Saturday, December 01, 2012

Non-analogous art argument fails at Board

In an appeal on re-exam 95/000,495 [Biotage AB v. Scientific Plastic Products, Inc. ] in the technical area of low pressure liquid chromatography, the patentee lost on issues of analogous art.

As to the law of analogous art, the Board relied on Wyers:

Analogous Art

Two criteria are relevant in determining whether prior art is analogous: “(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.” Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is “analogous” is a fact question. In re Clay, 966 F.2d at 658.
Wyers v. Master Lock Co., 616 F.3d 1231, 1237 (Fed. Cir. 2010).

KSR also arose:

“The Supreme Court’s decision in KSR International Co. v. Teleflex, Inc.,
550 U.S. 398[] (2007), directs us to construe the scope of analogous art broadly, stating that ‘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.’ (emphasis added).” Id. at1238 (quoting KSR at 402) (emphasis added) (parallel citations omitted).

Section 103 “forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.’” KSR at 399. In KSR, the Supreme Court explained, “[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. If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” KSR at 417. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421.


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