Reviving the Non-Analogous Art Argument

In their first case since the Supreme Court’s KSR v. Teleflex (2007) decision, the Federal Circuit strongly re-affirmed the rule that obviousness cannot be based on references from non-analogous art in the precedential opinion of In re Arnold G. Klein.  Surprisingly, the opinion did not even mention KSR.

Klein’s invention was a nectar mixing device, which used two compartments, to make appropriately mixed sugar water for hummingbirds, orioles, or butterflies. The idea was that the feeder provided rails so that the appropriate ratio did not require measuring, but rather just purring the sugar syrup and the water into its own compartment. The ratios were acknowledged by the patent application as not new.

It was rejected over five different references. The Board upheld the rejections relying on the fact that the references disclosed a “container having a movable divider” which “could be used to divide ingredients in specific ratios.”

In his appeal, Klein relied on the argument that the Board failed to make any finding that any of the cited references are “reasonably pertinent” to that problem. Further, Mr. Klein argues, the Board identified no evidence that suggests that an inventor seeking to solve the problem Mr. Klein was addressing, which Mr. Klein characterizes as a “multiple ratio mixing problem,” would look to any of the references to address the problem of preparing different ratios. See Reply Br. 10-15.

You may recall the Supreme Court’s comment in KSR, “When a work is available in one field of endeavor, “design incentives and other market forces can prompt variations of it, either in the same field or in a different one.”  This has been cited by the BPAI, as well as other CAFC opinions, in response to non-analogous art arguments, although the term non-analogous art does not appear in the opinion.

In this opinion, the Federal Circuit expressly reaffirmed that analogous art is required for an obviousness determination, without ever addressing the suggestion in KSR that design incentives cross analogous art lines.  The CAFC opinion says:

A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. Mar. 21, 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “Two separate tests define the scope of analogous prior art: (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.” Bigio, at 1325.

The references were all drawn to separating various solid items: statement cards, drills or bits or the like, small articles in a cabinet. The Federal Circuit noted that “The purpose of each of Roberts, O’Connor, or Kirkman is to separate solid objects.” The Federal Circuit noted that this implies that an inventor solving the issue Klein was solving “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.”

The additional two references had non-movable dividers for liquids, one for plasma and the other for hair rinses. While each included two compartments, and the ability to mix liquids from the two compartments, the Federal Circuit states that “Greenspan and De Santo are not analogous, Mr. Klein argues, because they do not address multiple ratios or have a “movable divider.” We agree. While Greenspan and De Santo are each directed to containers that facilitate the mixing of two separated substances together, 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 either of these references since neither of the references shows a movable divider or ability to prepare different ratios.”

The CAFC relied in part on the definition of the problem, provided by the Examiner and relied upon by the Board’s definition of “the problem Mr. Klein addresses, which the Board found to be “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.”

For the patent attorney or inventor addressing a rejection at the Patent Office, this opinion strongly supports the non-analogous art arguments. In particular, the second set of references, which store separated liquids, were considered to be non-analogous because they were missing the feature of having a movable separator, to enable the mixing in different ratios. This very broad opinion will certainly be cited by many an inventor’s response.   I’m curious whether this opinion would have come out differently had the Board defined the problem as a compartment separation problem.