NON-ANALOGOUS ART DOESN’T HOLD WATER!

In In re Arnold Klein, Appeal 2010-1411 decided June 6, 2011, the Court of Appeals for the Federal Circuit (CAFC) overturned and remanded the Board of Patent Appeals and Interferences’ (BPAI) decision that the considered claims were obvious over cited prior art references since the CAFC found that the BPAI failed to offer substantial evidence to support its use of the cited prior art references as analogous art.

It is well established that “a reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention.” In determining whether a reference is analogous, courts look at whether the art is from the same field of endeavor, or if the reference is “reasonably pertinent to the particular problem with which the invention is involved.” In other words, a reference is reasonably pertinent if the subject matter of the reference would have been considered by an inventor attempting to solve the problem at hand.

In this case, the invention related to a mixing device to make sugar-water that was divided into several compartments by dividers. Once the compartments were filled, which were designed to hold water, the dividers were removed to allow the mixing of the compartments to make different blend ratios of sugar-water. In rejecting these claims as obvious, the BPAI offered several prior art references that were designed to separate the contents in different containers and other references that disclosed the mixing of two separated substances.

In determining whether the cited references were analogous, the CAFC considered the problem the inventor was trying to solve as “making a nectar feeder with a movable divider.” The CAFC found that the cited prior art references that were designed to separate contents were not designed to hold water; therefore, the CAFC concluded that an inventor considering this problem would not have been motivated to consider the cited references. In other words, the BPAI had failed to offer any reason as to why an inventor trying to make a nectar feeder with movable dividers that separated compartments that held water would use the cited prior art references to receive water and subsequently allow mixing when there was no teaching in the cited prior art references that the disclosed compartments could hold water. Here the CAFC is affirming its previous holding that “[i]f [a reference] is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.”

Similarly, the remaining cited references which disclosed mixing two separated substances were also found to be non-analogous art by the CAFC. The CAFC found that an inventor trying to solve the problem of making a nectar feeder with a movable divider to prepare different ratios would also not have been motivated to consider references that did not address a container that could make different ratios or had movable dividers.

Thus, when the USPTO rejects your claims as obvious, the USPTO must give a reason as to why one having ordinary skill in the art would consider the cited references to solve your problem. If this nexus is not presented, the references may not be analogous art. The non-analogous art argument, once thought to be dead, seems to have been resurrected.

Read/download the decision here

Prepared by Thomas Lee