Monday, June 13, 2011

Federal Circuit reverses BPAI finding of analogous art (In re Klein)

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.
(Emphasis added.)
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?


  1. The analogous art test lives!!!!!

  2. As pointed out, one prong of the test is whether the reference is in the APPLICANT'S field of endeavor. However, Examiners frequently avoid dealing with the field of endeavor as defined by the Applicant itself and instead, the Examiner tries to define the field of endeavor as broadly/generically as possible so as to encompass both the Applicant's invention and the references chosen by the Examiner. The MPEP provides some good guidance for the Examiners but they usually ignore it.

  3. In re Bigio talks about how to meet the field of endeavor test.

  4. In re Bigio is directly mentioned in MPEP 2141.01(a) (Analogous and Nonanalogous Art) as follows:
    "See also In re Bigio, 381 F.3d 1320, 1325-26, 72 USPQ2d 1209, 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a specific bristle configuration. The Board affirmed the examiner's rejection of the claims as being obvious in view of prior art patents disclosing toothbrushes. 381 F.3d at 1323, 72 USPQ2d at 1210. The applicant disputed that the patent references constituted analogous art. On appeal, the court upheld the Board's interpretation of the claim term "hair brush" to encompass any brush that may be used for any bodily hair, including facial hair. 381 F.3d at 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the "field of endeavor test" for analogous art and determined that the references were within the field of applicant's endeavor and hence was analogous art because toothbrushes are structurally similar to small brushes for hair, and a toothbrush could be used to brush facial hair. 381 F.3d at 1326, 72 USPQ2d at 1212."

    However, Examiners still ignore it. But again, even with the test, Examiners still make these overly broad generalizations so as to try to encompass the Applicant's field of endeaver and the references the Examiner came up with. You can respond by point out the lack of structural similarity between the Applicant's claimed invention and the "prior art" but the Examiner simply blows this off and re-iterates that they are both within the same field of endeavor and/or directed to solving the same problem to which the Applicant's device was directed.

  5. Would the structural similarity argument have worked in the Board's favor in the present case?

  6. >Would the structural similarity argument
    >have worked in the Board's favor

    ie, is the field of the reference the same as the field of the invention using the In re Bigio test for "same field"?

    You have to do claim construction first.

    What is "a container that is adapted to receive water"? What is the "receiving means"? What is "a compartment"? What is "adapted to receive sugar" ? Does the "wherein removal" clause get any patentable weight, or is it intended use?

    Only then can you decide whether these elements are structurally similar to the elements in each reference. The Board didn't do any claim construction.

  7. "The Board didn't do any claim construction."

    And neither will an Examiner....unless it's to give the broadest possible interpretation as opposed to the broadest reasonable interpretation in view of the spec.

  8. I'm confused. Shouldn't the title of this entry be "Federal Circuit reverses BPAI finding of analogous art" instead of "Federal Circuit reverses BPAI finding of non-analogous art"?

  9. >title of this entry be "Federal Circuit
    >reverses BPAI finding of analogous art

    Yep. Fixed. Thanks.

  10. Apparently I need to transfer to whatever AU examines this type of case.

    Here's a MUCH stronger primary reference:

    A few excerpts:
    [0003] Often it is necessary or desirable to mix two fluids in specific ratios
    by volume (referred to hereafter as the "mixing ratios").

    Some embodiments of the present invention employ a container having first and
    second chambers for receiving first and second fluids, respectively.
    Preferably, the first and second chambers are separated by a divider. The
    divider can be movable, removable, or can otherwise be opened to selectively
    connect and separate the first and second chambers. In this manner, first and
    second fluids can be inserted into respective chambers, after which time the
    divider can be moved to mix the first and second fluids. Preferably, the
    divider can be positioned to seal one chamber from the other to keep fluids in
    the chambers separate from one another. The first and second chambers are
    preferably shaped and sized to enable a user to mix the first and second fluids
    in a desired mixing ratio by at least partially filling the chambers with the
    fluids to a common level.

    [0024] The term "fluid" is used herein and in the appended claims, and is
    intended to include any substance that is a liquid, gas, or other flowable
    substance. The term "fluid" therefore includes any solid in flowable form,
    such as granular or powder material.

  11. Whoops didn't see Arnie's priority goes back to 2001. Still there's got to be something like the above reference that beats his date

  12. "Whoops didn't see Arnie's priority goes back to 2001. Still there's got to be something like the above reference that beats his date"

    Looks like we'd better hold off on that transfer.

  13. "Looks like we'd better hold off on that transfer."

    LMAO -- 6 strikes again and epitomizes the quality of examination we get at the USPTO.

  14. "Still there's got to be something like the above reference that beats his date"

    Here's an idea: why don't you review the prosecution hisotry of 2003/0192911 and see if there is anything better that beats Arnie's priority.


    Your future SPE

  15. Lulz you fools, that wasn't me submitting that reference above.