BPAI finds floor covering art is not analogous to contact lens art

Takeaway: In a chemical composition application, the BPAI found that a reference in the field of floor coverings was not analogous art to the other two references related to contact lenses. The Examiner argued that reference in question taught polymer branching, a feature which was applicable in the field of contact lenses as well as floor coverings. However, the BPAI focused on reasons why an inventor of contact lens would look to a floor covering reference to solve a problem, finding that the hypothetical inventor would not. The Board noted that "underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the
principle in other fields." (Ex parte Devlin, BPAI 2011.)

Details:

Ex parte Devlin
Appeal 2010011637; Appl. No. 10/991,124; Tech. Center 1700
Decided  April 4, 2011

The technology in Devlin's patent application related to "radiation-curable prepolymers useful for making polymeric articles, preferably ophthalmic device, more preferably soft hydrogel contact lenses.”

A representative claim on appeal read:

1. A crosslinkable polyurea prepolymer ... comprising the components of:
     (e) at least one aminoalkyl polyalkylene glycol of formula (1) ...
     (f) optionally at least one organic di- or poly-amine, wherein the organic diamine is ...
     (g) optionally at least one diisocyanate selected from the group consisting of ...
     (h) at least one polyisocyanate having at least three isocyanate groups ...

The Examiner rejected as obvious using a combination of three references: two in the field of opthalmic devices such as contact lenses, and one in the field of floor coverings.

The Examiner asserted that the primary reference (Stockwell) taught elements e through g and part of h. The Examiner then used two additional references to modify the primary reference, resulting in the remainder of element h.  The Examiner relied on specific teachings in the two secondary references as reasons to combine: the first modification (Bany) enhanced dimensional stability of contact lenses, while the second modification (Rosenberry) provided "superior abrasion and gouge resistance."

In the Appeal Brief, the Applicant focused on attacking the rationale for combining the references. The Applicant noted that the abrasion resistance characteristic of Rosenberry was an advantage to a floor covering, while the dimensional stability feature provided by the other two references was an advantage to contact lenses.  The Applicant argued that one would not combine features when they provided these different types of advantages.

In the Answer, the Examiner defended his use of the floor covering reference (Rosenberry) by focusing on the technical properties of the chemical compound itself rather than the use of the compound, as follows:

[O]ne of ordinary skill would understand the relevance of Rosenberry et al. – it teaches a suitable method for enhancing the mechanical properties of polyurethane based on acrylate functional prepolymer. The mechanical properties are enhanced by incorporating additional acrylate functionalities. The fact that Rosenberry et al. uses the prepolymer as a floor coating as opposed to a contact lens does not take away from the fact that it has been rendered obvious to increase the amount of branching of the final polymer, which is to be used as a contact lens. Bany et al. has already established this relationship. 
(Emphasis added.)

The Board found that the floor covering reference (Rosenberry) was not analogous art to the other two contact lens references. First, the fields of invention were clearly not the same. Second, the specific problem identified by the Examiner in the primary reference Stockinger was dimensional stability, and this was also the problem that the first secondary reference (Bany) was concerned with dimensional stability.  Rosenberry, however, was not at all concerned with this problem, but rather on "superior gloss retention, abrasion, gouge and stain resistance surfaces.”

On appeal, the Board was not persuaded by the Examiner's focus on the similarity of the technical features as a reason to combine:

The Examiner’s reliance on the idea of branching of polymers and thermosets does not provide a reason why Rosenberry would have been considered by an inventor of contact lenses considering the dimensional stability concerns of Stockinger and Bany. Even accepting that there was similarity at an underlying level of scientific principle, that similarity does not answer the question whether a contact lens designer would have looked to Rosenberry for an answer to the dimensional stability problem. Put another way, underlying similarity in a scientific principle of operation does not necessarily mean that an inventor in one field would have considered a reference pertinent which had applied the principle in other fields.

The Board cited to In re Van Wanderham as support for its reasoning.

The Van Wanderham case is illustrative. In Van Wanderham, an inventor claimed a rocket propelled missile booster cryogenic liquid propellant flow system having an insulating layer. Prior art that described material used in making cutlery was argued to show obviousness. The court found the determination “not without difficulty,” but found the reference not analogous, explaining that “the difficulty arises from not considering the subject matter as a whole and instead focusing on the scientific principle involved.” In re Van Wanderham, 378 F.2d 981, 988 (CCPA 1967).

My two cents: I don't practice in the chemical arts, but the Board's reasoning resonates with me. By framing the discussion in terms of "scientific principles," I think the Board articulated what's wrong with focusing solely on technical features when making a combination.

Namely, at some level, almost all references are similar. Chemical compounds are used in all types of products and fields, as are mechanical parts, as are electronic components. So if we look for reasons to combine at this high level, then all prior art is fair game for combination. The analogous art doctrine exists to draw the line somewhere to say that No, a hypothetical inventor would not combine such disparate references.

The Board helped the Applicant out a bit by considering the issue of non-analogous art. The Applicant did make arguments against the rationale to combine, but did not specifically raise the non-analogous art doctrine.

The Board's cite to In re Van Wanderham was unusual. The Applicant didn't mention the case, and it doesn't appear to be referenced in any other BPAI decision.