When Obviousness Rejections Pile On: Rethinking Multi-Reference Combinations

by Dennis Crouch

Last month I examined the challenges of single-reference obviousness rejections, where examiners attempt to show that a claimed invention would have been obvious based on just one prior art document. The opposite problem deserves equal attention: obviousness rejections that pile on reference after reference, sometimes combining five, seven, or even a dozen separate documents to reconstruct the claimed invention. In a thoughtful new working paper, patent attorney John Goodhue argues that the Federal Circuit should reconsider In re Gorman, 933 F.2d 982 (Fed. Cir. 1991), which held that "the criterion is not the number of references, but what they would have meant to a person of ordinary skill in the field." John Goodhue, Rethinking In Re Gorman: Why the Number of References Does Matter in Obviousness Determinations Under 35 U.S.C. § 103 (Working Paper, 2026). Goodhue's diagnosis: when an examiner assembles numerous disparate references to arrive at a claimed invention, this strongly suggests hindsight reconstruction rather than forward-looking obviousness analysis.

Goodhue proposes a tiered presumption framework keyed to reference count. Under his approach, one to two references would trigger no presumption; three references would create a weak presumption against obviousness; four to five references would create a moderate presumption; and six or more would create a strong presumption rebuttable only in exceptional circumstances. The presumption would yield to evidence that the references teach the same solution, that multi-reference synthesis is routine in the field, or that one reference explicitly directs combination with others. While I share Goodhue's concerns about kitchen-sink rejections, I suggest that creating numerical thresholds and novel presumptions is unnecessary. The existing doctrinal requirements of motivation to combine and reasonable expectation of success already contain the tools needed to police multi-reference combinations. When applied properly, these requirements simply become harder to satisfy as reference count increases.  In my view, courts and the Patent Office should recognize this relationship rather than layering on new presumptions.