Is it Obvious to Combine Five References?

by Dennis Crouch

On his (great) blog, Bill Vobach considers whether it is time to revisit In re Gorman, 933 F.2d 982 (Fed. Cir. 1991).   Gorman involved an obviousness rejection based upon a combination of thirteen references. The Federal Circuit rejected Gorman’s argument that the combination of a large number of references to support a rejection for obviousness “of itself weighs against a holding of obviousness.” See also, In re Troiel, 274 F.2d 94 (CCPA 1960) (rejecting appellant’s argument that combining a large number of references to show obviousness was “farfetched and illogical”).  The USPTO has regularized this holding within its Manual of Patent Examination Practice (MPEP) Section 707.07(f) (“reliance on a large number of references in a rejection does not, without more, weigh against the obviousness of the claimed invention”).  Of course, when Gorman was decided, the court also required some express motivation in order to combine references — that requirement was eliminated ten years ago by the Supreme Court in KSR v. Teleflex (2007).

I cannot recall any obviousness decision coming out of a district court that combines four or more references.  Neither Judges nor Juries will stand for that level of complexity.  The PTAB judges are so well trained in the complexity of technology and patent law that they are open to these poly-reference arguments in the AIA trial context.

Vobach, who reviews almost all of the Federal Circuit oral argument audio clips, reports that various judges have commented recently on the large number of references being relied upon in obviousness rejections.  Judge Moore most pointedly noting that “four or greater . . . that’s a lot of references!”

Two approaches for moving forward on the issue: (1) preserve the appeal and request en banc hearing; (2) argue that Gorman was reset by KSR.  An unlikely third approach might push Congress to move toward an European approach that begins the analysis with the closest single prior art reference and builds from there.

 

115 thoughts on “Is it Obvious to Combine Five References?

  1. The USPTO’s current strategy appears to be to issue a Sect. 101 rejection, and then back up that rejection with an unreasonable Sect. 103 rejection containing many references. Specifically, I’m seeing six and even seven-way obviousness rejections, but only in applications that also include a Sect. 101 rejection. My theory is that certain art groups have an internal policy to issue blanket 101 rejections, and then patch together as many references as needed to put a Sect. 103 rejection into the record. The frustration here arises from the fact that the claimed inventions are likely both new and non-obvious (based on the need to use seven references to establish all claimed elements), but the Office can sort of hide behind Sect. 101 and its current subjective standard.

  2. I heard the oral arguments in Gorman. Was an Examiner in the art unit. The Examiner who initiated the rejection was invited and I tagged along. Very memorable. The invention was a candy in the shape of a thumb including the packaging. Gorman’s attorney actually passed out samples to the judges. The site of them inspecting the candy thumb was hysterical.

    The claim was over a page and half long. The attorney started the oral argument. Judge Rich (I think) cut him off. Asked something like “Can you tell us, in one sentence, what the invention is?” When the attorney couldn’t answer in a coherent way, they were doomed.

    1. Wasn’t the claim 1 sentence long? Didn’t Judge Rich know that? Anything the attorney said that wasn’t exactly what was in the claim would have been wrong in one way or another.

      1. For the 10000th time the claimed invention isn’t the invention but is rather merely what the applicant regards as his invention for the purpose of legally claiming it.

        1. “…the claimed invention isn’t the invention…”

          Then what is? Some explanation so simple minded that even a technically illiterate judge, or patent examiner can understand?

          What is “the invention,” 6? Please explain.

          1. Context, people.

            As noted below by several commenters already, we could all start our claims with “A modified planet, wherein said planet comprises …[three million pages deleted]…and wherein said planet further comprise a piece of molded sugar, wherein said piece of molded sugar is substantially similar in size and shape to a human thumb, and wherein said piece of molded sugar comprises a stick configured to hold said molded sugar in place while it’s inserted gently into the human mouth.”

            Did this candy maker really invent a “new planet”? Only a patent lawyer would argue “Yes, because claim as a whole!”

            That’s why this idea that there is some magic number of references above which “not obvious” is d.o.a.

            1. “Here it is a candy with some packaging…”

              Right. And now that you’ve distilled it down to a “gist” you can easily dismiss it as “obvious.”

              I will often have lazy examiners ask me, “Well, what is the invention?” and it’s clear that they have no intent on actually doing their job, making their case of obviousness with the required evidence.

              Sad when federal appeals court judges are that lazy too.

              1. “I will often have lazy examiners ask me, “Well, what is the invention?” and it’s clear that they have no intent on actually doing their job, making their case of obviousness with the required evidence.”

                I think you might be mistaking cluelessness for “laziness” (being unenthusiastic). If they’re asking what the invention is, then tell them literally what it is. In like 99%+ of cases it’s as simple as saying “a candy with packaging”. And, in most actual complicated arts that actually helps an examiner that was clueless about what the invention actually was. And yes, that situation happens quite often with the diversity of subject matter appearing before examiners when they are not grandmasters. Just as a for instance, we had this guy asking about a case about a nozzle for this special machine in a meeting, and he wanted to know where to classify it. I said well I think we should look in the subgroup fro nozzles for this special machine. That’s fairly ez if you can tell what the invention is. Not so ez if you can’t. Same thing the other day this random examiner (primary) called me for “muh expertise”. And I walked him through everything but at the root of his not understanding the case was him not understanding what the case was (a stent with a special coating and special method of depositing the coating). Mostly though all of his issues stemmed from him not understanding what the subject matter was. Once I figured that out (it wasn’t that hard in that case) and told him, the rest of it is mostly ez.

                1. Is that the subject matter of the invention, and are you confusing the subject matter of the invention with the invention?

                2. “I think you might be mistaking cluelessness for ‘laziness’ (being unenthusiastic).”

                  So the examiners aren’t lazy, they’re clueless?

                  Wow.

                  Aren’t we constantly being told that examiners are “experts” in the art they examine? What happened to that?

                  “If they’re asking what the invention is, then tell them literally what it is. In like 99%+ of cases it’s as simple as saying ‘a candy with packaging’.”

                  Right. And of course the problem with that is when I tell the examiner, “The invention is a candy with packaging” the examiner cites a reference and says, “This reference shows a candy with packaging so the claims are obvious” and when I explain why the rejection is not proper, what I get back is, “But you said the invention was a candy with packaging.”

                  ” Same thing the other day this random examiner (primary) called me for ‘muh expertise’. And I walked him through everything but at the root of his not understanding the case was him not understanding what the case was (a stent with a special coating and special method of depositing the coating). ”

                  I guess they’ve lowered the bar for passing the sig program to below floor level at this point.

                  I remember you regaling us for years with stories of finding “knock out killer 102(b) art” with 5 second Google searches. Wonder what happened to change that.

                3. “Aren’t we constantly being told that examiners are “experts” in the art they examine? What happened to that?”

                  Expertise does not equal omniscience a d-hur. It also doesn’t make them grand masters. All being a primary means is you have some expertise and you produce a lot in a manner acceptable to management. Few examiners are grand master level much less elite ninja jedi grand masters like some regard me as.

                  “and when I explain why the rejection is not proper, what I get back is, “But you said the invention was a candy with packaging.””

                  And then you remind them of the difference between the claimed invention and the invention. As if you’re not a total ta rd. If that isn’t too hard for you. Which I’m guessing it probably is since you haven’t managed it yet. Cutting through the conditioning is difficult I grant you, at least on occasion. But, if you bring a-game knowledge of court decisions, mention old people by name, by case, and how such things are adjudicated by practice etc. etc. I have seen excellent results. It’s up to you to figure out where in the decision making process things are going awry and meet them on their terms. It’s called being persuasive, and its rumored to be part of the lawlyer’s jerb.

                  “I guess they’ve lowered the bar for passing the sig program to below floor level at this point.”

                  As long as you have the production and aren’t a complete screw up on “clear errors” yes it isn’t that difficult. They want those $$$.

                  “I remember you regaling us for years with stories of finding “knock out killer 102(b) art” with 5 second Google searches. Wonder what happened to change that.”

                  Funny enough I did find that guy some art pretty quickly. So badump shhhhh.

                4. “Cutting through the conditioning is difficult I grant you…”

                  Is that what you call the triumphant willful ignorance that pervades the examining corps, “conditioning”?

                  You funny.

                5. “And then you remind them of the difference between the claimed invention and the invention.”

                  Wow. You’re just as clueless as your comrades over there. The differences that matter are the differences between the invention, i.e. what is claimed, and the prior art.

                  You should know that by now. The fact that you don’t is pretty scary.

        2. I’m not sure what your point is here VI.

          Should the attorney have said that the invention is something other than what the applicant regards as his invention?

    2. The attorney should have just read the claim verbatim. Hard to believe somebody arguing a case at that level would swing and miss that badly at such a softball question.

      1. More like a spitball question.

        You have to pause for twenty breaths to read your claim but then you want to complain about the number of references cited? This was a no-win situation for Gorman.

        Note to Judge Moore’s clerks: please educate her.

  3. This has always been a silly issue, and it’s amusing to see judges uttering such nonsense. If you make a peanut butter and jelly sandwich, dozens, if not hundreds, of references come into play. Between references teaching how to grow peanuts and grapes and wheat and sugar and yeast, and references teaching how to harvest peanuts and grapes and wheat and sugar, and references teaching how to process peanuts into peanut butter and grapes into jelly and wheat into bread, and references teaching how to get peanut butter onto the bread, get jelly onto the peanut butter, and bread onto the jelly, plus references teaching the benefits of cutting off the crust, you are well on your way to obviously combining many references.

    With something more complicated, like operating a nuclear reactor or launching a rocket, thousands of references are routinely combined by artisans. Launching a rocket or starting up a nuclear reactor are very difficult tasks involving thousands of references, but well with in the ordinary skill in the art. People do both on a regular basis. So, just because some patent attorney has enough energy to put many known references into a single claim obviously does not make it patentable.

    As patent claims necessarily become longer to clearly distinguish over an ever-growing body of prior art, rejections may necessarily require more references. It’s not rocket science. So it is a bit silly to contemplate a numerical limit on the references that might be used to establish obviousness.

    If, however, the connections between a long string of references are attenuated and reasons for making each of a long string of modifications are difficult to discern, so that it is highly unlikely that an artisan would follow the claim path to combine absent the roadmap provided by the Applicant, you may have a good case for non-obviousness. I have never seen that argument, except in my own filings, where it was mooted by more basic arguments.

  4. KSR still haunts us. The court built a person with infinite knowledge (a legal fiction) and at the same time bestowed ordinary creativity upon that person. The infinite knowledge is a reasonable objective standard only if the other side of the coin is balanced with another reasonable objective standard for creativity. TSM was an objective standard that counter balanced infinite knowledge. Under KSR ordinary creativity, the knowledge standard should be ordinary knowledge. Until one of these two attributes are rebalanced, combining any number of references is permissible.

    1. I wonder if the state necessary to overcome “ordinary creativity” (whatever that is) can be called by another name: “Flash of Genius”…?

      This was explicitly something that Congress had reacted against and the rebuke of Congress was written into law with the Patent Act of 1952.

      It is not a coincidence that the same people who would elevate the Supreme Court above the checks and balances of our three branch system and above the Constitution itself are the same ones who routinely do not give full value to the Act of 1952.

        1. Very true, Ben. However, it should be clear from history and the notes to section 103 that the stated “further developments” were not given to the judicial branch for augmenting the law.

    2. The court built a person with infinite knowledge (a legal fiction) and at the same time bestowed ordinary creativity upon that person. The infinite knowledge is a reasonable objective standard only if the other side of the coin is balanced with another reasonable objective standard for creativity.

      Interesting point, though I disagree. You can see why the constitution requires the person with (nearly) infinite knowledge, and you can see why the statute requires a human level of creativity, right? How could they have done anything else?

      TSM was an objective standard that counter balanced infinite knowledge.

      KSR is an objective standard too. People seem to confuse objective/subjective and level of proof. In a lot of areas of law there is a reasonable man standard. That standard gets litigated and caselaw forms and binds future cases. If Fact pattern J is similar to fact pattern B, B’s outcome controls J’s case. When the court looks at Anderson’s Black Rock and comes away with the simple combination rule, that rule applies whenever there is simple combination. That’s objective. A non-textual TSM is objective as well. You’re just upset its a lower burden of proof on the objectiveness, but that doesn’t make it a subjective test. The fact that Examiners go around saying “This J is similar to B” and rarely does anyone push back on it, or succeed when they do, doesn’t mean that its not an objective test.

      1. What is a human level of creativity?

        Does “true invention” then require greater than a human level?

        What did Congress say about that?

      2. RG – I respectfully disagree with both of your points. For purposes of 103/obviousness analysis the constitution DOES NOT require infinite knowledge be imparted to the PHOSITA. That is 102/novelty/anticipation. I think that the infinite knowledge attribute is reasonable because it is objective. There is nothing objective about “ordinary creativity”. TSM is objective or at least much more so.

      3. “The fact that Examiners go around saying ‘This J is similar to B’ and rarely does anyone push back on it, or succeed when they do, doesn’t mean that its not an objective test.”

        I almost always (995 times out of 1,000) push back on rejections premised on In re MPEPBoilerplatecaselawcite but the examiners almost always ignore it. Or they keep the per se conclusion and delete the case cite. Or they say, “Well, I’m just citing the case for the general proposition that…”

        I’ve never had an examiner withdraw a rejection based on a boilerplate case law cite(s) while acknowledging that my arguments were considered and found persuasive.

        And I’ve NEVER, EVER had an examiner provide what MPEP 2144.04 says is required: an explanation why the facts of the application being examined are sufficiently similar to the precedent to permit the examiner to rely on the court’s rationale.

        Never.

        Still waiting.

        Not holding my breath though.

  5. What comes to my mind is not so much the EPO’s “Problem and Solution” Approach to obviousness but that of the courts in England. The specialist patents courts of England are not at all impressed when your obviousness attack relies on more than, wait for it, ONE prior art reference.

    You will recall the reputation of the courts in England as a jurisdiction that routinely revokes as obvious claims that are seen in other jurisdictions as inventive. This it does by invocation of the “common general knowledge” (the “cgk”) of the person skilled in the art. Admittedly, it can be hard to get to a “more likely than not” standard, with your evidence of what is cgk, but litigants routinely do it, hence the court’s fearsome reputation.

    At the EPO, in ex parte pre-grant proceedings, where speed, economy and efficiency are of paramount importance, they have an elegant way to use more than two references against a single claim. They do it by finding that the subject matter of the claim is not a single feature combination where all the features combine to solve a single technical problem. Instead, they discern that the Claim recites in effect two combinations of technical features, each one of which solves a different “partial problem”. For each such partial problem then, it is legitimate to identify a different main and supporting reference.

    And who could quibble about that?

    1. So is “cgk” yet another different version of (another Sovereign’s choice of) Person Having Ordinary Skill In The Art?

      1. I’m not clear as to your question, anon. Are you saying that i) your PHOSITA has no background technical knowledge or ii) that person does, but that in the courts in your jurisdiction it is futile to adduce it in evidence, when asserting that something was “obvious” to that same skilled person?

        1. Merely pointing out that the concept of PHOSITA is applied with subtle differences in the different sovereigns (as is the right of the individual sovereigns).

  6. I get up in the morning. I get dressed. I walk out my door. When I walk out my door, I take out my keyring and find my front door key. I insert said key into the lock and turn it. I do this because I know that turning the key in the lock will lock my door, preventing access by others. I then go to my car. I put my key in the ignition and turn it. I turn it because I know this will cause the car to start, which will get me to work. I arrive at work. When I pass the detector, I swipe my badge over the reader. I do this because I know that swiping my badge over the reader will allow me access to the building. Then I walk to my office, where I again produce my key ring to find my office key, which I place in the lock. I do this because I know putting the key into the lock will allow me access to the office. Then I sit down at the computer, and I enter a known password. I put this password in because I know the password will allow me to use the computer.

    All this – the front door key, the car starting, the building access, the office access, the computer password – I do this without much thought at all. I must be a genius. Those tools were drawn from a wide array of fields – home security, automobiles, electronic security, software, and yet I mastered them all. You are permitted to kneel and kiss the ring.

    Or it could be that I had a series of tools which I knew how to use and whose effect was readily predictable from my usage. It might be – and one need no engineering skill at all to understand this – that there is nothing inventive at all at using the tools one knows about to perform the effects one commonly knows will follow from their usage. If I know of an act, and the results of that act are readily predictable, and in fact the results do track with their predicted outcomes, what I have done is obvious. So long as I have the tools in front of me and the knowledge/techniques to use them, it doesn’t matter how many tools I pick up to use, or in what sequence, I’m doing obvious things. All of you do it every single day. In fact, if I did the same thing I always did and expected a different outcome people would call me crazy.

    In all honesty, and I say this in a general manner – I think there are some not-bright people who post on this board, but I wouldn’t libel even the dimmest bulb here by suggesting they can’t string five or ten “unrelated” common actions together and be confused by the outcome. Even the town id iot can walk and chew gum at the same time, or what most patent prosecutors would call “half way to an allowance.”

    The hypothetical person of skill knows all of the acts in a field. They hold all of the keys. Asking someone to pull out and select a known key to defeat a readily-defeatable puzzle is not invention, it’s asking a primate to apply their tool. You wouldn’t call Billy Bob an inventor because he knows that Key C starts his tractor while Key A locks his house and he was capable of applying the right tool to the situation.

    This is a common refrain I hear both on the board and at the office – and it boils down to this: “If we pile enough mundanity on top, can we have a patent?” The Supremes have pretty clearly answered the question in A&P Tea Co and Sakraida and KSR multiple times and the answer is always No. Congress’ power to grant a patent lies in the disclosure of new knowledge to the public, not old knowledge put into a very particular situation. People read combination claims and argue for novelty/non-obviousness in the claim as a whole (by which they mean “I know all of this is known and commonplace, but there’s really a lot of it here, so give me a break”) far too much.

    If your system claim was obvious, and you amend to add a common toaster in there, that toaster better do something other than make common toast, or your claim remains obvious. That is true regardless of whether the system was a kitchen or a car and whether the toast required a third or ninth reference. You don’t turn the obvious into the non-obvious by aggregating another known technique on top of it.

    I cannot recall any obviousness decision coming out of a district court that combines four or more references. Neither Judges nor Juries will stand for that level of complexity.

    Yeah, its not like all judges ever write anything that cites to more than three references. Or took a test that covered more than three subject areas. Or went to school where they had to read 3-4 disparate cases which taught different principals for just one class out of their day. I know that after I do a 103 I have to reread the MPEP on 101 because there’s a 112a and b and d inbetween.

      1. …and how do you feel about aggregating protons, neutrons, and electrons?

        Framing the claim in terms of PNE has no bearing in terms of obviousness other than it leads a bad writer to use functional language which is more likely to produce obvious scopes. But with a good writer that could make like scopes – like scopes are like scopes. It has no bearing on obviousness one way or another what terms it is couched in provided the scope is the same.

        If treating compound X with compound Y makes a superconductive gel and the art didn’t know that, that is non-obvious whether you talk about it in terms of X and Y or in terms of the PNE. We don’t know everything about PNE just as we don’t know everything about X and Y.

    1. “You wouldn’t call Billy Bob an inventor because he knows that Key C starts his tractor while Key A locks his house and he was capable of applying the right tool to the situation.”

      So, when “Billy Bob” combined a box, a hopper a comb and a crank handle in a way he knew would make a doo-hickey that would separate fiber from seed and other nits, you wouldn’t call him an inventor then either right?

      1. So, when “Billy Bob” combined a box, a hopper a comb and a crank handle in a way he knew would make a doo-hickey that would separate fiber from seed and other nits, you wouldn’t call him an inventor then either right?

        If he (or one of skill) understood that a comb separated things, that a crank handle could drive the comb, and was enabled to use a crank handle to drive the comb, the creation of a crank-powered comb to separate things is obvious.

        I can see your mind working and you are again confusing a patent which disclosed an enabling teaching (i.e. it actually taught how to build something the art couldn’t have combined before it) with many mechanical patents of today which assume apriori or outright state that the mechanical skill to achieve the combination preexists.

        1. The Steam engine was invented circa 1712. Eli invented the cotton gin in 1793 or theres abouts. I think it safe to say the mechanical know how required to make a cotton gin does not exceed that required to make a steam engine.

          So, by your logic, the cotton gin was obvious and should not have been patented.

            1. “What is it about the words “it depends on the claim” that cause them to sail right over your head, Les?”

              Where in: ““You wouldn’t call Billy Bob an inventor because he knows that Key C starts his tractor while Key A locks his house and he was capable of applying the right tool to the situation.”” do you see “it depends on the claim,” Mickey?

    2. Excellent comment, RG.

      I thought this post was pretty silly overall. But that’s not surprising if it was inspired by Judge Moore because, well, Judge Moore is a pretty silly judge a lot of the time, especially when it comes to oral arguments.

      Sillier yet are the comments from “anon” and Les but that’s nothing new.

    3. “The hypothetical person of skill knows all of the acts in a field.”

      Not technically true. They only know what’s published/available as prior art, and some basic lab knowledge iirc.

        1. No. One of ordinary skill in the art has knowledge of all prior art that is pertinent to the subject matter sought to be patented, not “every non-secretive act that there is evidence of.”

          Big difference.

          You should know that.

          But you don’t. Which is scary.

          1. He often has displayed his inability to distinguish art that would be prior for 102 purposes from art that would be prior for 103 purposes from art that would not be prior for either.

            He thinks any and all art “being prior” is all that is needed.

            And yes, it is scary that his job depends on what he obviously lacks understanding of.

  7. There seems to be an unwritten rule at the USPTO that a rejection shouldn’t combine more than four references. I’ve had different examiners tell me that their SPEs would generally let them allow a case rather than combining 5+ references, and suggested I just amend in additional “obvious” features to trigger more references being needed (6, imagine that, some examiners actually try to help the applicants get their applications allowed). But seriously, 6 maybe you can confirm to us whether there is generally such an “unofficial” policy over at the USPTO.

    1. But seriously, 6 maybe you can confirm to us whether there is generally such an “unofficial” policy over at the USPTO.

      As I’ve pointed out on other posts – one could look at the change in law and how little effect it has on the allowance rate and conclude that the bar for patentability is entirely freefloating from the analysis performed altogether.

      There is no unofficial policy, but not because of quotes around “unofficial” but around “policy.” Policy suggests there is uniformity. Different signers (and signers is the proper grouping, though SPEs are signers) have different levels of skill in the areas in which they sign, have different non-examining demands on their time, and are subject to differing quality constraints. The same signer has different people of different skill coming to them.

      1. “Policy suggests there is uniformity. Different signers (and signers is the proper grouping, though SPEs are signers) have different levels of skill in the areas in which they sign, have different non-examining demands on their time, and are subject to differing quality constraints. The same signer has different people of different skill coming to them.”

        That is correct Random. There is very little uniformity.

    2. Here’s my data point. I was advised by an examiner to take her 7-reference combination to appeal where I might get a better reception than from her supervisor who apparently is happy to string together an unlimited number of references.

        1. Malcolm,

          How about you share some of your claims as an example of “how to do it right”…?

          Ever eager for others to out themselves, yet you are one who opted for the highest level of concealment during the DISQUS era (a level totally unneeded).

    3. ” suggested I just amend in additional “obvious” features to trigger more references being needed ”

      Yes I’ve made that suggestion myself in some cases. The fact is some arts are so complex that the mere person of ordinary skill couldn’t think to combine over 3 refs, others around 4, maybe still others around 100.

      “6 maybe you can confirm to us whether there is generally such an “unofficial” policy over at the USPTO.”

      The unofficial policy is that it has to be within the realm of the credible. Rejections with more than 4 or 5 rarely are unless the references are doing something super basic. That being said, perhaps in biz methods etc. this is more common to be proper etc.

      Take for instance Random’s huge post up above detailing a bunch of mundane things he strung together in the morning and him decrying the “idi ots” at the office that don’t want to make ridiculously involved complex combos to reject claims. Those “idi ots”, or rather, people a little bit less capable than those idi ots most likely, but with more “book learning”, are precisely who the combo has to have been “OBVIOUS” to in many arts. If they’re idi ots, then they don’t get to combine all that many refs and have what they did be “obvious” to an imaginary one of them for it to be credible. That’s what the “unwritten policy” is about.

      And to be honest, in my experience signatories are way too generous with allowing not that credible rejections to be made and maintained throughout 103 prosecution.

      1. 6 and I have significantly different views on 103 things because I am in software, an “inventive” field that almost should not exist (rather than employ thousands of examiners) while he is in chemistry, which clearly ought to.

        My people know of thousands of tools and the combination of them is straightforward for expected results. 6’s results are often unexpected and the particular manner in which they are combined is relevant.

        1. LOL – your warped view returns.

          That is the view that only things at two extremes should be patentable: either the Flash of Genius or the Oopsie pure accidental.

          I really feel sorry for any inventor that draws you as an examiner.

          1. That is the view that only things at two extremes should be patentable: either the Flash of Genius or the Oopsie pure accidental,

            Not at all. It’s just pointing out that “this function plus this function” isn’t patent-worthy just because nobody has described the combination before.

            You dont’ have to be a genius to make something that wasn’t taught before and show that it works unexpectedly better than could have been predicted. You do have to do a bit more work than just scrivening, however.

            Take a deep breath and try to pull all this together under your pin-sized dome.

            1. Lol – your reply is – as usual – nothing but baseless ad hominem and short script mumbling.

              Maybe you want to try again and actually address the point that I presented…

                1. I presented no such thing as a false dichotomy.

                  You did not address what I actually stated.

                  Your “dance” suggestion appears to be just another in a long line of things that you accuse others of, while doing the very action itself.

                  “Go figure Folks”

      2. What does “within the realm of the credible” mean to those examiners, such as Random, who do not seem to understand that merely being “prior” is not the same as prior for 103 purposes?

    4. For an example of 10 references (plus fewer but additional refs in other combinations) to build obviousness rejections of all pending claims, see, serial no. 11/764,893 (USPubApp 2007-0296682 A1).

  8. Sometimes I find multiple references very logical, like when an apparatus has several branches or components that don’t interact much. The problem is it usually is used to make up a core difference between the two main references and the invention that usually gives it some new functionality that was the non-obvious contribution over the PA.

  9. 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.

    I have an idea of what Judge Moore meant here by “cherry pick.” She means, I think, is that the examiner used the claim itself as a road map to find the claim’s limitations in the prior art. To me, this is ultimate proof of hindsight reconstruction.

    KSR spoke of combining references to solve known problems. Using hindsight to find references is back a$$ wards.

    1. What percent of PTO prosecution histories do you suppose Judge Moore has looked at? 0.01%?

      Ned: Using hindsight to find references is back a$$ wards.

      So is using the prior art to figure out what “innovation” is buried in your junky dustpile of a specification. But it’s a common tactic for the b0ttom feeders in the “do it on a computer” arts. Heck, we’ve seen numerous instances where applicants just grab terms right of the ether when they’ve been backed into a corner.

      1. MM, the problem-solution approach starts with a problem and determines whether the claimed solution is novel/obvious. The claims are obvious when one of ordinary skill would know that a particular solution would work.

        But simply finding 4 or more references in the prior art that disclose elements without some overall teaching of how or why bringing them together solves a known problem does use hindsight.

        1. Just because “prior” does not make it “prior art for 103.”

          This should be well understood – and is a shame that it appears otherwise.

        2. Who said anything about their being a lack of “some overall teaching”?

          The “overall teaching” is that, generally speaking, you can combine functionalities until the cows come home and you will end with something that has (wait for it) all the combined functionalities. You have some teaching away? Go ahead and cite it. You have some unexpected results? Knock yourself out. Otherwise all you did was combine some functionalities. Whoop dee ding dong.

          Yes, the PTO is prone to forget this some of the time.

  10. I don’t think that Gorman being reset by KSR resets the issue in favor of multiple references weighing against obviousness – if anything, it allows Gorman to be set more firmly.

  11. IMO it’s pretty fact dependent. It largely hinges on what sort of, and how complex the “combinations” being made or “replacements” being made of parts in the primary reference are. Likewise, sometimes some references are being cited more to simply find as a fact that something was old or had xyz “already in there” as in inherency so those sorts of things generally don’t count quite as much in the “reference counter” that is ticking when you’re adding references.

    1. “IMO it’s pretty fact dependent.”

      Ya think?

      I remember seeing Assistant Vice Deputy Chief APJ Boalick speaking at some gathering and discussing how the PTAB panels decide whether the proposed grounds of rejection are sufficient to institute the IPR. He said that the more references a challenger proposes to combine the more evidence of a reason to combine the challenger needs to provide.

      I doubt that’s his view on the number of references an examiner can use to make a rejection.

      1. He said that the more references a challenger proposes to combine the more evidence of a reason to combine the challenger needs to provide.

        Kinda goes without saying doesn’t it?

        You have to provide a reason to combine Y with X.

        But if we’re talking about adding more functionalities, where there is no teaching away from multiple functionalities and where the added functionalities are (separately) in the prior art, then the reason to add them is pretty easy to provide.

        What are the best reasons not to add an additional functionality to, say, a computer program? A big one is incompatibility with something else on the computer (that problem and its solution are rarely addressed in the claim, because the claim presumes operability and debugging). Another reason is potential patent infringement (LOL). What else? Not enough memory? Slows down processing? DoubleLOL

  12. It’s a pretty sad day when Judge “MY KIDS LOVE THIS!” Moore and disgraced Judge Rader’s over-caffeinated ramblings during oral arguments are used to justify the reversal of perfectly good law.

    Vobach isn’t the only one who listens to oral arguments regularly. He should know better.

  13. Is it Obvious to Combine Five References?

    Answer: It depends on the claim.

    A rule that says “if you need five references, the claim is non-obvious” seems like an arbitrary rule.

    Thing A is in the prior art. Someone modifies Thing A so it has Functions B, C, D, and E. All of the functions are in taught in the prior art, in separate references, as being useful. There is no teaching away from combining the functions with each other, or with A. There are no unexpected results that flow from the combination of the functions.

    Is the claim to A+B+C+D+E obvious? Yes, it’s totally obvious. Is it “a lot of references”? No. It’s five references. You can count ’em on one hand. There’s plenty of five year olds that can count to five — or twenty! — without using their fingers.

    1. “A rule that says ‘if you need five references, the claim is non-obvious’ seems like an arbitrary rule.”

      Any number of references that would be selected would be arbitrary. The EPO’s guidance to examiners that if they have to combine more than 3 references then the examiner should really reconsider whether the claim is obvious seems to work pretty well. Of course, European examiners are actually capable of finding, and applying, D1.

      1. Lol – reminds me of a story.

        Reference 1: a proton.
        Reference 2: an electron.

        Combine them.

        Reference 3: a neutron.

        Combine X of Reference 1 with Y of Reference 3, then combine with Z of Reference 2.

        All permutations are obvious thereof.

        😉

      2. I don’t have a problem with procedural suggestions, and I don’t disagree that in some situations the need to combine 4+ references may be an early “tell” that a claim is patent-worthy (so it’s not a bad idea to confirm that one is faced with such a situation).

        But there are plenty of other situations where the number of references cited doesn’t indicate anything at all about non-obviousness. That’s particularly true when functionalities are being claimed, and doubly particularly true when the applicant is amending the claim to recite additional functionalities (perhaps pulled out of some boilerplate list of prior art functionalities, or massaged out of some vague statement of purpose) to avoid an existing obviousness rejection. Depending on the specification, Applicants can do that forever. That’s not “inventing.” It’s just adding verbiage to the claim. Examiners shouldn’t have to find some minimum number of references to deal with that situation. All the need to do is find a reference that identifies the functionality as a desired one and it to the list of references already cited, mirroring exactly what the applicant is doing.

    2. Yeah, it was obvious to combine all 5 elements, yet we couldn’t find where even two of them had been discussed as being combined in a single document and so have to cite 5 different documents to show that the elements were previously known individually.

      1. This is an excuse for scrivening. Anybody can play that game, all day long. Why would we reward that kind of behavior with patents?

        Note: if you’ve got evidence of some unexpected result or some teaching away, it’s a whole different ballgame.

        1. “Scrivening” …?

          Why would we reward that kind of behavior with patents?
          You are kidding, right?

          Isn’t that your professed job…?

          1. Isn’t that your professed job…?

            Scrivening is different from inventing.

            Remember?

            The patent system exists to award innovation in the useful arts, not in the arts of using logic, philosophizing or lawyering.

              1. Yet again: patents that protect software protect logic (that’s why the term “logic” shows up in so many claims), and whether you can copyright a specific set of instructions has no bearing on that fact.

                Try keeping up some new dust, “anon.” You’re a very serious person! Super skilled at the dust-kicking.

                1. You mis aim (and badly so) with your own version of “logic” with the “it protects” spiel.

                  As to the use of the term itself, you take that out of context of the person having ordinary skill in the art.

                  You should already know that as you have been previously informed of that.

        2. Note: if you’ve got evidence of some unexpected result or some teaching away, it’s a whole different ballgame.

          You do realize that the application as first written and submitted does not require a prior art search at all, right?

          Sure, not anywhere near “best practices,” but just as sure, that is the state of the law. When the law changes, applicant behavior will change (and applicants here mean your clients – not your venom aimed patent lawyers).

          May I suggest that you contact your Congressman if you are unhappy with the situation…?

          1. You do realize that the application as first written and submitted does not require a prior art search at all, right? Sure, not anywhere near “best practices

            It’s a lot worse than that.

            But, hey, take your client’s money, pretend you were born yesterday, file those junky claims and run like the wind! Because the law says that you can get away with it. Or so you’ve told everyone.

            1. Not sure how you meant your comment of “It’s a lot worse than that

              You either have a legal requirement or you do not.

              If you feel that there should be a legal requirement, perhaps you might actually read what I actually stated and follow the advice that I have given to you.

              Pretending that the law is something that it is not, but that you feel should be otherwise is simply no way to go through life, son.

              1. ot sure how you meant your comment of “It’s a lot worse than that”

                You either have a legal requirement or you do not.

                I’m sure that’s how it seems to you. You’re very serious person, “anon”!

                1. Your reply here says nothing.

                  Do you really think that I am incorrect in what I am telling you? Where then is my error? Perhaps that use of the English language that you want everyone (else) to use would come in handy for you to use yourself…

                2. “anon”: Sure, not anywhere near “best practices

                  “anon” five seconds later: You either have a legal requirement or you do not.

                  So which is it, “anon”? Is there a continuum of competency and ethical behavior, or is it just black and white “it’s legal or it isn’t” and it’s oh-so-unfair to judge?

                3. You want to confuse best practices with legal requirements…

                  Surely you don’t have to be told that those are two different things, right?

        3. easily perceived or understood; clear, self-evident, or apparent.
          “unemployment has been the most obvious cost of the recession”
          synonyms: clear, crystal clear, plain, plain to see, evident, apparent, manifest, patent, conspicuous, pronounced, transparent, palpable,prominent, marked, decided, distinct, noticeable, unmissable, perceptible, visible, discernible; unmistakable, indisputable, self-evident, incontrovertible, incontestable, undeniable, beyond doubt, beyond question, as clear as day, staring someone in the face;
          overt, open, undisguised, unconcealed, frank, glaring, blatant, written all over someone;
          informal as plain as the nose on one’s face, sticking/standing out like a sore thumb, right under one’s nose
          “it’s obvious that they don’t get along”

        4. A lot of statements flying around about “teaching away”. Here’s the wonderful thing about “teaching away”. Unless the reference says “Don’t do X” because reasons, it’s not a “teaching away”. But you see… if the reference actually says “Don’t do X” (and X is in the claim), then X was clearly contemplated and considered as a feature in the prior art. That “teaching away” statement is literally evidence that X would be obvious. Because someone already thought of doing X and considered reasons for and against doing X.

          And let’s be realistic. There’s lots of advantages and disadvantages to doing everything. And because one person thought that disadvantages of doing X outweighed advantages, doesn’t preclude another person from placing greater emphasis on one of the advantages.

          Not to mention probably 90% of the disclosed “benefits” and “problems being fixed” in patent literature are hyperbole. At least in the computing arts.

          1. “That ‘teaching away’ statement is literally evidence that X would be obvious.”

            No. It’s not. Unfortunately your analysis doesn’t account for the level of ordinary skill in the art. Or what, or who, the hypothetical person having ordinary skill is, i.e. somebody who has all the knowledge, but doesn’t seek to innovate (introduce something new or alter something that already exists).

            “Because someone already thought of doing X and considered reasons for and against doing X.”

            Again, you’re ignoring the level of ordinary skill in the art and the person who is of ordinary skill in the art.

            It’s a separate factual question from the scope and content of the prior art for a reason.

            1. “That ‘teaching away’ statement is literally evidence that X would be obvious.”

              No. It’s not.

              Again: it depends. In context, I assumed Penny was referring to a situation where the art says something like “Don’t do X. Do Y instead!” Or “Why do X when you could do Y?” In other words, a situation where the doing of X was, in fact, contemplated or known in the art as a possible way of achieving something, albeit a disfavored one. That’s not “teaching away”.

              1. Your assumption was not apparent in your “refreshing” comment (mainly because the comment you found so “refreshing” was incorrect per AAA JJ’s comment).

          2. Nonsense.

            If the prior art says: Don’t take heart from corpse and put in person with failing heart, because we try and every time corpse heart carry death and make other person dead, that does not make it obvious to put a heart from a corpse in a person with a failing heart.

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