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Nonanalogous Prior Art Cannot Support an Obviousness Rejection

June 06, 2011

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Last Month at the Federal Circuit - July 2011

Judges: Newman, Schall (author), Linn

[Appealed from: Appealed from Board]

In In re Klein, No. 10-1411 (Fed. Cir. June 6, 2011), the Federal Circuit reversed the Board’s obviousness determination with respect to U.S. Patent Application No. 10/200,747 (“the ’747 application”) because the Board’s finding that five references, upon which the rejections were based, were analogous art was not supported by substantial evidence.

The invention claimed in the ’747 application is directed to a mixing device for use in the preparation of sugar-water nectar for certain bird and butterfly feeders. The mixing device comprises a container adapted to receive water and a movable divider. The divider can be positioned at three different locations within the container to define two compartments whose volume depends on the position of the divider. To prepare nectar, one compartment is filled with water and the other with sugar. Once the divider is removed, the sugar and water mix and the solution can be stirred. The three different possible locations for the divider define compartments having specific sugar/water volume ratios to make hummingbird nectar, oriole nectar, or butterfly nectar, respectively. Figure 4 of the ’747 application, shown below, illustrates the device (11), the divider (21), and the rail (15) with the compartments filled with water and sugar.

The examiner issued a final office action with five separate rejections under 35 U.S.C. § 103(a), each rejection supported by a different primary reference in combination with the applicant’s admission in the specification that the ratios of sugar to water for the three nectars were known in the art. The five references cited by the examiner were U.S. Patent Nos. 580,899 (“Roberts”); 1,523,136 (“O’Connor”); 2,985,333 (“Kirkman”); 2,787,268 (“Greenspan”); and 3,221,917 (“De Santo”). The Board rejected Mr. Klein’s argument that the five cited references were nonanalogous art, finding that each was pertinent to the problem the application addressed, “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” Slip op. at 5 (citation omitted). Thus, the Board affirmed each of the five obviousness rejections.

On appeal, Mr. Klein argued that the Board failed to make any finding that any of the cited references were “reasonably pertinent” to the problem addressed by his application. In response, the government contended that the Board correctly found that the prior art references were directed toward the same problem, which the government characterized as a “compartment separation problem.” Id. at 6-7. Thus, the government argued that the problem of keeping things separated was not unique to nectar mixing and storage devices, and that one confronted with the problem would have readily consulted the five references to discover the broad solutions employed therein and applied them to the problem sought to be solved by the ’747 application with no more than ordinary skill.

The Federal Circuit considered whether each of the five references was analogous art and thus properly relied upon by the Board in its obviousness determination. The Court reiterated that two separate tests define the scope of analogous prior art: “(1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” Id. at 7 (quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Federal Circuit focused solely on whether the references satisfied the “reasonably pertinent to the particular problem” test because that was the only test relied on by the Board. The Court noted that a “reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Id. (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The Federal Circuit first considered the Roberts, O’Connor, and Kirkman references. The Court found that (1) Roberts was directed to an apparatus comprising receptacles designed to receive “statement-cards” and removable partitions that would subdivide the receptacles into compartments; (2) O’Connor was directed to a tool tray having dividers that were readily movable, and that was adapted to contain comparatively small articles, e.g., drills, reamers, bits, etc., or hardware supplies such as bolts or nuts; and (3) Kirkman was directed to a drawer with removable partitions for dividing the drawer into two or more compartments of varying size. Figure 1 from Kirkman (shown below) is generally representative of the type of devices disclosed therein and in Roberts and O’Connor:

The Federal Circuit agreed with Mr. Klein that each reference is directed to a container designed to separate its contents, as opposed to one designed to facilitate the mixing of those contents. The Court also agreed that the government could not redefine the problem on appeal as “a compartment separation problem.” Id. at 12 n.1. Further, the Court found that none of the three references disclosed a partitioned container that was adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments. Thus, “[a]n inventor considering the problem of ‘making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals’ would not have been motivated to consider any of these references when making his invention.” Id. at 12.

The Federal Circuit then considered the Greenspan and De Santo references. The Court found that Greenspan was directed to a blood plasma bottle having compartments for dried plasma and water separated by a wall with a plug, wherein the plug could be removed to allow for mixing. The De Santo reference similarly taught two compartments designed to hold two different types of fluid that could be mixed together by removing a valve in the partition separating the compartments. Thus, each reference was capable of holding a liquid and was directed to “containers that facilitate the mixing of two separated substances together.” Id. at 15. The Court concluded, however, that “an inventor considering the problem of ‘making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals,’ would not have been motivated to consider either of these references since neither of the references shows a movable divider or the ability to prepare different ratios.” Id. at 15-16.

Thus, the Federal Circuit reversed the Board’s decision because the Board’s finding that each reference was analogous art was not supported by substantial evidence, and thus none could qualify as prior art under 35 U.S.C. § 103. In light of that finding, the Board’s obviousness rejections could not be sustained and the Court did not need to address Mr. Klein’s arguments regarding long-felt need or the Board’s overall obviousness determination. Accordingly, the Federal Circuit reversed and remanded the decision to the Board for further proceedings consistent with its opinion.

Summary authored by Carlos M. Tellez, Ph.D., Esq.