Analogous and Nonanalogous Art

[Editor Note: This MPEP section is applicable regardless of whether an

application is examined under the AIA or under pre-AIA law. For applications

subject to the first inventor to file (FITF) provisions of the AIA, the relevant

time is "before the effective filing date of the claimed invention". For

applications subject to

pre-AIA 35 U.S.C. 102

, the

relevant time is "at the time of the invention". See

MPEP §

2150

et seq. Many of the court decisions discussed in

this section involved applications or patents subject to

pre-AIA 35 U.S.C.

102

. These court decisions may be applicable to applications

and patents subject to

AIA 35 U.S.C. 102

but the

relevant time is before the effective filing date of the claimed invention and not

at the time of the invention.]

I.

TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS ART TO THE

CLAIMED INVENTION

In order for a reference to be proper for use in an obviousness

rejection under

35 U.S.C. 103

, the reference must be analogous art to the

claimed invention.

In re Bigio,

381 F.3d 1320, 1325, 72 USPQ2d

1209, 1212 (Fed. Cir. 2004). A reference is analogous art to the claimed invention

if: (1) the reference is from the same field of endeavor as the claimed invention

(even if it addresses a different problem); or (2) the reference is reasonably

pertinent to the problem faced by the inventor (even if it is not in the same

field of endeavor as the claimed invention). Note that “same field of endeavor”

and “reasonably pertinent” are two separate tests for establishing analogous art;

it is not necessary for a reference to fulfill both tests in order to qualify as

analogous art. See

Bigio,

381 F.3d at 1325, 72 USPQ2d at 1212.

The examiner must determine whether a reference is analogous art to the claimed

invention when analyzing the obviousness of the subject matter under examination.

When more than one prior art reference is used as the basis of an obviousness

rejection, it is not required that the references be analogous art to each other

er to qualify as

analogous art. See

Bigio,

381 F.3d at 1325, 72 USPQ2d at 1212.

The examiner must determine whether a reference is analogous art to the claimed

invention when analyzing the obviousness of the subject matter under examination.

When more than one prior art reference is used as the basis of an obviousness

rejection, it is not required that the references be analogous art to each other.

See

Sanofi-Aventis Deutschland GMbH v. Mylan Pharms. Inc.,

66

F.4th 1373, 1380, 2023 USPQ2d 552 (Fed. Cir. 2023) and

Corephotonics,

Ltd. v. Apple Inc.,

84 F.4th 990, 1007, 2023 USPQ2d 1202 (Fed. Cir.

2023). If a reference is not analogous art to the claimed invention, it may not be

used in an obviousness rejection under

35 U.S.C. 103

. However, there

is no analogous art requirement for a reference being applied in an anticipation

rejection under

35 U.S.C. 102

.

In re

Schreiber,

128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir.

1997).

When determining whether the “relevant field of

endeavor” test is met, the examiner should consider “explanations of the

invention’s subject matter in the patent application, including the embodiments,

function, and structure of the claimed invention.”

Airbus S.A.S. v.

Firepass Corp.,

941 F.3d 1374, 1380, 2019 USPQ2d 430083 (Fed. Cir.

2019) (quoting

Bigio,

381 F.3d at 1325, 72 USPQ2d at 1212).

When determining whether a prior art reference meets the “same field of endeavor”

test for the analogous art, the primary focus is on what the reference discloses.

Airbus,

41 F.3d at 1380. The examiner must consider the

disclosure of each reference “in view of the ‘the reality of the circumstances.’”

Airbus,

41 F.3d at 1380 (quoting

Bigio,

381 F.3d at 1326, 72 USPQ2d at 1212). These circumstances are to be weighed “from

the vantage point of the common sense likely to be exerted by one of ordinary

skill in the art in assessing the scope of the endeavor.”

Airbus,

41 F.3d at 1380. See also

Donner

Technology, LLC v. Pro Stage Gear, LLC,

979 F.3d 1353, 2020 USPQ2d

11335 (Fed. Cir

e circumstances.’”

Airbus,

41 F.3d at 1380 (quoting

Bigio,

381 F.3d at 1326, 72 USPQ2d at 1212). These circumstances are to be weighed “from

the vantage point of the common sense likely to be exerted by one of ordinary

skill in the art in assessing the scope of the endeavor.”

Airbus,

41 F.3d at 1380. See also

Donner

Technology, LLC v. Pro Stage Gear, LLC,

979 F.3d 1353, 2020 USPQ2d

11335 (Fed. Cir. 2020);

Sanofi-Aventis,

66 F.4th at 1378; and

Netflix, Inc. v. DivX, LLC,

80 F.4th 1352, 1358-59, 2023

USPQ2d 1057 (Fed. Cir. 2023) (“The field of endeavor is ‘not limited to the

specific point of novelty, the narrowest possible conception of the field, or the

particular focus within a given field.’”) (quoting

Unwired Planet, LLC v.

Google Inc.,

841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir.

2016)).

As for the “reasonably pertinent” test, the examiner

should consider the problem faced by the inventor, as reflected - either

explicitly or implicitly - in the specification. In order for a reference to be

"reasonably pertinent" to the problem, it must "logically [] have commended itself

to an inventor's attention in considering his problem."

In re ICON Health

and Fitness, Inc.,

496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting

In re Clay,

966 F.2d 656,658, 23 USPQ2d 1058, 1061 (Fed.

Cir. 1992)). See also

In re Klein,

647 F.3d 1343, 1348, 98

USPQ2d 1991, 1993 (Fed. Cir. 2011) An inventor is not expected to have been aware

of all prior art outside of the field of endeavor.

Airbus,

41

F.3d at 1380-82. A reference outside of the field of endeavor is reasonably

pertinent if a person of ordinary skill would have consulted it and applied its

teachings when faced with the problem that the inventor was trying to solve.

Airbus,

41 F.3d at 1380-82. In order to support a

determination that a reference is reasonably pertinent, it may be appropriate to

include a statement of the examiner's understanding of the problem

utside of the field of endeavor is reasonably

pertinent if a person of ordinary skill would have consulted it and applied its

teachings when faced with the problem that the inventor was trying to solve.

Airbus,

41 F.3d at 1380-82. In order to support a

determination that a reference is reasonably pertinent, it may be appropriate to

include a statement of the examiner's understanding of the problem. The question

of whether a reference is reasonably pertinent often turns on how the problem to

be solved is perceived. If the problem to be solved is viewed in a narrow or

constrained way, and such a view is not consistent with the specification, the

scope of available prior art may be inappropriately limited. It may be necessary

for the examiner to explain why an inventor seeking to solve the identified

problem would have looked to the reference in an attempt to find a solution to the

problem, i.e., factual reasons why the prior art is pertinent to the identified

problem. See

Donner Tech., LLC v. Pro Stage Gear, LLC,

979 F.3d

1353, 1359, 2020 USPQ2d 11335 (Fed. Cir. 2020) (“Thus, when addressing whether a

reference is analogous art with respect to the claimed invention under a

reasonable-pertinence theory, the problems to which both relate must be identified

and compared.”).

The Supreme Court’s decision in

KSR Int'l

Co. v. Teleflex Inc.,

550 U.S. 398, 82 USPQ2d 1385 (2007), did not

change the test for analogous art as stated in

Bigio.

Under

Bigio,

a reference need not be from the same field of

endeavor as the claimed invention in order to be analogous art.

Bigio,

381 F.3d at 1325, 72 USPQ2d at 1212. This is

consistent with the Supreme Court's instruction in

KSR

that

"[w]hen 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 a different

one."

KSR,

550 U.S. at 417, 82 USPQ2d at 1396

same field of

endeavor as the claimed invention in order to be analogous art.

Bigio,

381 F.3d at 1325, 72 USPQ2d at 1212. This is

consistent with the Supreme Court's instruction in

KSR

that

"[w]hen 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 a different

one."

KSR,

550 U.S. at 417, 82 USPQ2d at 1396. The Federal

Circuit reads

KSR

as “direct[ing] us to construe the scope of

analogous art broadly” because “

familiar items may have obvious uses

beyond their primary purposes,

and a person of ordinary skill often

will be able to fit the teachings of multiple patents together like pieces of a

puzzle.”

Wyers v. Master Lock Co.,

616 F.3d 1231, 1238, 95

USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting

KSR,

550 U.S. at

402, 127 S. Ct. at 1727).

Any argument by the applicant that the examiner has

misconstrued the problem to be solved, and as a result has improperly relied on

nonanalogous art, should be fully considered in light of the specification. In

evaluating the applicant's argument, the examiner should look to the teachings of

the specification and the inferences that would reasonably have been drawn from

the specification by a person of ordinary skill in the art as a guide to

understanding the problem to be solved. A prior art reference not in the same

field of endeavor as the claimed invention must be reasonably pertinent to the

problem to be solved in order to qualify as analogous art and be applied in an

obviousness rejection.

II

ion and the inferences that would reasonably have been drawn from

the specification by a person of ordinary skill in the art as a guide to

understanding the problem to be solved. A prior art reference not in the same

field of endeavor as the claimed invention must be reasonably pertinent to the

problem to be solved in order to qualify as analogous art and be applied in an

obviousness rejection.

II.

CONSIDER SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION

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 court has found “the

similarities and differences in structure and function of the inventions disclosed

in the references to carry far greater weight.”

In re Ellis,

476 F.2d 1370, 1372, 177 USPQ 526, 527 (CCPA 1973) (The structural similarities

and functional overlap between the structural gratings shown by one reference and

the shoe scrapers of the type shown by another reference were readily apparent,

and therefore the arts to which the reference patents belonged were reasonably

pertinent to the art with which appellant’s invention dealt (pedestrian floor

gratings).).

III.

ANALOGY IN THE CHEMICAL ARTS

Examples of analogous art in the chemical arts include:

Ex parte Bland,

3 USPQ2d 1103 (Bd. Pat App. & Inter.

1986) (Claims were drawn to a particulate composition useful as a preservative for

an animal foodstuff (or a method of inhibiting fungus growth in an animal

foodstuff therewith) comprising verxite having absorbed thereon propionic acid.

All references were concerned with absorbing biologically active materials on

carriers, and therefore the teachings in each of the various references would have

been pertinent to the problems in the other references and the invention at

hand.);

Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530, 218

USPQ 871 (Fed. Cir

l

foodstuff therewith) comprising verxite having absorbed thereon propionic acid.

All references were concerned with absorbing biologically active materials on

carriers, and therefore the teachings in each of the various references would have

been pertinent to the problems in the other references and the invention at

hand.);

Stratoflex, Inc. v. Aeroquip Corp.,

713 F.2d 1530, 218

USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing

electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow while

precluding leakage of fuel. Two prior art references relied upon were in the

rubber hose art, both referencing the problem of electrostatic buildup caused by

fuel flow. The court found that because PTFE and rubber are used by the same hose

manufacturers and experience the same and similar problems, a solution found for a

problem experienced with either PTFE or rubber hosing would be looked to when

facing a problem with the other.);

In re Mlot-Fijalkowski,

676

F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by inventor was enhancement and

immobilization of dye penetrant indications. References which taught the use of

dyes and finely divided developer materials to produce colored images preferably

in, but not limited to, the duplicating paper art were properly relied upon

because the court found that inventor's problem was one of dye chemistry, and a

search for its solution would include the dye arts in general.).

IV.

ANALOGY IN THE MECHANICAL ARTS

Examples of analogous art in the mechanical arts include:

Stevenson v. Int'l Trade Comm.,

612 F.2d 546, 550, 204 USPQ

276, 280 (CCPA 1979) (“In a simple mechanical invention a broad spectrum of prior

art must be explored and it is reasonable to permit inquiry into other areas where

one of ordinary skill in the art would be aware that similar problems exist.”).

See also

In re Bigio,

381 F.3d 1320, 1325-26, 72 USPQ2d 1209,

1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a

specific bristle configuration

9) (“In a simple mechanical invention a broad spectrum of prior

art must be explored and it is reasonable to permit inquiry into other areas where

one of ordinary skill in the art would be aware that similar problems exist.”).

See also

In re Bigio,

381 F.3d 1320, 1325-26, 72 USPQ2d 1209,

1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a

specific bristle configuration. The Board affirmed the examiner’s rejection of the

claims as being obvious in view of prior art patents disclosing toothbrushes.

Id.

at 1323, 72 USPQ2d at 1210. The appellant disputed that

the patent references constituted analogous art. On appeal, the court upheld the

Board’s interpretation of the claim term “hair brush” to encompass any brush that

may be used for any bodily hair, including facial hair.

Id.

at

1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the

“field of endeavor test” for analogous art and determined that the references were

within the field of the inventor’s endeavor and hence were analogous art because

toothbrushes are structurally similar to small brushes for hair, and a toothbrush

could be used to brush facial hair.

Id.

at 1326, 72 USPQ2d at

1212.

Also see

In re Deminski,

796 F.2d 436, 230

USPQ 313 (Fed. Cir. 1986) (Appellent's claims related to double-acting high

pressure gas transmission line compressors in which the valves could be removed

easily for replacement. The Board relied upon references which taught either a

double-acting piston pump or a double-acting piston compressor. The court agreed

that since the cited pumps and compressors have essentially the same function and

structure, the field of endeavor includes both types of double-action piston

devices for moving fluids.);

Pentec, Inc. v. Graphic Controls

Corp.,

776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue

were directed to an instrument marker pen body, the improvement comprising a pen

arm holding means having an integrally molded hinged member for folding over

against the pen body

e function and

structure, the field of endeavor includes both types of double-action piston

devices for moving fluids.);

Pentec, Inc. v. Graphic Controls

Corp.,

776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue

were directed to an instrument marker pen body, the improvement comprising a pen

arm holding means having an integrally molded hinged member for folding over

against the pen body. Although the patent owners argued the hinge and fastener art

was nonanalogous, the court held that the problem confronting the inventor was the

need for a simple holding means to enable frequent, secure attachment and easy

removal of a marker pen to and from a pen arm, and one skilled in the pen art

trying to solve that problem would have looked to the fastener and hinge art.);

and

Ex parte Goodyear Tire & Rubber Co.,

230 USPQ 357 (Bd.

Pat. App. & Inter. 1985) (A reference in the clutch art was held reasonably

pertinent to the friction problem faced by the inventor, whose claims were

directed to a braking material, because brakes and clutches utilize interfacing

materials to accomplish their respective purposes.).

V.

ANALOGY IN THE ELECTRICAL ARTS

See, for example,

Medtronic, Inc. v. Cardiac

Pacemakers,

721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) (Patent

claims were drawn to a cardiac pacemaker which comprised, among other components,

a runaway inhibitor means for preventing a pacemaker malfunction from causing

pulses to be applied at too high a frequency. Two references disclosed circuits

used in high power, high frequency devices which inhibited the runaway of pulses

from a pulse source. The court held that one of ordinary skill in the pacemaker

designer art faced with a rate-limiting problem would look to the solutions of

others faced with rate limiting problems, and therefore the references were in an

analogous art.).

VI.

EXAMPLES OF ANALOGY IN THE DESIGN ARTS

See

MPEP § 1504.03

for a discussion

of the relevant case law setting forth the general requirements for analogous art

in design applications.