Cleaning up obsolete case law: time to revisit In re Gorman

Spiderweb
Spiderweb

35 USC 103 rejections: Ever have something rejected as “obvious” in view of a combination of 5+ references?  The re Gorman case is how such absurd rejections are rationalized.

According to MPEP 707 section 7.37.07, arguments that the examiner used an excessive number of citations are presently found to be “unpersuasive”.  Section 7.37.07 is based upon an old case In re Gorman, 933 F.2d 982, 18 USPQ2d 1885 (Fed. Cir. 1991).  However Gorman uses reasoning that is now obsolete and unsupported due to patent law developments since 1991.

Some key aspects of the re Gorman decision were:

When it is necessary to select elements of various teachings in order to form the claimed invention, we ascertain whether there is any suggestion or motivation in the prior art to make the selection made by the applicant. Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.Cir.1985). ” ‘Obviousness can not be established by combining the teachings of the prior art to produce the claimed invention, absent some teaching, suggestion or incentive supporting the combination.’ ” In re Bond, 910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed.Cir.1990) (quoting Carella v. Starlight Archery and Pro Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.Cir.1986)).

The extent to which such suggestion must be explicit in, or may be fairly inferred from, the references, is decided on the facts of each case, in light of the prior art and its relationship to the applicant’s invention. As in all determinations under 35 U.S.C. Sec. 103, the decisionmaker must bring judgment to bear. It is impermissible, however, simply to engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps. Interconnect Planning, 774 F.2d at 1143, 227 USPQ at 551. The references themselves must provide some teaching whereby the applicant’s combination would have been obvious

However since 2007 KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, the “teaching, suggestion or incentive” requirement for combining citations is no longer required (although still allowed).  When this part of the 1991 Gorman court’s reasoning, shown in the first paragraph above, is removed, it becomes clear that the legal and logical underpinning of their 1991 decision no longer apply!

However under present rules, MPEP 707 section 7.37.07, based upon the now obsolete 1991 Gorman legal reasoning, still acts as a roadblock for any applicant who attempts to argue that the examiner did:  “engage in a hindsight reconstruction of the claimed invention, using the applicant’s structure as a template and selecting elements from references to fill the gaps.”

Given that the Gorman court’s assumptions no longer hold, isn’t it time to revisit this case?  At present, there is no upper limit to the number of citations that an examiner can apply, and indeed I personally have seen combinations of eight citations used in obviousness rejections.