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Hairbrush Prior Art Includes Toothbrushes

August 24, 2004

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Last Month at the Federal Circuit - September 2004

Judges: Rader (author), Schall, and Newman (dissenting)

In In re Bigio, No. 03-1358 (Fed. Cir. Aug. 24, 2004), the Federal Circuit affirmed the Board’s claim construction and determination that the prior art applied in a rejection of claims of U.S. Patent Application No. 09/145,747 (“the ‘747 application”) was analogous art.

The ‘747 application claims a hairbrush having an hourglass configuration for a bristle substrate and the overall bristle array. During prosecution of Alberto Lee Bigio’s ‘747 application, the Examiner rejected certain claims as being obvious in view of three toothbrush patents.

Before the Board, Bigio argued that the term “hair brush” should be narrowly construed to encompass only brushes for scalp hair. The Board rejected this interpretation, instead construing the term “hair brush” to encompass brushes that may be used for human hair on a scalp and other parts of animal bodies, e.g., human facial hair, human eyebrow hair, or pet hair.

Bigio also argued that the toothbrush patents were nonanalogous art. Under its claim construction, the Board found that the toothbrush patents relate to the same field of invention as the claimed invention, specifically to the field of hand-held brushes having a handle segment and a bristlesubstrate segment. The Board therefore affirmed the Examiner’s rejection.

On appeal, the Federal Circuit first construed the term “hair brush” and then, based on that construction, determined whether the toothbrush references were analogous art. In construing the term “hair brush,” the Court reviewed the reasonableness of the Board’s construction of the disputed term. First, the Court noted that the modifier “hair” before the word “brush” was not in itself sufficient to limit the claim to brushes for scalp hair, as it did not limit the claim to any particular type of hair. The Court also noted that the Board correctly refused to import from the specification a limitation that would apply the claim only to hairbrushes for the scalp. The Court concluded that the term “hair brush” does not in itself specify the type of hair to be groomed, and, therefore, the Board’s interpretation of the term was reasonable.

After affirming the Board’s claim construction, the Court reviewed the use of the toothbrush references as analogous art. The Court set forth the two separate tests that define the scope of analogous prior art: (1) regardless of the problem addressed by the inventor, whether the art is from the same field of endeavor, and (2) if not within the same field of endeavor, whether the reference still is reasonably pertinent to the particular problem to be solved. The Board based its determination on the first test, finding that the toothbrush patent(s) related to the same field of endeavor as Bigio’s claimed invention. The Court also stated that the reality of the circumstances, or common sense, must be considered in determining where one of ordinary skill in the art could reasonably be expected to look for a solution to the given problem. Bigio had agreed that if the prior art was analogous, then his invention was obvious.

Judge Newman dissented, arguing that the toothbrush art is about as analogous to the hairbrush art as teeth are to hair.