BPAI overrules the Federal Circuit's analogous art test

Takeaway: In Ex parte  Leimkuhler, the BPAI held that the Federal Circuit test for non-analogous art "was subsequently broadened by the Supreme Court in KSR". According to the BPAI panel in Leimkuhler, "a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned." In contrast, the Federal Circuit test (most recently enunciated in In re Klein) requires a reference used in an obviousness rejection to be either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.” (Ex parte  Leimkuhler, BPAI 2012.)


Details:

Ex parte  Leimkuhler
Appeal 2010-003914; Appl. 10/920,721; Tech. Center 1700
Decided:  February 28, 2012

The application related to methods of food packaging. A representative claim on appeal read:

1. A method of packaging and cooking a vegetable where the package protects the vegetable and serves as a cooking container comprising the steps of:
   selecting a vegetable from a group of different types of vegetables;
   preparing the selected vegetable;
   providing shrinkable plastic film;
   modifying gas permeability of the film according to the type of the selected vegetable to be packaged, wherein the step of modifying includes making a plurality of about 0.02 inch diameter holes in said film;
   attaching an opening system to said film;
   sealing the modified film around the selected vegetable;
   shrinking the film to tightly envelop the selected vegetable;
   marketing the enveloped vegetable;
   cooking the enveloped vegetable in a microwave oven; and
   operating the opening system to release the vegetable from the film.

The Examiner rejected all independent claims, as well as a number of dependent claims, as obvious using a combination of 7 references.

The Applicant made several non-obviousness arguments on appeal, including non-analogous art. The Applicant began the argument by stating the analogous art test from In re Oetiker, 977 F.2d 1443, 1446 (Fed. Cir. 1992) which defines an analogous art reference as one that is either "in the field of applicant’s endeavor” or “reasonably pertinent to the particular problem with which the inventor was concerned.”

Next, the Applicant stated the field of the invention as "facilitating the packaging and microwave cooking of a fresh vegetable where the package protects the vegetable, and serves as a cooking container." The Applicant then analyzed the field of each of the 7 references, arguing that none of the references was in the field of the invention.

The Applicant further identified the problem with which the inventor was concerned as "providing an opening system for a packaging holding a vegetable for microwave cooking where the packaging (used for storage, transport and cooking as well as being conducive to vegetable respiration while controlling moisture loss during storage, transport and cooking) can be opened while still very hot."  The Applicant then analyzed the problem solved by each of the 7 references, arguing that none of these problems related to the problem addressed by the inventor.

The Board held that the Federal Circuit test was no longer valid because it had been superseded by KSR. The Board explained that:

The[Federal Circuit test from In re Oetiker], however, was subsequently broadened by the Supreme Court in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419-420 (2007) which stated that: "In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls…. The first error of the Court of Appeals in this case was… by holding that courts and patent examiners should look only to the problem the patentee was trying to solve." The Supreme Court explained that “[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt  variations of it, either in the same field or a different one.” KSR Int'l Co., 550 U.S. at 417. In other words, a prior art reference is analogous under 35 U.S.C. §103(a) if it is reasonably pertinent to any problem with which one of ordinary skill in the art is concerned. This broadened analogous art test suggested by KSR is consistent with the language of 35 U.S.C. § 103 which requires us to focus on one of ordinary skill in the art, rather than the subjective reason given by inventors in the Specification, in evaluating the content of the prior art to determine the propriety of obviousness. While any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of determining appropriateness of their combinability. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
(Emphasis added.)

The Board also found that all 7 references were analogous art under the Federal Circuit test, qualifying under either prong. For the first prong, he Board found that the field of the Applicant's invention was "packaging and/or cooking vegetables," as was that of all the references. As to the second prong, the Applicant's invention was "directed to solving problems associated with packaging vegetables for storage, cooking vegetables, and/or removing items, including cooked items, from packages." This problem "would have logically commended themselves to the inventors’ attention, who are considering storage, cooking,
and removal of vegetables in a package that are or will be subjected to heating in a microwave oven."

The Board went on to reverse the obviousness rejection after finding that the Applicant's expert evidence overcame the Examiner's prima facie case.

My two cents: From a procedural point of view, it's weird that the Board overruled the Federal Circuit without explicitly acknowledging that it did so. The Board should have at least said something like "We find that the Federal Circuit's most recent statement of the non-analogous art doctrine to be in conflict with the Supreme Court's KSR decision." (I'm assuming that Supreme Court precedent is the reason the BPAI felt it could overrule the Federal Circuit.)

From a substantive point of view, I think the Board got it wrong. First of all, the Supreme Court's discussion of the "problem" in KSR was in the context of the central question of TSM: 
[T]he Federal Circuit has employed an approach referred to by the parties as the "teaching, suggestion, or motivation" test (TSM test), under which a patent claim is only proved obvious if "some motivation or suggestion to combine the prior art teachings" can be found in the prior art, the nature of the problem, or the knowledge of a person having ordinary skill in the art. 

Second, the issue in KSR was not analogous art, but whether Teaching-Suggestion-Motivation is the only test for obviousness. The Supreme Court said the answer is No. The BPAI panel in Leimkulher was correct, of course, that  the Supreme Court went on to say that "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." But that applies to the overall determination of obviousness, not to the threshold question of whether a reference is analogous.

The universe of prior art allowed under the Federal Circuit's analogous art doctrine is broad enough. Under the doctrine used by the BPAI in Leimkuhler, the universe of prior art is almost infinite.