Sunday, February 28, 2010

Arguments guaranteed to lose: "non-analogous art" in context of anticipation

If you're addressing an anticipation rejection, there is absolutely no point in arguing that the reference isn't analogous art. Case law clearly says that "non-analogous art" is a legally irrelevant doctrine for an anticipation rejection. (See In re Schreiber, 148 F.3d 1478, 1478 (Fed. Circ. 1997)).

I've seen a number of cases where the Applicant really did make a non-analogous argument for anticipation, and where the Board pointed out the error. Not much to say about those cases. Perhaps the Applicant just didn't understand the law.

But in other cases, it looks like the Applicant's real point is that the terms used in the reference just don't mean the same thing as in the claims. For example, in Ex parte Zilavy, the reference taught an interrupt controller and the claims referred to a controller for a particular type of interrupt, a "system control interrupt." The Applicant argued that a generic interrupt described in the reference was different from the claimed "system control interrupt." However, in making the argument, the Applicant said the reference was "non-analogous". The Board correctly pointed out that whether or not a reference is "non-analogous" is irrelevant to anticipation: the only question is whether the claimed structure/function is taught.

In still other cases, it looks like the Applicant's real point is that the Examiner has ignored some limitations as "intended use," and that the reference doesn't teach those limitations. For example, in Ex parte Schryver, the appealed claim contained a number of structural limitations and was "operable for mixing two or more fluids." The Applicant made an argument along the lines of "clearly, the reference doesn't have the limitations at issue, because it's for a completely different use." While this underlying argument may be appropriate, couching it in terms of "non-analogous art" isn't helpful.

It's hard to tell from the decisions whether this inappropriate line of argument damaged the Applicant in any way. Ideally, the Board would simply ignore the "non-analogous" sentence in the argument, while still paying attention to the underlying basis of the argument (e.g., Zilavy's argument that a generic interrupt is not the same as the claimed interrupt). But what if the Board didn't ... what if they got to "non-analogous art" and skipped to the next argument? Why take that chance?

I see no upside to using the phrase "non-analogous art" when arguing anticipation, and plenty of downside. You should delete "non-analogous art" from your anticipation toolbox.

By the way, "teaching away" is another argument guaranteed to lose in the context of anticipation. See my earlier post here on this topic.)

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