The Analogous Art Requirement and How to Traverse Obviousness Rejections Based on Non-Analogous Art

June 7, 2012

in §§102 and 103 Rejections,Prosecution Strategy,The MPEP

INTRODUCTION
The provisions of 35 U.S.C. § 103 limit patent protection to claimed subject matter that would have been nonobvious to a “person of ordinary skill” in the claimed field of endeavor at the time of filing. This person of ordinary skill is a hypothetical construct – an ordinarily skilled artisan who is presumed to possess ordinary creativity and to be aware of all prior art in his field of endeavor, as well as prior art that is relevant to the problem addressed by the claimed invention. For this reason and others, an obviousness determination under § 103 is properly based on several underlying factual findings including, among others, the scope and content of the prior art.

Logically, some art citations are from fields of endeavor that are so remote or diverse from a claimed invention that it would be unreasonable to presume that a person of ordinary skill would know of them or even be motivated to look to them. Art that is this remote or diverse is said to be “non-analogous,” does not qualify as prior art under 35 U.S.C. § 103, and cannot support an obviousness rejection. Accordingly, the question of whether an art citation is “analogous” to the claimed subject matter (and thus qualifies as prior art under 35 U.S.C. § 103) is often an important threshold inquiry.

BRIEF SUMMARY OF RELEVANT LAW
1.  Art is analogous when it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor, if the art is not from the same field of endeavor. In re Bigio, 381 F.3d 1320, 1325-1326 (Fed. Cir. 2004); In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA 1979).

2.  In order to be “reasonably pertinent,” art must “logically commend itself” to an inventor’s attention in considering his problem. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP § 2141.01(a).

3.  A rejection under 35 U.S.C. § 103 cannot be based on non-analogous art. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. 2011); In re Bigio, 381 F.3d at 1325; In re Clay, 966 F.2d at 658.  The rationale behind this rule is a simple one – no inventor could possibly be aware of every teaching in every art. In re Wood and Eversole, 599 F.2d at 1036. Also, when art is directed to a different purpose then a claimed invention, an inventor would have less motivation or occasion to consider it.  See In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992); In re Clay, 966 F.2d at 658-59.

4.  In recent years, the efficacy of non-analogous art arguments has been called into question. The Federal Circuit, however, has confirmed that a reference qualifies as prior art only when it is analogous to the claimed invention. See In re Klein, 647F.3d 1343 (Fed. Cir. 2011); Innovention Toys, LLC, No. 2010-1290, slip op. at 12.

The following is an example of a challenge to the propriety of an art citation on the grounds that it is non-analogous.

Example
Applicant respectfully submits that the Smith patent does not qualify as prior art under 35 U.S.C. § 103 because it is not analogous to the invention of claim 1, as presently presented.

It is beyond dispute that the Office may only rely on analogous art to support an obviousness rejection. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). And, while the scope of analogous prior art may sometimes be wide, the Federal Circuit has confirmed that it is not without limit. See In re Klein, 647F.3d 1343 (Fed. Cir. 2011)(reversing the BPAI’s judgment of obviousness after concluding that no less than five prior art references relied upon by the BPAI were non-analogous).

The test for analogous art is very specific. Art is non-analogous unless it is: (1) from the same field of endeavor as the claimed invention; or (2) reasonably pertinent to the particular problem faced by the inventor.  In re Bigio, 381 F.3d at 1325; In re Wood and Eversole, 599 F.2d 1032, 1036 (CCPA 1979). Thus, an art citation that is not from the same field of endeavor as a claimed invention MUST be “reasonably pertinent” to the problem addressed by the inventor. Art is “reasonably pertinent” when it would “logically commend itself” to an inventor’s attention in considering his problem. In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007)(citing In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). See also MPEP § 2141.01(a). Conversely, when art is directed to a different purpose then a claimed invention, an inventor would have less motivation or occasion to consider it. See In re Clay, 966 F.2d at 658-59.

Turning to the present rejection, Applicant notes the Office’s concession that the Smith patent and the device of claim 1 are not directed to the same field of endeavor. (Office Action, page 4). Indeed, there can be no reasonable dispute that Smith’s drawer organizers are not in the same field of endeavor as tissue sample testing. Therefore, the issue here is whether the Smith patent is reasonably pertinent to the problem addressed by the Applicant. Applicant submits that it is not.

Applicant does not dispute the Office’s characterization of the problem being addressed, –namely controlled mixing of liquid samples in various compartments that are customizable via movable dividers. (Office Action, page 5). Rather, Applicant respectfully submits that the Smith patent is not reasonably pertinent because it neither (1) addresses the same problem nor (2) serves the same purpose as the device of claim 1. Thus, the Smith patent would not have logically commended itself to the Applicant’s attention. See In re Clay, 966 F.2d at 659 (when a reference “is directed to a different purpose, the inventor would accordingly, have had less motivation or occasion to consider it.”).

The Smith patent is directed to a container that is designed to separate its contents, as opposed to one designed to facilitate the mixing of those contents. Indeed, Smith expressly teaches insertable partitions for the purpose of keeping drawing implements and the like separated. Thus, the purpose of the device of the Smith patent is to separate solid objects and to keep them separated, which is a solution to a problem very different than that addressed by the Applicant.

Stated differently, an inventor considering the problem of “how to prepare multiple ratios of a tissue sample to a testing fluid in a single platform” (Specification, paragraph [0018]) would not have been motivated to consider the Smith patent when making his invention, particularly since Smith does not show a partitioned container that is adapted to (1) receive a fluid, (2) permit mixing of a retained fluid, or (3) contain a fluid long enough to be able to prepare desired, different ratios in the different compartments. Accordingly, it would be unreasonable to conclude the presently presented claim 1 and the Smith patent relates to the same problem or serves the same purpose.

In sum, the Smith patent is non-analogous to the claimed invention, does not qualify as prior art under 35 U.S.C. § 103, and cannot support the rejection of independent claim 1 under 35 U.S.C. § 103.

AN ADDITIONAL NOTE FOR PHYSICS AND CHEMICAL CASES
An underlying similarity in a scientific principle of operation does not ipso facto mean that art from a field of endeavor would be relevant to another solely because that principle had been applied in the other field. Stated differently, the mere application of a similar scientific principle of operation in another field of endeavor is not enough to transform otherwise non-analogous art into analogous art. See In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).

The following is an example of the application of this principle in a traversal.

Example
Even accepting, arguendo, the Office’s contention that there is some similarity of a scientific principle at some underlying level, that similarity does not answer the question of whether a widget designer would have looked to the Smith patent for an answer to the problem of dimensional stability. Stated differently, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields. Here, the decision in In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967), is illustrative.

In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967). “Considering the facts of record, we are of the view that appellants, in view of the conditions set forth in section 103, are not chargeable with the knowledge set forth in the cutlery art.” (Id.)

A FEW ADDITIONAL POINTS
1. Arguments about whether cited art is analogous are irrelevant to anticipation rejections under 35 U.S.C. § 102. See MPEP § 2131.05.

2. A fundamental step in any determination of whether an art citation is analogous is to identify the problem addressed by the inventor.

3.  The USPTO recently issued a memorandum to its Examiners on the subject of analogous art.  Follow this link to download a copy.

© 2012, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
 
www.mekiplaw.com

{ 6 comments… read them below or add one }

6 July 1, 2012 at 9:21 pm

Always a good run down Mike. Just figured I’d leave you a note so you know someone reads this thing. Perhaps you might talk to D at PO to try to get some plugs in Rantanen’s little bits and bites section to plug your articles. They’re definitely worth a read for your run of the mill attorney.

In any event, one thing that does concern me is that your sample replies roll a little hard on the length. It’s the use of these “form paragraph”‘s that run 2 pages per argument that takes away from time that examiners will have to actually consider your argument. While I am all for hand holding, perhaps simply put the hand holding at the end in an appendix on “the analogous art requirement for legal newbie examiners”. Most of the old hands already know about it and are trying to just see your argument. If we have to take the time to make sure we’re not missing some argument lurking in your hand holding then we have less time to consider your position. Especially if this isn’t the only issue.

Engine54 September 15, 2012 at 4:46 pm

Yeah, good stuff. What kind of responses have your challenges received at the PTO?

mike September 17, 2012 at 2:01 pm

We have had success. FYI – this subject has been emphasized in the latest edition of MPEP in Section 2141.01(a), entitled “Analogous and Nonanalogous Art”.

bierbelly September 28, 2012 at 3:11 pm

I’ve been making this argument since Klein came out. No success as of yet. I think its something examiners ignore, and is more likely to be considered favorably by the Board of Appeals.

Charles July 12, 2013 at 12:00 pm

Great resource all around. Thanks for your commitment to the profession.

Solo Office August 5, 2015 at 11:44 am

Hi, Mike,

Thanks for the great resource! The analysis is sound, the references are on point, and the text is not overly comprehensive and dense. Good job.

Michael

Leave a Comment

 

Previous post:

Next post:

Original material is licensed under a Creative Commons License permitting non-commercial sharing with attribution.

Thesis customization by BrighteyeWeb LLC


PatentablyDefinedTM is a trademark of The Law Office of Michael E. Kondoudis