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.)

Details:
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.