\u00a0 \u2018and this one mentions in the background efficient bandwidth;\u2019<\/em> \u2026 \u2018and this one mentions<\/em>\u2019. . . . And then you\u2019re just like cherry picking random elements from these references and smushing them together to come up with the invention. And it\u2019s . . .\u00a0 I don\u2019t know, I mean you\u2019re awfully lucky this is a very deferential standard of review, that\u2019s for sure.<\/p>\n<\/blockquote>\n

[Listen<\/a>]<\/p>\n

I was very surprised that Judge Moore had never before seen a four reference combination coming out of the PTO. \u00a0Patent prosecutors who run into her at future bar events might want to relate their war stories. \u00a0We already have case law that says construing claims to read out a preferred embodiment is rarely if ever correct. \u00a0Perhaps 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.<\/p>\n

Here’s a link to an old post about cobbling snippets together: [Link<\/a>].<\/p>\n

You can read the Federal Circuit’s Rule 36 opinion [here<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

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. \u00a0During that oral argument Judge Moore remarked that it seemed like the PTO was merely cherry picking random elements of four different references and […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7950"}],"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=7950"}],"version-history":[{"count":10,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7950\/revisions"}],"predecessor-version":[{"id":7969,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/7950\/revisions\/7969"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=7950"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=7950"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=7950"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}