Federal Circuit Overturns BPAI § 103 Decision, Provides Much-Needed Obviousness Guidance For Patent Applicants

In what will likely be a helpful decision for patent applicants, the United States Court of Appeals for the Federal Circuit has clarified the test for what references may be considered by the United States Patent & Trademark Office (USPTO) when rejecting a patent claim under 35 U.S.C.  § 103. The court’s ruling in In re Klein (Fed. Cir. 2011) is a significant development following the U.S. Supreme Court’s confusing KSR Int’l Co. v. Teleflex Inc. decision. The ruling should assist both patent applicants and examiners in determining what may be considered analogous and non-analogous prior art.

The patent applicant, Arnold Klein, filed a United States patent application titled “Convenience Nectar Mixing and Storage Devices” that concerns a mixing device for use in preparation of sugar-water nectar for bird feeders. The USPTO rejected the claims under § 103, citing five different patent references. Klein appealed to the Board of Patent Appeals and Interferences (BPAI), which affirmed the rejections. Klein appealed the BPAI decision to the Federal Circuit.

The court began its analysis by noting that a reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. There are two tests for determining what is and what is not analogous. A reference is analogous when the art is from the same field of endeavor, regardless of the problem addressed. If the reference is not from the same field, it may still be analogous if reasonably pertinent to the particular problem with which the inventor is involved. A reference may be reasonably pertinent if “it is one which logically would have commended itself to an inventor’s attention in considering his problem.”

Klein argued that none of the references cited by the USPTO were pertinent, because they sought to solve a different problem than the one his invention was intended to solve. Klein’s argument was that the invention was designed for mixing a container’s contents, and three of the five cited references related to separating contents.  Klein further argued that none of these references instead related to mixing contents that were liquid in form. The court concluded that someone else would not have been motivated to consider any of these references when making Klein’s invention, since they solved different problems than the one Klein intended to solve. Since the references were for a different purpose, someone else would “have had less motivation or occasion to consider” them. Regarding the other two references, Klein successfully argued that someone would not have been motivated to consider them since neither showed a movable divider or the ability to prepare different ratios, which were key elements of the claims.

The ruling helps patent applicants because it provides significant support for arguments that different problems to be solved result in a reference falling outside of what is reasonably pertinent to the claimed invention, and therefore, outside of analogous art. Patent examiners often cite references from a wide array of fields for different elements within the same claim to find a basis for a § 103 rejection. A non-analogous reference cannot be considered in the obviousness analysis, providing applicants more ammunition in overcoming such rejections.  Examiners may also be far less willing to make tenuous § 103 rejections going forward.

One potential limiting issue is the court’s language that “[i]f 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.” Both Klein and the USPTO argued for different purposes of the invention, but the court adopted Klein’s much narrower scope, because the USPTO attempted to assert its broader purpose for the first time on appeal.  Klein’s narrow scope of the purpose of the invention supported his arguments of non-obviousness, but it remains unclear whether the USPTO’s broader purpose would have mattered to the Court’s analysis.