A Prior Art Reference from a Different Field May Serve as Analogous Art If It Is Reasonably Pertinent to the Problem Addressed by the Application
August 01, 2007
Last Month at the Federal Circuit - September 2007
Judges: Mayer, Schall, Prost (author)
[Appealed from: Board]
In In re Icon Health & Fitness, Inc., No. 06-1573 (Fed. Cir. Aug. 1, 2007), the Federal Circuit affirmed the Board’s decision holding claims of Icon Health and Fitness, Inc.’s (“Icon”) U.S. Patent No. 5,676,624 (“the ’624 patent”) unpatentable as obvious.
Icon owns the ’624 patent and sought reexamination by the PTO. The ’624 patent claims a treadmill with a folding base, allowing the base to swivel into an upright storage position. Claim 1, from which all other claims at issue depend, requires a gas spring “to assist in stably retaining” the tread base in an upright position. During reexamination, the PTO rejected Icon’s claims as obvious under 35 U.S.C. § 103(a) based on a combination of an advertisement for a folding treadmill by Damark International, Inc. (“Damark”) and U.S. Patent No. 4,370,766 to Teague, Jr. (“Teague”), which discloses gas springs for a folding bed. Icon appealed to the Board, which affirmed. In so doing, it rejected Icon’s argument that Teague was not analogous art and held that Teague’s teachings fell within the broad scope of Icon’s claims. Icon appealed.
On appeal, the Federal Circuit noted that Icon had not challenged the Board’s finding that Damark demonstrated all claim elements other than the gas spring. It noted that the present inquiry, therefore, focused on Teague’s disclosure of gas springs and the applicability of Teague to Icon’s invention. The Court observed that although neither party argued for any particular construction of the gas spring limitation, each party’s obviousness argument turned on the breadth of that limitation. It explained that during reexamination, as with original examination, the PTO must give claims their broadest reasonable construction consistent with the specification. The Court noted that the Board found that claim 1 did not limit the degree or manner in which the gas spring assists in stably retaining the tread base. It rejected Icon’s argument that the gas spring must provide a force continuing to urge the mechanism closed when in the closed position. The Court reasoned that the specification of the ’624 patent provided only minimal discussion of the gas springs and the phrase “stably retain.” It further noted that because Icon could have amended its claims to more clearly define “stably retain” and did not do so, it now must submit to the Board’s interpretation. Accordingly, given the “little guidance” in the specification, the Court concluded that the Board’s construction properly represented the broadest reasonable construction and that Icon’s claims encompassed “everything reasonably seen to assist in stably retaining the tread base.” Slip op. at 6.
Using this claim interpretation, the Court next analyzed the Board’s factual findings and conclusion of obviousness. Icon argued that Teague fell outside the “treadmill art” since it was directed to a folding bed and that it addressed a different problem than its application, removing it from the relevant prior art. The Federal Circuit disagreed. The Court reasoned that Teague may serve as analogous art if it was “reasonably pertinent to the problem addressed by Icon.” Id. at 7. 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. (citation omitted). Applying these principles, the Court found that nothing about Icon’s folding mechanism required any particular focus on treadmills and that Icon’s application rather generally addressed problems of supporting the weight of such a mechanism and providing a stable resting position. The Court reasoned that “[a]nalogous art to Icon’sapplication, when considering the folding mechanism and gas spring limitation, may come from any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in Teague.” Id. at 8. Accordingly, the Court concluded that substantial evidence supported the Board’s finding that Teague provided analogous art.
The Court also found that several factors supported the Board’s conclusion of obviousness. In particular, the Court noted that a variety of sources may have led one skilled in the art to combine the teachings of Damark and Teague. “[A]ny need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed,” stated the Court. Id. (quoting KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007)). The Court observed that Teague provided an example of a mechanism clearly satisfying Icon’s gas spring claim limitation. It explained that “while perhaps not dispositive of the issue, the finding that Teague, by addressing a similar problem, provides analogous art to Icon’s application goes a long way towards demonstrating a reason to combine the two references.” Id. at 9. It noted that because Icon’s broad claims read on embodiments addressing that problem as described by Teague, the prior art here indicated a reason to incorporate its teachings. In addition, the Court noted that “[t]he striking similarity between Icon’s application and Teague clearly illustrate[d] the similarity of problems they address[ed] and solutions to that problem, further supporting the idea that one skilled in the art would combine Teague with Damark.” Id. at 9-10. Accordingly, the Court concluded that these connections between Teague and Icon’s application provided a sufficient basis to conclude that one skilled in the art would combine the teachings of Teague and Damark.
Finally, the Court rejected Icon’s argument that Teague taught away from Icon’s invention. It observed that to the contrary, one skilled in the art would naturally look to Damark and Teague, finding reason to combine them and that the combination would produce a device meeting all of Icon’s claim limitations. The Court, therefore, affirmed the Board’s holding of obviousness.