Federal Circuit Applies Analogous Art Test to Exclude Prior Art References from Obviousness Analysis

Washington, DC – In a decision that may impact both patent prosecutors and litigators, the United States Court of Appeals for the Federal Circuit applied the analogous-art test to exclude certain prior art references from the consideration of whether a claimed invention was obvious in light of the prior art.In this case, patent applicant Arnold Klein appealed the rejection of certain claims in U.S. Patent Application No. 10/200,747 as obvious under 35 U.S.C. § 103. The relatively simple technology at issue is “a mixing device for use in preparation of sugar-water nectar for certain bird and butterfly feeders,” with sugar and water compartments separated by a removable divider. The placement of the divider can vary, depending on the species of bird to be fed. The device maintains a proper nectar ratio so long as water and sugar are at the same “line of sight” level.Citing prior art patents, the examiner at the USPTO made five rejections, each based on the notion that Mr. Klein’s invention would be obvious to one of ordinary skill in the art, and these rejections were each affirmed by the Board of Patent Appeals and Interferences (“the Board”).

Noting that a reference qualifies as prior art for an obviousness determination under § 103 only when it is “analogous” to the claimed invention, the Federal Circuit initially focused on the particular problem being solved by Mr. Klein and narrowly stated it as: “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.” The court found that the three cited prior art references (respectively disclosing a type of drawer, a particular tray, and an “apparatus for keeping accounts”) which feature solid item separators are not pertinent to this problem “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.”

As for the two remaining prior art references (disclosing a type of “blood plasma bottle” and a certain fluid container), they are directed at dividing liquids which are mixed later; the Federal Circuit concluded that neither of these references are pertinent to Mr. Klein’s invention “because they do not address multiple ratios or have a ‘movable divider’.” Because none of the cited references were completely analogous to the stated problem, no grounds remained to support the obviousness rejections, and the Board’s decision was reversed.

Practice Tip: Curiously, this opinion does not address the KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), decision by the United States Supreme Court, which allows for consideration of subjective “common sense” when determining whether a person of ordinary skill in the art would find motivation to combine elements known in the prior art. This failure to consider KSR may limit the impact of the Klein decision.