jump to navigation

Non-analogous art April 18, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
trackback

A bane of inventors, particularly in the mechanical field, is non-analogous art.  You know you’re going to go to appeal when in the first office action you get a 5-way 103 rejection where one of the references is an 1890 vintage carpentry tool, when your invention is related to a surgical tool.

Ex parte Bezek provides a concise summary of obviousness law, and also provides a great template for arguing bad 103 rejections to the PTAB.  Quoting Bezek, “A reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, even if it addresses a different problem, or it the reference is reasonably pertinent to the problem faced by the inventor, even if it is not in the same field of endeavor as the claimed invention….In order for a reference to be reasonably pertinent to the problem, it must ‘logically have commended itself to an inventor’s attention in considering his problem.'”  (citations omitted).

Bezek was directed to a container for storing potato chips to minimize their breakage.  The Sardam reference was an IV container for reconstituting antibiotic.  The PTAB found that these were two different fields (that’s a slam dunk) and that the Sardam reference was directed to a different problem as Bezek, and as a result was not “reasonably pertinent” to Bezek.  Therefore, the rejection was reversed.

The practice takeaway relative to non-analogous art is to argue the problem solved by the prior art reference is a different problem than that solved by the claimed invention.

Advertisements

Comments»

No comments yet — be the first.

Leave a Reply

Fill in your details below or click an icon to log in:

WordPress.com Logo

You are commenting using your WordPress.com account. Log Out / Change )

Twitter picture

You are commenting using your Twitter account. Log Out / Change )

Facebook photo

You are commenting using your Facebook account. Log Out / Change )

Google+ photo

You are commenting using your Google+ account. Log Out / Change )

Connecting to %s

%d bloggers like this: