CAFC addresses "analogous art" in In re Klein

Of all the talk of TSM, one wonders if, in a multiple reference
prior art case, one might replace "motivation to combine" with
"motivation to consider." Contemplate In re Klein.

The claim at issue in In re Klein was to a nectar mixing
device for feeding hummingbirds, etc:

A convenience nectar mixing device for use
in preparation of sugar-water nectar for feeding
hummingbirds, orioles or butterflies, said device
comprising (...)

The BPAI had found the claim obvious, but the CAFC
found the cited art from nonanalogous fields.

The CAFC cited Kotzab:

We review the Board’s ultimate determination of ob-
viousness de novo and the Board’s factual findings under-
lying that determination for substantial evidence. In re
Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). The Board’s
determination that a prior art reference is analogous art
presents an issue of fact, reviewed for substantial evi-
dence. In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1378 (Fed. Cir. 2007).

The CAFC set out the requirements for analogous art:

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 refer-
ence 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. Here, the Board focused exclusively on the
“reasonably pertinent to the particular problem” test. “A
reference is reasonably pertinent if, even though it may be
in a different field from that of the inventor’s endeavor, it
is one which, because of the matter with which it deals,
logically would have commended itself to an inventor’s
attention in considering his problem.” Clay, 966 F.2d at
659. “If a reference disclosure has the same purpose as
the claimed invention, the reference relates to the same
problem, and that fact supports use of that reference in an
obviousness rejection.” Id.

The Appellant Klein argued the cited references are each directed
to a wholly different problem than the one he faced. Specifically, Klein argued
that, consistent with the Board’s
own express findings, Roberts, O’Connor, and Kirkman
are each directed to a container designed to separate its
contents, as opposed to one designed to facilitate the
mixing of those contents.

Klein won. The CAFC noted: We agree with Mr. Klein that the Board’s conclusory
finding that Roberts, O’Connor, and Kirkman are analo-
gous is not supported by substantial evidence.

Footnote 1 addresses an attempt by the government to re-define
the problem:

We agree with Mr. Klein that, to the extent the
government attempts to do so, it cannot redefine the
problem Mr. Klein was addressing as a “compartment
separation problem” on appeal. See Sec. & Exch. Comm’n
v. Chenery Corp., 318 U.S. 80, 94 (1943) (“[A]n adminis-
trative order cannot be upheld unless the grounds upon
which the agency acted in exercising its powers were those
upon which its action can be sustained.”).

Of the other two references:

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 facili-
tate 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 the
ability to prepare different ratios.2 Decision at 8 (empha-
sis added). In the Decision, the Board did not set forth
any reasoning in support of its finding that Greenspan
and De Santo are analogous, and thus, this finding is also
not supported by substantial evidence.

Conclusion: For the foregoing reasons, we reverse the decision of
the Board. The case is remanded to the Board for further
proceedings consistent with this opinion.