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Analagous Art

Posted Wednesday, March 28, 2012 by Mike Cicero

Among other requirements, for the claims of a patent to be allowed by the Patent Office and to survive post grant litigation, both of 35 U.S.C. §§ 102 and 103 must be satisfied. To meet the requirements of 35 U.S.C. §102 the invention must be novel which means it is different from the “prior art.” The invention is different from the prior art unless each element of the invention is present within a single prior art reference. For purposes of 35 U.S.C. § 102, prior art can be generally thought of as all information that has been made public in any form prior to a certain date (this definition is a generalization of prior art as defined by 35 U.S.C. § 102). It is immaterial to a 35 U.S.C. § 102 rejection whether or not the prior art is at all related to the claimed invention, if each element of the invention is present in the prior art reference the rejection is appropriate. In order to reject or invalidate patent claims under 35 U.S.C. § 103, elements from multiple references can be combined to recreate the claims at issue. However, for purposes of 35 U.S.C. § 103 the scope of the available prior art is more limited.

A reference can qualify as prior art for a determination of obviousness under 35 U.S.C. § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314 (2011). The reason for limiting the availability of prior art references to analogous art can be inferred from 35 U.S.C. § 103(a) which states that a “patent may not be obtained … if 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.” It can’t be assumed that a person of ordinary skill in one art would possess the knowledge of all prior art teachings from an entirely different art. Therefore, it would be inappropriate to combine elements from non-analogous arts to recreate an invention from that recreation deem it obvious. It is necessary then to determine which prior art references are analogous to the inventors field of endeavor and to limit the prior art available under 35 U.S.C. § 103 to these references.

Whether a prior art reference qualifies as analogous art hinges on two questions. First, is the art from the same field of endeavor as the claimed invention? If the answer to this question is yes then the reference is analogous and it can be used to support a finding that 35 U.S.C. § 103 is not satisfied. Second, even if the reference is not within the same field of endeavor is it reasonably pertinent to the particular problem the inventor is attempting to solve? If either of these two questions can be answered in the affirmative then the reference qualifies as analogous art for purposes of 35 U.S.C. § 103.

A recent example where prior art was found to be analogous is where Innovention Toys, LLC (Innovention) sued MGA Entertainment, Inc. (MGA) for infringing on a patent related to a strategic game. Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314 (2011). MGA counterclaimed by both denying infringement and claiming that Innovention’s patent was invalid under 35 U.S.C. § 103 as being obvious over the prior art. Innovention argued that the prior art references were non-analogous because the references were not from the same field of endeavor. Innovention’s patent related to a physical board game which included a tangible board and playing pieces whereas the prior art reference relied on by MGA was an electronic game. Both references related to a laser based strategy game. The court was not persuaded by Innovention’s arguments that the prior art references relied on by MGA were non-analogous because the references related to the same goal which was defined as “designing a winnable yet entertaining strategy game.” The court did not determine whether the references were from the same field of endeavor. Like many cases that discuss the issue of analogous art, this case exemplifies the importance of framing the problem favorably for your side.

A recent example where prior art was found to be non-analogous is where inventor Arnold G. Klein appealed a final decision of the Board of Patent Appeals and Interferences (BPAI) to the United States Court of Appeals which reversed that decision. In re Klein, 647 F.3d 1343 (2011). Mr. Klein had invented a mixing device for preparation of sugar-water nectar for birds and butterflies. The device was a container capable of receiving a divider at several different predetermined locations. When the divider was placed in one of these locations, two separate and water tight volumes were created the ratios of which corresponded to a predetermined ratio of sugar to water for producing nectar. After the user filled one volume with water and the other with sugar the divider is removed and the contents stirred to produce nectar. The BPAI had originally sited five references to support its finding of obviousness, three related to storage containers with movable dividers and two related to liquid containers with non-movable partitions. The Court of Appeals examined each reference in turn and held that each was non-analogous. The three related to storage containers with movable dividers were held to be non-analogous because each was designed to keep the contents separated rather than to facilitate mixing of the contents. The two references related to liquid containers were found to be non-analogous because neither addressed multiple ratios or had a movable divider and therefore an inventor considering the problem of “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for animals,” would have had no motivation to consult these references. In re Klein, 647 F.3d 1343 (2011).

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