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."

"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."

A tiered presumption framework keyed to reference count would assign no presumption for one to two references, a weak presumption for three, a moderate presumption for four to five, and a strong presumption for six or more, 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. Combining numerous disparate references to reconstruct a claim strongly suggests hindsight reconstruction rather than forward-looking obviousness analysis. Existing doctrinal requirements of motivation to combine and reasonable expectation of success provide tools to police multi-reference combinations without numerical thresholds.

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