Wednesday, June 19, 2013

In re Nuijten cited in Ex parte ZONDERVAN

from within Ex parte ZONDERVAN

Two separate tests developed by our reviewing court for determining
whether a prior art reference is analogous are: (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 Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)
(analogous art based on same field of endeavor test); In re ICON Health and
Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (analogous art based
on similarities in problems addressed test).
Discussing the question of obviousness of claimed subject matter
involving a combination of known elements, KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398 (2007), explains:

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 a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. Sakraida [v. Ag
Pro, Inc., 425 U.S. 273 (1976)] and Anderson’s-Black Rock[,
Inc. v. Pavement Salvage Co., 396 U.S. 57 (1969)] are
illustrative—a court must ask whether the improvement is more
than the predictable use of prior art elements according to their
established functions.
KSR, 550 U.S. at 417.

If the claimed subject matter cannot be fairly characterized as
involving the simple substitution of one known element for another or the
mere application of a known technique to a piece of prior art ready for the
improvement, a holding of obviousness can be based on a showing that

“there was an apparent reason to combine the known elements in the fashion
claimed.” Id. at 418. Such a showing requires
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . [H]owever,
the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can
take account of the inferences and creative steps that a person
of ordinary skill in the art would employ.
Id. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).


Where, as here, the broadest reasonable interpretation of the
claims in light of the disclosure covers a signal per se, the claims must be
under 35 U.S.C. § 101 as covering non-statutory subject matter. See
In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory
embodiments are not directed to statutory subject matter).


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