{"id":8299,"date":"2016-11-24T14:47:48","date_gmt":"2016-11-24T20:47:48","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=8299"},"modified":"2025-01-07T18:14:56","modified_gmt":"2025-01-08T00:14:56","slug":"too-many-references","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=8299","title":{"rendered":"Too many references?"},"content":{"rendered":"

The PTO might be setting itself up for an overruling of In re Gorman<\/em>, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991).  On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims.<\/p>\n

In the most recent comment, Judge O’Malley commented about an Inter Partes<\/em> reexamination in which combinations of four, five, six, and even seven references were relied upon by the PTO to reject claims:  [Listen<\/a>].<\/p>\n

In two previous appeals, Judge Moore had more pointed comments.<\/p>\n

In the oral argument of In re Neill<\/span>, she had this exchange with the PTO’s Associate Solicitor:<\/p>\n

\n

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

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

\n

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

\n

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\u2019s in homes and try to reduce the amount of storage you need in your home.  That\u2019s so different than pulling together these pieces \u2026 \u2018well, this one mentions in the background cost savings;<\/em>\u2019\u2026  \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 . . .  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

And, in one of the recent Data Treasury appeals, Judge Moore had these comments: [Comment to Patent Owner<\/a>] and [Comment to PTO<\/a>].<\/p>\n

I would not be surprised if Judges Taranto, Reyna, Newman (even though she authored In re Gorman<\/span>), and Hughes are in the same camp.<\/p>\n

Update 11\/25\/16:<\/span><\/p>\n

I forgot about a similar comment that Judge Rader made when he was on the bench.  Judge Rader was also part of the panel in In re Gorman<\/span>.  His comment from the oral argument of In re Medicis Pharmaceutical Corp.<\/span>, 2009-1291, (Fed. Cir. December 14, 2009) is available here: [Listen<\/a>].<\/p>\n

Update 12\/1\/16:<\/span><\/p>\n

Judge Hughes made a comment recently in the oral argument of ENDO PHARMACEUTICALS INC. v. ACTAVIS LABORATORIES UT, INC.<\/em>, No. 2016-1146 (Fed. Cir. Oct. 14, 2016). I think Judge Hughes might have been under a misimpression at the time that the Appellant was proposing a seven reference combination; nevertheless, his remark is interesting: [Listen<\/a>].  This is from an appeal of a district court decision, rather than an appeal from the USPTO.<\/p>\n

Update 7\/12\/17:<\/span><\/p>\n

Judge Reyna made comments in the oral argument of INTELLECTUAL VENTURES II LLC v. ERICSSON INC.<\/em>, No. 2016-1803 (Fed. Cir. Apr. 18, 2017) about the number of references used by the PTAB and expressed concern about hindsight: [Listen<\/a>] and [Listen<\/a>].  The court appeared to avoid having to deal with a six-reference combination by affirming a four-reference combination.  In footnote 2 of the decision, Judge Lourie writing for the court stated:<\/p>\n

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<\/a> The Board also instituted review of claims 1 and 2 based on a combination of six references, and later determined that the six-reference combination also rendered claims 1 and 2 unpatentable as obvious. Final Decision,<\/em> 2016 WL 380219, at *11-12. Because we affirm the Board’s conclusion based on the combination of Li, Yamaura, Zhaung, and Beta, we need not, and do not, reach the second combination.<\/p>\n<\/blockquote>\n\n\n

Update 4\/23\/2020<\/span>:<\/p>\n\n\n\n

In the oral argument of CPI CARD GROUP-MINNESOTA, INC. v. MULTI PPACKAGING SOLUTIONS, INC.<\/em>, No. 2019-1616 (Fed. Cir. Mar. 16, 2020), Judge Newman called a six reference combination “striking”:<\/p>\n\n\n\n

\n

So, here\u2019s my problem \u2014 I feel like the Board\u2019s opinion, for me, is troubling because it\u2019s five references with wildly differently designed hearing aids. And, I don\u2019t even understand really what it\u2019s picking from some of the references that it says are missing in the primary reference. I don\u2019t understand why it\u2019s motivated to go to some of those references. And, I feel like there is a lot of hand-waving.\u00a0<\/p>\n\n\n\n

And, what I\u2019m worried about is a\u00a0five<\/em>-reference rejection is the hindsight bias concern of just picking and choosing elements from lots of different random prior art and saying they work together. But here it\u2019s even worse than that because I\u2019m not sure which elements are being chosen from some of these references. I\u2019m not sure what some of these references even add to the primary reference. That hasn\u2019t been made clear to me. So, I am a little bit veiled in my understanding of the Board\u2019s analysis.<\/p>\nOral Argument of IN RE ANOVA HEARING LABS, INC.<\/em>, No. 2019-1507, beginning at 24:28.<\/cite><\/blockquote>\n\n\n\n

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And, I guess my concern is, when you’re in this patient population which is definitely sensitive and you’re talking about such a large number of references combining in such an unpredictable area, I am sort of not confident in what you’ve done.<\/p>\nOral argument of Biogen v. Iancu<\/em>, 2019-1364 beginning at 29:40.<\/cite><\/blockquote>\n\n\n\n

\n

In the instant case individual features seem to have been selected from different of the reference patents and compared with features shown in appellant’s drawings. In other words, it seems to have been held that by selecting features taken from five different patents, that is, one feature from one patent, another from another, etc., a device might be considered which would so closely resemble the drawings of appellant that his design would not be patentable over such possible construction.<\/p>\n\n\n\n

We feel constrained to disagree with the concurring conclusions reached by the tribunals of the Patent Office.<\/p>\n\n\n\n

In considering patentability of a proposed design the appearance of the design must be viewed as a whole, as shown by the drawing, or drawings, and compared with something in existence \u2014 not with something that might be brought into existence by selecting individual features from prior art and combining them, particularly where combining them would require modification of every individual feature, as would be required here.<\/p>\nIn re Jennings,<\/em> 182 F.2d 207, 208, 86 (CCPA 1950)<\/a>.<\/cite><\/blockquote>\n","protected":false},"excerpt":{"rendered":"

The PTO might be setting itself up for an overruling of In re Gorman, 933 F.2d 982, 18 U.S.P.Q.2d 1885 (Fed. Cir. 1991).  On at least three occasions in recent months, Federal Circuit judges have commented on the number of references that the PTO is relying upon to reject claims. In the most recent comment, Judge […]<\/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\/8299"}],"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=8299"}],"version-history":[{"count":32,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8299\/revisions"}],"predecessor-version":[{"id":12357,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8299\/revisions\/12357"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=8299"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=8299"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=8299"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}