Board finds non-analogous art when Examiner mistakes advantage in reference with problem solved by reference

Takeaway: In appealing an obviousness rejection of a semiconductor device, the Applicant argued that one of the references was non-analogous art. The Examiner asserted that the anti-fogging film disclosed in the reference had the same purpose – excellent durability and wear resistance – as the claimed invention, and was therefore analogous. The Board found that the Examiner had erred in characterizing the problems. The Board found that the problem solved by the invention was "protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer". The Board found that reference solved a different problem: fogging of window glass, mirrors, and lens. The Board therefore reversed the § 103 rejection. (Ex parte Seo, PTAB 2013.)

Details:
Ex parte Seo
Appeal 2011-005820; Appl. No. 11/378,799; Tech Center 2800
Decided:  October 11, 2013

The application on appeal was directed to a semiconductor device for an LCD display. The independent claim on appeal read:

     1. A display device comprising:
     a substrate;
     a metal layer formed on the substrate and including a top surface and a side surface, wherein the metal layer comprises aluminum or an aluminum alloy;
     an insulating layer covering the metal layer; and
     an aluminum complex oxide layer disposed between the top and side surfaces of the metal layer and the insulating layer, wherein the aluminum complex oxide layer is formed by applying to the metal layer a coating solution that comprises at least one selected from the group consisting of zirconium, tungsten, chromium and molybdenum.

The Examiner rejected the originally filed independent claim 1 as obvious over Doushita in view of Applicant Admitted Prior Art. The Examiner relied on Doushita for the aluminum complex oxide layer element (location and composition), and AAPA for everything else. As a reason for combining, the Examiner asserted that Doushita's coating would provide "the structure of the admitted prior art with 'excellent durability, wear resistance, anti-fogging property and anti-fogging sustainability property'. "

During prosecution, the Applicant made various amendments, but the Examiner maintained the obviousness rejection using Doushita and AAPA. The Applicant also made one argument: that Doushita was non-analogous art. As a preliminary matter, the Applicant noted that Doushita and the invention were in different classifications: Class 428 "Stock material or miscellaneous articles" as compared to Class 438 "Semiconductor device manufacturing: process." Moving on to the test for analogous art, the Applicant first discussed the respective fields of invention. Doushita disclosed an anti-fogging article used for "buildings, vehicles, optical components, [etc.]," but this list did not include a semiconductor device (Applicant's field). The Applicant then discussed the purpose or problem solved: for Doushita, anti-fogging, with durability and wear resistance as secondary characteristics; for the Applicant, corrosion of aluminum, with secondary characteristics of electrical resistance, electrical conductivity, and adhesive strength. Therefore, "Doushita is not reasonably pertinent to the specific problem with which the Applicants were involved."

During prosecution, the Examiner did not directly respond to all of the Applicant's non-analogous art arguments. The Examiner did clarify that Doushita was "not used for the claimed structure but for the substitution of the conventional aluminum oxide layer formed on the line." The Examiner also explained that several of Doushita's applications for the anti-fog coating (i.e., "optical component," "medical equipment," "mirror," "lens") amounted to an application for semiconductor devices.
 
After several rounds of prosecution (including an RCE), the Applicant appealed. In the Appeal Brief, the Applicant reiterated the previously made non-analogous art argument, concluding with: 

Applicants fail to understand how the problem of anti-fogging of window glass, mirrors, and lens is reasonably pertinent to the problem of protecting a metal layer 212 of a semiconductor from corrosion with an aluminum complex oxide layer 213.

 The Applicant separately argued that the Examiner's rationale for combining was insufficient:

     Doushita simply discloses an aluminum oxide used as an anti-fogging article. Nowhere does Doushita disclose the structural relationship of the aluminum oxide layer relative to any other layer(s). Doushita fails to disclose the aluminum complex oxide layer is disposed between the top and side surfaces of the metal layer and the insulating layer. As such, without more structure specifics, Applicants submit the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer.
     Therefore, there is no suggestion to combine AAPA and Doushita with each other so as to obtain the technical features of Applicants' claimed subject matter.

Notably, the Applicant did not argue that the combination failed to disclose the claimed limitations.

The Examiner's Answer include (for the first time) a specific response to the non-analogous art argument. The Examiner asserted that Doushita's teaching of an aluminum complex oxide layer with "excellent durability and wear resistance" was "the same purpose as the claimed invention" and was therefore "reasonably pertinent and has enough motivation to be considered." Addressing Applicant's argument about classifications, the Examiner had "considered or cross referenced" the "miscellaneous articles" referred to in the title of Class 428. "Further, 'optical component' is a semiconductor device; and  Class 438 'Semiconductor device manufacturing: Process' deals with this device formation."

The Board  reversed the obviousness rejection. The Board first explained that the field of endeavor was determined by looking at "explanations of the invention’s subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” (In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)). The Board then characterized the problem solved by the reference (fogging of window glass, mirrors, and lens) and the problem addressed by the claimed invention (protecting a metal layer of a semiconductor from corrosion with an aluminum complex oxide layer).

The Board concluded that the anti-fogging properties of Doushita’s film "would not have logically attracted the attention of an artisan possessing knowledge of Appellants’ Admitted Prior Art." Despite Doushita's mention of "optical components" as a use for the disclosed anti-fogging article, the Board found that the anti-fogging properties "would have little utility on a semiconductor device."

As an independent basis for reversal, the Board agreed with the Applicant's second argument that the Examiner's rationale for combining was insufficient. Although Daushita taught the use of aluminum oxide as a coating and listed various advantageous properties of the coating, Daushita lacked the structural details of the oxide that were recited in claim 1. The Board agreed that "without more structure specifics, ... the complex oxide of Doushita is functionally and structurally different from Applicants' aluminum complex oxide layer used to prevent a corrosion of the metal layer."
My two cents: An important part of analogous art analysis is framing the problem. Here, the Examiner confused an advantage disclosed in the reference for a problem solved by the reference. Which seems to be related to focus. It's common for a reference to have a laundry list of advantages, Here, that list did include an advantage – wear-resistance – that overlapped with an advantage of the invention – corrosion protection.  But as suggested by the title ("Non-fogging article and process for the production thereof"), the problem solved by the reference was not susceptibility to wear, but fogging. Kudos to the Applicant for honing in on this winning argument.

PTAB not persuaded that reference disclosing non-elected species is improper

Takeaway: In appealing an obviousness rejection, the Applicant attacked the availability of a reference on the grounds that this contradicted an Election of Species requirement. More specifically, the Applicant argued that since the Applicant chose not to elect claims to a window refrigerator in combination with freezers and air conditioners, the Examiner was precluded from using a reference to a central air conditioner, which was even further removed than was the non-elected combination. The Board was not persuaded, noting that the only preclusive effect of a Restriction/Election was on divisional applications. (Ex parte Arjomand, PTAB 2014.) 

Details:
Ex parte Arjomand
Appeal 2012-008435; Appl. No. 11/474,530; Tech. Center 3700
Decided:  Nov. 3, 2014

The Application on appeal was titled "Window Refrigerator." According to the Specification, "during the hot summer months, this device can be used as both a refrigerator/freezer (R/F) and an indoor cooling and de-humidifying device; and in winter as an indoor heating-humidifying device."

At the start of prosecution, the Examiner issued an Election of Species Requirement, identifying species A, B, and C corresponding to Figures 1, 4, and 9. The Applicant filed a Response electing Group B (Fig. 4) and asserting that the elected group covered claims 24-37. The Response also stated:

Applicant thanks the examiner for recognizing the patentable distinctness of the subject matter of [elected] claims 24-37 over the subject matter of the other grouped claims. Clearly, claims 24-37 would be patentable over any prior art which is further removed from these claims than is the subject matter of [independent] claims 23 or 38.
(Emphasis added.)

In the first Action on the merits, the Examiner rejected all claims as obvious over Lukas, Metcalfe and Maeda. In the Response to this first Office Action, the Applicant argued, i.a., that this § 103 rejection was "improper for procedural reasons" because it was contradictory to the restriction/election requirement:

The examiner [through the Restriction/Election Requirement], in effect, held that a claim directed to a combination of a freezer and a refrigerator was patentable over a combination of an air conditioner and a cooling area for food (refrigerator), as see Section 802.01 of the MPEP. The examiner should not now be heard to say that the combination of a freezer and a refrigerator is unpatentable over the combination of an air conditioner and a refrigerator.

The Examiner issued a new ground of rejection in the next Office Action and did not comment on the Applicant's "contradictory" argument.

After several more rounds of prosecution , the Applicant appealed. By the time of appeal, the obviousness rejection had evolved to include a different set of references: Wertheimer, Maekawa (from the first Office Action) and Shavit. In the Appeal Brief, the Applicant renewed the "contradictory" argument and used it to challenge whether Shavit was a proper reference under § 103.

     The examiner's reliance upon Shavit and Wertheimer raises an issue that was decided early on in the prolonged prosecution of this application. Prior to a first action on the merits the examiner required an election of species between Fig. 1, Fig. 4, and Fig. 9. Fig. 1 is related to a window air conditioner. Fig. 4 is related to a window refrigerator. Fig. 9 is related to a window refrigerator associated with a freezer and a heat pump (air conditioner).
     Section 802.01 II of the M.P.E.P. states in part: "Related inventions are distinct if the inventions as claimed are not connected in at least one of design, operation, or effect (e.g., can be made by, or used in, a materially different process) and wherein at least one invention is PATENTABLE (novel and nonobvious) OVER THE OTHER (though they may each be unpatentable over the prior art)." (Capitals in original.)
     [During prosecution] the examiner acknowledged the election of claims 24-29 [Fig. 4 (window refrigerator)]. At that time he could have withdrawn the requirement, had he considered that window refrigerators were not patentable over window refrigerators associated with freezers and air conditioners. By maintaining the [restriction/election] requirement the examiner confirmed that window refrigerators are considered to be patentable over window refrigerators associated with freezers and air conditioners. This being the case, it is quite clear that window refrigerators are [also] patentable over central air conditioners. It is appellant's position that the use of a reference drawn to a central air conditioning system is improper and contrary to the examiner's [initial] position that window refrigerators are patentable over window refrigerators associated with freezers and air conditioners.

The claim groups resulting from the Restriction/Election were as follows:

STATUS	FIGURE	FIGURE DESCRIPTION	CLAIM
Unelected	Fig. 1	"thermos attached to the front of a window A/C"	23. A combination of a window .... a device comprising an air conditioner passing through the window having a front side ... with a control panel, and a thermos attached to the front of the air conditioner ...
Elected	Fig. 4	"standalone small size window R/F"	24. A combination of a window ... and a window refrigerator/freezer device, which device has a motor, a compressor, an evaporator, and a condenser coil and at least one of a refrigerator compartment and a freezer compartment..
Unelected	Fig. 9	"full-size window R/F having an auxiliary heat pump on top of it"	38. A combination of a window .... ; a window refrigerator/freezer device having a motor, a compressor, an evaporator, and a condenser coil ..and a heat pump device

The Board was not persuaded that Shavits was an improper reference. The Board explained that there is no connection between restriction/election and availability of a reference:

     Appellant further argues that the Examiner’s reliance on Shavit to remedy this deficiency is improper because, before beginning examination on the merits, the Examiner issued an Election of Species Requirement dividing the Application into three species, and one of the non-elected species relates to air conditioners, as does Shavit. ....
     We do not agree with Appellant’s position on this point. The Election of Species Requirement was issued based on the content of the Application, and any preclusive effect of the Election of Species Requirement with respect to rejections of the elected claims extends only to divisional applications directed to the non-elected species, not to other references. See 35 U.S.C. § 121.

My two cents: I had a hard time following the Applicant's own argument, but I understood the Board's characterization. I thought the Applicant's argument was creative, but also completely off-base.

The Applicant relied on a (mis)reading of the MPEP's definition of the term "distinct" used in the divisional statute. The crux of the Applicant's argument seemed to hinge on this phrase:  "PATENTABLE (novel and nonobvious) OVER THE OTHER."

Applicant's reasoning appeared to be:

• Examiner said window refrigerators are distinct from window refrigerators in association with freezers and air conditioners.
• According to the definition of distinct, window refrigerators are therefore Patentable Over window refrigerators in association with freezers and air conditioners
• Window refrigerators are therefore Non-Obvious over window refrigerators in association with freezers and air conditioners
• A reference disclosing a window refrigerator associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)
• A central air conditioners is even further removed from a window refrigerator (one without freezers and air conditioners?) than are freezers and air conditioners
• CONCLUSION: A reference disclosing a central air conditioner associated with freezers and air conditioners is therefore improper in an Obviousness rejection of a window refrigerator (one without freezers and air conditioners?)

What baffles me is that the Applicant argued this as a matter of law, when the argument at best had a sort of intuitive appeal, as a matter of logic. But the logic falls apart pretty fast, because the Applicant ignored the magic word "claims": the comparison in the PATENTABLE OVER clause is to claims. So a claim to a window refrigerator is PATENTABLE OVER a claim to a window refrigerator in association with with freezers and air conditioners.

So, we're talking about claims, not disclosure. Moreover, we're talking about groups of claims in the same application.

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.

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.

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.

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

Takeaway:
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.


Details:

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?

Mistake #9 when arguing at the BPAI: Arguments that ignore relevant case law

Mistake #9 of my "Top Ten Mistakes Applicants Make at the BPAI" is making arguments that clearly go against existing case law. Here are the most common examples I've observed.

• Ignoring KSR. Obviousness doesn't require a motivation to combine from the references. After KSR, the test is instead "articulated reasoning with some rational underpinning" to combine the references. See my previous post "Mistake #6 when arguing at the BPAI: Arguing the TSM test for obviousness".
• Using the wrong standard for "teaching away."  The Federal Circuit has said that disclosure of an alternative to X is not teaching away from X.  In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of thesealternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed.”)
• Making obviousness arguments in an anticipation rejection. Non-analogous art is irrelevant to anticipation (see previous post here). Teaching away is irrelevant to anticipation (see previous post here). Secondary considerations such as unexpected results are irrelevant to anticipation (see previous post here).
• Bringing up the number of references when arguing obviousness. The Federal Circuit has said that the number of references is not an indicator of non-obviousness. In re Gorman, 933 F.2d 982 (Fed. Cir. 1991) ("The large number of cited references does not negate the obviousness of the combination, for the prior art uses the various elements for the same purposes as they are used by appellants, making the claimed invention as a whole obvious in terms of 35 U.S.C. § 103.") 
• Bringing up the age of the references when arguing obviousness. The Federal Circuit's predecessor has said that the age of the references is not an indicator of non-obviousness. "The mere age of the references is not persuasive of the unobviousness of the combination of their teachings, absent evidence that, notwithstanding knowledge of the references, the art tried and failed to solve the problem." In re Wright, 569 F.2d 1124 (CCPA 1977)(citing In re McGuire, 416 F.2d 1322 (CCPA1969)). 
•  Bringing up another that patent issued with similar claim language. The patentability of other applications is legally irrelevant. See my previous post "Arguments guaranteed to lose: 'but look at these similar claims in other issued patents'."
• Making arguments about due process and equal protection. The BPAI has no jurisdiction over these issues. For the Board's response to a due process argument, see the inter partes reexam decision here in Meadwestvaco v. Graphic Packaging Int'l.  See the post here at The Florida Patent Lawyer blog for the Board's response to an equal protection argument.

Arguments guaranteed to lose: non-analogous art when classifications are different

Takeaway: In evaluating non-analogous art arguments, the BPAI considers evidence that references are in different PTO classification to be "weak." The Board has cited two different Federal Circuit decisions as support for this proposition:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982).

While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

Details: I found four decisions in which the BPAI rejected non-analogous art arguments based on classification evidence.

The claims in Ex parte Gargiulo were directed to a postage metering system which could be controlled through voice commands received through a telephone interface. The claimed system also converted the voice commands to text and printed the text. The Examiner combined three references: a postage metering system having voice recognition; a text-to-speech converter having a telephone interface; and a postage metering system which printed non-voice messages.

The Applicant made a very cursory non-analogous art argument:

The rejections should be reversed because the references are not in an art analogous to that of the invention as presently claimed. Appellant respectfully submits that the cited references are in extremely non-analogous art areas and that there is absolutely no motivation to combine the references. See Wang Lab., Inc. v. Toshiba Corp., 993 F. 2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993.)

The Board affirmed the rejection, noting that it was obvious to include known elements and techniques from the text-to-speech system in the voice-controlled postage metering system to yield predictable results. The Board also dismissed the non-analogous argument:

While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the similarities and differences in structure and function of the inventions carry far greater weight. In re Ellis, 476 F.2d 1370, 1372 (CCPA 1973).

The claims in Ex parte Mittleman were directed to luggage with a towing handle. The Examiner combined a portable cooler with a multipurpose cart. The Board dismissed the Applicant's classification argument:

Appellants contend that the USPTO classification system places baggage and coolers in different classes, illustrating that the USPTO considers coolers and pieces of baggage “as representing different fields of endeavor.” Reply Br. 8. In this attack on the definition of “baggage,” Appellants appear to be arguing that a cooler is not analogous art to baggage. Regarding analogous art, evidence of  classification in different categories by the PTO “is inherently weak ... because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.” In re Mlot-Fijalkowski, 676 F.2d 666, 670 n. 5 (CCPA 1982). Appellants’ argument fails to demonstrate that coolers are nonanalogous art to baggage.

The claims in Ex parte Nelson were directed to an electrically heated asphalt paving system having a bounding layer and an outer insulation layer. The Examiner combined an asphalt paving system reference without the claimed layers with a reference teaching a thin sheet electric heater having the claimed layers. The Applicant made a spirited non-analogous art based on classification:

The record in this application has finally been clarified by the Examiner conceding that Borrup (U.S. Patent 4,384,401) is not analogous art based upon the fact that Borrup is directed toward solving a problem that is different from the particular problem with which the Applicant was concerned. This should come as no surprise as Borrup is directed to a method of mass producing heater elements in class/subclass 29/611, whereas the parent patent to the present application is classified in class/subclass 404/118. But the Examiner now holds that Borrup is analogous art because "Borrup appears to be in the field of endeavor" of Applicant since "Borrup teaches the use of an electric heater, bonded to a metallic substrate to form a heated plate to warm various materials." The Examiner has misapplied the law in reaching the conclusion that Borrrup is analogous art based upon it being supposedly in the same field as Applicants' endeavor. Based upon the Examiner's flawed reasoning, a determination of whether a reference is in an Applicants' field of endeavor relates to what it discloses without any regard to where that disclosure is hidden away in the vast sea of information constituting the U.S. Patent database.
(Emphasis added.)

The Board dismissed the non-analogous art argument:

Evidence of classification of prior art in different categories by the PTO "is inherently weak . . . because considerations in forming a classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem." In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982). Thus, Appellant's argument directed to the USPTO's classification of Borrup is not persuasive. 

The claims in Ex parte Matus were directed to a plasma torch cutting system with a control system. The control system for the torch included a serialization circuit. The Examiner combined one reference teaching a plasma torch with another reference teaching a serialization circuit as used in a plasma coating system. The Applicant made a detailed non-analogous argument:

Second, despite the assertion that serialization merely comprises common experience in plasma cutting torch control, the Examiner has provided no examples of the commonality of or use of a serialization circuit with a plasma cutting system. Instead, the Examiner relies upon the disclosure of a serialization circuit in a coating system, which as stated above, is very different from cutting systems and has very little in common with a plasma cutting system. A review of the divergent classification of the two cited references is evidence of such. That is, Schneider et al. (similar to the present application) is classified under the broad class of "219 - Electric Heaters" whereas Schutz is classified under the broad class of "250 - Radiant Energy." Thus, the cited references are not merely different in respect to their subclasses, but in regard to their much broader class, and as such, the search of one class of for one patent would not be likely to uncover the other patent. Merely because the references have a common word (i.e., "plasma"), they are not necessarily in the same art ...

The Board summarily dismissed the argument, noting that "evidence of classification of prior art in different categories by the PTO 'is inherently weak . . . because considerations in forming a
classification system differ from those relating to a person of ordinary skill seeking solution for a particular problem.' In re Mlot-Fijalkowski, 676 F.2d 666, 670 n.5 (CCPA 1982)."

My two cents: Looking to classifications seems like a creative argument against obviousness, but it's simply not supported by case law. You're better off dealing with the two prong test for analogous art: 

Two criteria are relevant in determining whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the art is not within the same field of endeavor, whether it is still reasonably pertinent to the particular problem to be solved. In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed.Cir.1992) (citations omitted).
Wang Labs., Inc. v. Toshiba Corp., 993 F.2d 858, 864 (Fed.Cir.1993)

Arguments guaranteed to lose: "non-analogous art" in context of anticipation

If you're addressing an anticipation rejection, there is absolutely no point in arguing that the reference isn't analogous art. Case law clearly says that "non-analogous art" is a legally irrelevant doctrine for an anticipation rejection. (See In re Schreiber, 148 F.3d 1478, 1478 (Fed. Circ. 1997)).

I've seen a number of cases where the Applicant really did make a non-analogous argument for anticipation, and where the Board pointed out the error. Not much to say about those cases. Perhaps the Applicant just didn't understand the law.

But in other cases, it looks like the Applicant's real point is that the terms used in the reference just don't mean the same thing as in the claims. For example, in Ex parte Zilavy, the reference taught an interrupt controller and the claims referred to a controller for a particular type of interrupt, a "system control interrupt." The Applicant argued that a generic interrupt described in the reference was different from the claimed "system control interrupt." However, in making the argument, the Applicant said the reference was "non-analogous". The Board correctly pointed out that whether or not a reference is "non-analogous" is irrelevant to anticipation: the only question is whether the claimed structure/function is taught.

In still other cases, it looks like the Applicant's real point is that the Examiner has ignored some limitations as "intended use," and that the reference doesn't teach those limitations. For example, in Ex parte Schryver, the appealed claim contained a number of structural limitations and was "operable for mixing two or more fluids." The Applicant made an argument along the lines of "clearly, the reference doesn't have the limitations at issue, because it's for a completely different use." While this underlying argument may be appropriate, couching it in terms of "non-analogous art" isn't helpful.

It's hard to tell from the decisions whether this inappropriate line of argument damaged the Applicant in any way. Ideally, the Board would simply ignore the "non-analogous" sentence in the argument, while still paying attention to the underlying basis of the argument (e.g., Zilavy's argument that a generic interrupt is not the same as the claimed interrupt). But what if the Board didn't ... what if they got to "non-analogous art" and skipped to the next argument? Why take that chance?

I see no upside to using the phrase "non-analogous art" when arguing anticipation, and plenty of downside. You should delete "non-analogous art" from your anticipation toolbox.

By the way, "teaching away" is another argument guaranteed to lose in the context of anticipation. See my earlier post here on this topic.)