The Federal Circuit doesn't reverse many BPAI decisions, but last week's In re Klein decision reversed all five obviousness rejections. The Federal Circuit based its reversal solely on the Board's findings that five references were analogous art as compared to the claimed invention. The court concluded that none of the Board's findings of analogous art were supported by the evidence, and so remanded the application back to the BPAI for further proceedings.
In re Klein (Serial No. 10/200,747)
Federal Circuit Docket No. 2010-1411
Decided June 6, 2011
The only independent claim on appeal read:
21. A convenience nectar mixing device for use in preparation of sugar-water nectar for feeding hummingbirds, orioles or butterflies, said device comprising:
a container that is adapted to receive water,
receiving means fixed to said container, and
a divider movably held by said receiving means for forming a compartment within said container,
wherein said compartment has a volume that is proportionately less than a volume of said container, by a ratio established for the formulation of sugar-water nectar for humming-birds, orioles or butterflies,
wherein said compartment is adapted to receive sugar, and
wherein removal of said divider from said receiving means allows mixing of said sugar and water to occur to provide said sugar-water nectar.
The Examiner made five different obviousness rejections. Each rejection relied on a single reference for the container, receiving means and divider, with a statement in the Applicant's background providing the specific sugar-water ratios.
The Board explicitly found, based on a statement in the application background, that the problem addressed by the invention was "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals." Three of the references were drawers, and the remaining two were bottles. The Board also found that each of the five references disclosed a container with movable dividers "for the purpose of keeping two or more things separate." The Board then summarily concluded that each reference was "reasonably pertinent" to the inventor's problem, and thus each reference did qualify as analogous art.
On appeal to the Federal Circuit, the applicant argued that the Board's findings that the references were "reasonably pertinent" to the inventor's problem were nothing more than conclusory statements, unsupported by evidence.
The Federal Circuit agreed. The first three references were not analogous since:
[t]he purpose of each of Roberts, O’Connor, or Kirkman is to separate solid objects. 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 any of these references when making his invention, particularly since none of these three references shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments.The remaining two references involved fluid containers, but were still not analogous because they failed to "address multiple ratios and did not have a "movable divider" as claimed.
My two cents: Don't get too excited and think that the standard for analogous art has been tightened. The reversal here was a result of a single fatal mistake by the BPAI: adopting a narrow problem statement from the background. You simply can't sweep in dividable drawers one you limit yourself to this narrow problem. In fact, you can't even sweep in fluid containers if they don't have movable dividers.
In the Solicitor's Brief to the Federal Circuit, the PTO attempted to fix this deficiency in the Board's decision by arguing that the problem was really a "compartment separation problem." The Federal Circuit said that administrative law prohibited the PTO from changing its position like this.
I have no idea why the Board went with such a narrow problem statement. The Applicant acknowledged, in his BPAI Appeal Brief, a slightly broader version: "making it convenient to prepare a fixed ratio formulation of food or feed".
I'm bothered by the Board's inclusion of moveable dividers into the problem statement. Aren't the moveable dividers part of the solution (to the problem of preparing different ratios), rather than the problem itself?
When formulating the "problem solved" for the purposes of determining analogous art, how much do we look at the claims and how much do we look at the spec? The three specifically recited elements – container, receiving means, and divider – are not limited to making nectar for different birds. Maybe the stuff about nectar, birds, sugar, and water are all intended use. In that case, the problem might be something like "prepare different predetermined ratios of solvent and solute" or even "prepare different predetermined ratios of two ingredients".
Another very puzzling aspect of the Board's decision is that they considered only the "pertinent to the inventor's problem" prong of the non-analogous arts test. The Applicant argued that the references were not in the same field as the invention, but the Board completely ignored this prong. [And as a result, the Federal Circuit didn't consider this on appeal.]
Are the references analogous under the "same field" prong? Depends on what the "field" of the invention is. Bird feeders? Animal feeders? Feeders? Containers for liquid? Containers with partitions? Containers with moveable partitions?