Friday, March 30, 2012

BPAI uses foreign patent by same inventor to determine field of the invention for non-analogous art analysis

Takeaway: The Applicant appealed an obviousness rejection of claims directed to floor panels and argued that two of the three references were non-analogous art to the claimed invention. In deciding the question of non-analogous art, the BPAI looked at statements in another foreign patent publication by the same Applicant to determine the problem with which the Applicant was involved.  (Ex parte Grafenauer, BPAI 2012.)

Ex parte Grafenauer
Appeal 2010001906; Appl. No. 11/533,634; Tech. Center 3600
Decided  February 29, 2012

The application on appeal was directed to floor panels. A representative claim on appeal read:
1.  A connecting element for connecting flooring panels with a core of wooden material, comprising
     a tongue on one side edge and a groove on an opposite side edge,
     wherein the tongue corresponds to a groove of a panel and the groove on the opposite side edge corresponds to a tongue of the panel, and
     two lips lying opposite one another embodied on a top side projecting beyond the one side edge and the opposite side edge,
     wherein the two lips are configured to provide a sole sealing mechanism.

The Applicant appealed an obvious rejection which combined three references. The Applicant argued that the two of the three references were not analogous art to the claimed invention. The third reference was a German patent publication to floor panels by the same Applicant, not a priority document for the application on appeal.

In deciding the issue on non-analogous art, the Board first stated the two-prong test, most recently summarized by the Federal Circuit as:
  1. whether the art is from the same field of endeavor, regardless of the problem addressed and, 
  2. if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.
    In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011)(quoting In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 6 2004))
The Board then turned to the problems addressed by the inventor and by the references. The Applicant's specification described one problem addressed by the inventor: "preventing moisture from penetrating through a joint into the core of a flooring panel."

Having discovered the problem addressed by the inventor, the Board turned to the first reference at issue, Foy. Foy was not directed to flooring systems, but did describe a resilient seal in contact with a window panel. The Board found Foy was analogous art because Foy's teachings were reasonably pertinent to the inventor's problem of preventing moisture from penetrating through a joint into the core of a floor panel. 

Turning to the second reference at issue, Andrzejewski, the Board noted that Andrzejewski described not merely a sealing strip, but one including an embedded metal carrier 8 designed to grip an edge flange or tongue." The Board found, by referring to the Applicant's German publication, that the inventor had more specifically addressed "the moisture problem by providing a tight connection on the top of the joined panels." The Board found corroborating statements in the Applicant's specification. Therefore, the Board reasoned, "Andrzejewski is reasonably pertinent to the Applicant's problem of locking connected panels in the transverse direction without the necessity of adding glue to the grooves or tongues used for locking the panels so as to tighten the connection on the top of the joint between a flooring panel and the connecting element."

The Board then distinguished In re Klein:
In Klein, our reviewing court criticized the Board for attempting to redefine in general terms the particular problem with which the applicant was involved. See id. at 1351 n.1. Here, the statements of the problems with which the Appellant was involved were taken from the Appellant’s Specification and from the Appellant’s statements in Grafenauer. In Klein, our reviewing court also criticized the Board because the cited references addressed a problem different from that with which the applicant was involved, namely, separating solid objects rather than “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” Id. at 1350-51. Here, the references address the same sealing and joint tightening problems addressed by the Appellant. The Appellant points to nothing in the holding of Klein inconsistent with finding that Foy and Andrzejewski are not non-analogous art.

My two cents: Wonder why the Board even brought up the Applicant's German patent publication? I say that because the Applicant's own spec discussed the problems addressed by the invention, so why bother to look elsewhere? Perhaps the Board read the German publication in order to evaluate it as a reference, happened to see some stuff about the problem solved, and decided to incorporate these statements into its reasoning. 

On the other hand, it wouldn't seem as weird if the Applicant's own spec was completely missing a discussion of problems solved by the invention. In such a case, how does one perform an non-analogous art analysis? Creative answer: look to other statements by the inventor.

I think this use of extrinsic evidence has to be circumscribed. Surely patents by the same inventor but directed to bird feeders won't help us learn about the problems this inventor was addressing in his floor panel application. In fact, I think the other application has to be really, really similar. Not just the field of floor panels, but about sealing between floor panels.

What other factors are relevant in deciding what sort of sources we can look to in understanding the inventor's problem? Does it matter than the application on appeal and the application used to learn about the problem have the exact same set of inventors? Here, that was the case. Does it matter that the two applications have the same assignee? Couldn't tell if that was the case here.

I can see a reexam requester using this sort of creative strategy.  Patents outside the US often contain lots of statements about problems and solutions. So suppose the patentee's own German patent publication is used in an obviousness rejection, and the patentee makes non-analogous art arguments. Then the reexam requester rebuts the non-analogous art argument by showing that the problems are similar. And if the patent under reexam doesn't describe the problem solved by the inventor, looks to related patents/pubs by the same inventor that do describe the problem.

The German reference published two years before the priority date of the application on appeal. The German reference never issued as a patent, and was instead revoked during an opposition.


  1. In a recent decision by the BPAI in one of my cases, the particular pannel stated that I used the wrong standard for non-analogousness. I had used Oetiker/Bigio/Klein. The BPAI panel took the position that KSR had broadened this so that a reference is prior art analogous under 103 if it is pertinent to ANY problem with which ONE OF ORDINARY SKILL is concerned.

    Complete stupidity but I have no means to point this out as they reversed the Examiner on other grounds and the Examiner subsequently allowed the application.

    1. "Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. " KSR International Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007).

      See MPEP 21410.01(a).

      So it's not any problem, it's any KNOWN need or problem in the field of endeavor at the time of the invention.

      I usually address non-analogous art by arguing that the examiner has not provided any substantial evidence of a KNOWN need or problem in the field of endeavor that the reference(s) addresses.

      Whether a reference is analogous is a question of fact. A finding by the examiner that a reference is analogous has to be supported by substantial evidence. Most times the examiner's finding is pure bullsh!t (i.e. unsupported by nothing except conclusory blatherings on the part of the examiner).

    2. >I usually address non-analogous art
      >by arguing that the examiner has not
      >provided any substantial evidence of
      >KNOWN need or problem

      Interesting. I don't recall ever seeing an Applicant try this with the Board.

      Do you use this approach when the reason proffered by the Examiner comes from one of the references? 'Cuz I would think that a statement from a reference does show that the need/problem is known.

      Though perhaps such a statement merely shows that a fact is known. So if the reference doesn't characterize the fact as a need or problem, maybe the fact is not enough.

      Do you use this approach when the Examiner uses a "generic" benefit, ie, smaller, faster, cheaper? Seems like some of these rationales could be viewed as sort of ever present. But strictly speaking, the generic motivation "remove the part to save cost" isn't *evidence* that such a need was recognized at the time of invention.

      Lastly ... have you had much success with this approach?

    3. Is it my imagination or is the KSR quote from the MPEP supposed to be directed to reasons why references should be combined rather than demonstratng a problem for determining whether or not the reference is analogous art.

      If any problem identified in a reference can be used to define that reference as analogous and also provide a reason to combine references, there will never be any reference outside the field of endeavor which will not be held to be analogous and the references will always be combinable for the reason defined by the very same "problem".

    4. >KSR quote ... supposed to be directed
      >to reasons why references SHOULD BE
      >combined rather than demonstrating a
      >problem for determining whether or not
      >the reference is analogous art.

      I think you're right -- the quote from KSR clearly says "provide reason to combine" and doesn't say anything about excluding references from consideration, ie, non-analogous art.

      Also, I haven't seen any post-KSR Fed Cir cases where this KSR language is used in a non-analogous art analysis.

      Your point that the KSR quote leads to a conclusion that everything is analogous is well taken. Which is kinda funny, since the original comment was about how to use this very KSR quote to fight obviousness (by requiring the Examiner to show the problem/need is known to POSITAs at the time of invention.)

  2. Isn't the BPAI supposed to limit its fact finding to the evidence of record? If the Examiner did not make an argument, is it not considered to be waived on appeal?

  3. >Isn't the BPAI supposed to limit its fact
    >finding to the evidence of record

    You'd think so ... after all, this is an "appeal", and the appeal context is usually limited to what's already on record. But I see the BPAI do fact finding all the time.

    Don't know enough about administrative law to know whether this is improper or not.

    And of course the BPAI does have the authority to bring up new grounds of rejection. Though they rarely designate something as new grounds, except for the egregious cases like turning a 103 into a 102 or vice versa.

  4. I wonder how this analysis would work if the Applicant of the foreign patent is a corporation (inventor's employer) instead of the inventor. Would the corporation's statements define the field of endeavor even though the corporation is a different party from the inventor?

  5. >Applicant of the foreign patent is a
    >corporation (inventor's employer) instead of
    >the inventor

    I thought about that too. In this particular case, the Applicant was the inventor.

    But with foreign patents, it's most common for the company to be the Applicant, rather than the inventor. So I too wonder how that would play out.

    Maybe statements in the foreign app are binding if the Applicant of the foreign app and the assignee of the US app are one and the same?

    1. I think it's pretty clear that anything in a spec, domestic or foreign, will almost always be presumed to be the position of the inventor rather than the corporate applicant, the attorney who drafted the spec, or anyone else who may have had a say in the final form of the application prior to filing,.

  6. >anything in a spec, domestic or foreign, will
    >almost always be presumed to be the position of
    >the inventor rather than the corporate >applicant,

    Interesting. Because I'm pretty sure that not all countries make the inventor sign a dec saying "this is mine". I don't the EPO requires an inventor dec.

    Should this matter in deciding whether or not the statement is attributable to the inventor?

  7. US Examiners will say that it doesn't matter how the EPO views things, they made the statement in the US counterpart (or closely related app) and I am therefore going to presume they weren't lying when I look at the EPO case. If you don't like my view, the US Examiner will say, then appeal me to the BPAI and see how much fun you have with that. Just take a look at Ex parte Grafenauer.

    1. >they made the statement in the US
      >counterpart and I am therefore going to >presume they weren't lying when I look
      >at the EPO case

      Yeah, I get that. And it makes sense if "they" is the same party. That is, if the same party made the statement in the two cases, then yeah, no question it's an admission.

      More interesting question is when a different party made it.

      Maybe it comes out the same way, ie, statements made by assignee are treated as if made by inventor. I probably wouldn't quibble with that.

      I'm just saying we should do the analysis, and not just assume statements by one party are admissions against another party.

    2. "I'm just saying we should do the analysis, and not just assume statements by one party are admissions against another party."

      I agree but I don't expect Examiners to do the analysis based on the fact that they rarely ever make half the analysis they are already supposed to. For example, the determination of ordinary skill in the art is rarely, if ever, performed by the Examiner and the BPAI has come up with excuses that allow the Examiners to get away with it.

  8. Wouldn't it be strange if the field of endeavor was defined based on the corporation instead of the inventor? That seems unreasonable because a corporation can have a wide variety of scientists and engineers with different specialities. The standard would go from "one of ordinary skill in the art" to "one team of ordinary skill in the art" (whatever that is).