Takeaway: In evaluating non-analogous art arguments, the BPAI considers evidence that references are in different PTO classification to be "weak." The Board has cited two different Federal Circuit decisions as support for this proposition:
Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).
While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).Details: I found four decisions in which the BPAI rejected non-analogous art arguments based on classification evidence.
The claims in Ex parte Gargiulo were directed to a postage metering system which could be controlled through voice commands received through a telephone interface. The claimed system also converted the voice commands to text and printed the text. The Examiner combined three references: a postage metering system having voice recognition; a text-to-speech converter having a telephone interface; and a postage metering system which printed non-voice messages.
The Applicant made a very cursory non-analogous art argument:
The rejections should be reversed because the references are not in an art analogous to that of the invention as presently claimed. Appellant respectfully submits that the cited references are in extremely non-analogous art areas and that there is absolutely no motivation to combine the references. See Wang Lab., Inc. v. Toshiba Corp., 993 F. 2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993.)
The Board affirmed the rejection, noting that it was obvious to include known elements and techniques from the text-to-speech system in the voice-controlled postage metering system to yield predictable results. The Board also dismissed the non-analogous argument:
While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).
The claims in Ex parte Mittleman were directed to luggage with a towing handle. The Examiner combined a portable cooler with a multipurpose cart. The Board dismissed the Applicant's classification argument:
Appellants contend that the USPTO classification system places baggage and coolers in different classes, illustrating that the USPTO considers coolers and pieces of baggage “as representing different fields of endeavor.” Reply Br. 8. In this attack on the definition of “baggage,” Appellants appear to be arguing that a cooler is not analogous art to baggage. Regarding analogous art, evidence of classification in different categories by the PTO “is inherently weak ... because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n. 5 (CCPA 1982). Appellants’ argument fails to demonstrate that coolers are nonanalogous art to baggage.
The claims in Ex parte Nelson were directed to an electrically heated asphalt paving system having a bounding layer and an outer insulation layer. The Examiner combined an asphalt paving system reference without the claimed layers with a reference teaching a thin sheet electric heater having the claimed layers. The Applicant made a spirited non-analogous art based on classification:
The record in this application has finally been clarified by the Examiner conceding that Borrup (U.S. Patent 4,384,401) is not analogous art based upon the fact that Borrup is directed toward solving a problem that is different from the particular problem with which the Applicant was concerned. This should come as no surprise as Borrup is directed to a method of mass producing heater elements in class/subclass 29/611, whereas the parent patent to the present application is classified in class/subclass 404/118. But the Examiner now holds that Borrup is analogous art because "Borrup appears to be in the field of endeavor" of Applicant since "Borrup teaches the use of an electric heater, bonded to a metallic substrate to form a heated plate to warm various materials." The Examiner has misapplied the law in reaching the conclusion that Borrrup is analogous art based upon it being supposedly in the same field as Applicants' endeavor. Based upon the Examiner's flawed reasoning, a determination of whether a reference is in an Applicants' field of endeavor relates to what it discloses without any regard to where that disclosure is hidden away in the vast sea of information constituting the U.S. Patent database.
(Emphasis added.)
The Board dismissed the non-analogous art argument:
Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982). Thus, Appellant's argument directed to the USPTO's classification of Borrup is not persuasive.
The claims in Ex parte Matus were directed to a plasma torch cutting system with a control system. The control system for the torch included a serialization circuit. The Examiner combined one reference teaching a plasma torch with another reference teaching a serialization circuit as used in a plasma coating system. The Applicant made a detailed non-analogous argument:
Second, despite the assertion that serialization merely comprises common experience in plasma cutting torch control, the Examiner has provided no examples of the commonality of or use of a serialization circuit with a plasma cutting system. Instead, the Examiner relies upon the disclosure of a serialization circuit in a coating system, which as stated above, is very different from cutting systems and has very little in common with a plasma cutting system. A review of the divergent classification of the two cited references is evidence of such. That is, Schneider et al. (similar to the present application) is classified under the broad class of "219 - Electric Heaters" whereas Schutz is classified under the broad class of "250 - Radiant Energy." Thus, the cited references are not merely different in respect to their subclasses, but in regard to their much broader class, and as such, the search of one class of for one patent would not be likely to uncover the other patent. Merely because the references have a common word (i.e., "plasma"), they are not necessarily in the same art ...
The Board summarily dismissed the argument, noting that "evidence of classification of prior art in different categories by the PTO 'is inherently weak . . . because considerations in forming a
classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.' In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982)."
My two cents: Looking to classifications seems like a creative argument against obviousness, but it's simply not supported by case law. You're better off dealing with the two prong test for analogous art:
Two criteria are relevant in determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the art is not within the same field of endeavor, whether it is still reasonably pertinent to the particular problem to be solved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed.Cir.1992) (citations omitted).
Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed.Cir.1993)
Would you say that this boils down to: "if the examiner could search and find this prior art then it is presumed reasonable that someone of skill in the art could find it too"?
ReplyDelete>if the examiner could search and find this
ReplyDelete>prior art then it is presumed reasonable that
>someone of skill in the art could find it too
I don't see it that way. The standard seems to have absolutely nothing to do with searching. When the Applicant in Matus said "without any regard to where that disclosure is hidden away in the vast sea of information constituting the U.S. Patent database," he had it exactly right.
As to whether or not two references are properly combinable *should* have something to do with searching ... that's a whole 'nother question.
The second prong of the analysis ("reasonably pertinent") tells me that it has nothing at all to do with searching.
And the Fed Cir cases mentioned here
I currently have an appeal pending at the BPAI. I argue classification differences as some evidence of non-analogy. I argued as one aspect of non-analogous. I also argued that substantial differences in structure/function as evidence of non-analogousness. Classification is weak by itself but can be useful for making the overall case of non-analogousness.
ReplyDelete>Classification is weak by itself but can be
ReplyDelete>useful for making the overall case of
>non-analogousness.
That makes sense. The title of my post ("guaranteed to lose") was perhaps a bit strong.