Written by Mark Terry
Today’s Board of Patent Appeals and Interferences (BPAI) decision in Ex Parte Michelle illustrates just how useless the non-analogous art argument really is.
Not to beat a dead horse, since much has been written about the uselessness of this argument by my fellow patent prosecution bloggers , but seriously, don’t use this argument anymore. I have yet to see it succeed even once.
Parte Michelle case involved a telecommunications network
claim rejected under 35 U.S.C. 103(a) for being obvious. The Appellant tried
his hand at the “non-analogous art” defense. The Board summarily dismissed this
argument in one sentence:
“Further, we find that the references Xu,
Huitema and Sollee are in the same field of endeavor, involving middleboxes across
multiple address realms on a network. They are thus properly combinable.”
all the Board wrote. They didn’t even offer to explain.
law on non-analogous art is rather straightforward. References within the
statutory terms of 35 U.S.C. § 103 qualify as prior art for an obviousness
determination only when analogous to the claimed invention. 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. In re Deminski, 796 F.2d 436, 442 (Fed. Cir.
1986); see also In re Wood, 599 F.2d 1032, 1036 (CCPA
1979) and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir.
moral of the story here is that the non-analogous art argument is pretty much
dead and should be removed from every patent practitioner’s toolbox.