Analogous use that is OK?

[oddtimeflux]

I'm currently reading an interesting article about analogous use ("patent claims for analogous use and the threshold requirements of inventiveness). Disclosure: have not yet reach the end of it as I was excited to post.

I would like your opinion on instances where analogous use IS valid. What needs be in an invention for such claims to be granted?

I have some claims relating to a somewhat known device (the device in not novel, but is not common also), its use in novel, but might be regarded as analogous (not by me, of course). Not to give too much away, the device has been used as an input device (meaning that it is known to be used in the field of my invention), yet never in collaboration with another known device. The use of such combination give rise to several benefits for the user. It is because of these clear benefits that, and the fact that such a collaboration was never thought of (meaning it hold innovation), that I find my invention to be invention. I'm just concerned that I'll face some arguments regarding analogous use.

[oddtimeflux]

Nobody?

[DogDayPM 9er9er9er]

analogous use ... ...Nobody?

Sorry, I've just a vague recollection of either maybe running into one office action objecting on the basis of analogous use, or maybe it was a side discussion one time with local patent counsel.  It may have been while prosecuting a case directly at the UK patent office, which is very rare for me as nearly all our cases go through the EPO. 

I'm sure I've never gotten such an objection at the EPO; I think they simply stick with the standard inventive step determination.  And I haven't gotten analogous use objections in any other patent offices, so my impression is no one's using it, at least not as some sort of threshold review prior to or independent of making novelty / inventive step / industrial applicability determinations.

Going to your situation, I'd ignore "analogous use" in terms of it's being a threshold requirement, but note that known uses in the prior art that are relevant (analogous) to your claimed use will certainly inform an Examiner's inventive step (ex-US) or obviousness (US) determination.

In the EP the dominant feature of inventive step is, would the skilled man faced with your problem be led by what's taught in the relevant prior art to make the same solution as you now claim?  And in the US obviousness is still firmly in the eye of the Examiner (he said sourly); no showing of being led by the art is required, although they are supposed to provide a rationale why the skilled man would make the combination.

[khazzah]

I've never heard of "analogous use".

Is it a US doctrine? If so, is it related to the "non-analogous art" argument which an Applicant can use to argue against combinability of two references?

[oddtimeflux]

I've never heard of "analogous use".

Is it a US doctrine? If so, is it related to the "non-analogous art" argument which an Applicant can use to argue against combinability of two references?

What's that argument again?

[DogDayPM 9er9er9er]

Analogous use as in the article you were reading is (or was?) a UK doctrine that was sometimes applied outside of or in addition to the "normal" questions of novelty and inventive step.

This is unrelated to the non-analogous use arguments Karen asked you about.  This is/was a way of arguing against the patent office's combination of art based on who is the person of ordinary skill in the art.  Remember that the person of skill in the art is held, legally, to essentially have knowledge of all publications within his/her field of art.

Let's say you're patenting a tomato planting system and one of the arguably patentable features is having a soil-covering material having given ranges of wettability, fiber sizes, and air, vapor, and liquid water permeabiilties. 

The examiner finds a published similar plant-growing system but it has a regular cloth soil cover.  The examiner also finds published a description of a material having all your required features that is used as an air intake filter on, I dunno, let's say an ICBM (not a great example but it'll do for discussion).

The examiner then makes an obviousness or inventive step rejection on the basis that the skilled person having both documents before him/her would naturally ("obviously") combine the ICBM intake material with the planting system, therefore you are obvious/not inventive.

You can argue that this use of the material in the ICBM is so non-analogous, so far from the art of concern to the skilled person in your field (tomato growing), that said skilled person can't be held to know what is in that non-analogous ICBM field.

In the US, such arguments were formerly often successful (if truly based on wildly different fields of art).  These arguments can still be applied, but are not as useful today because of case law that expanded "field" to also include people seeking similar solutions to similar problems, even if actually in widely separated fields of art. 

So if in both cases (tomato growing and ICBM's), what is important is to control passage of gas, vapor and liquid, then the examiner can argue back at you that the skilled man would seek (and find) that similar solution in the ICBM publication.

[Isaac]

I've never heard of "analogous use".

Is it a US doctrine? If so, is it related to the "non-analogous art" argument which an Applicant can use to argue against combinability of two references?

What's that argument again?

See this section of the MPEP for a discussion of the principle.

http://www.uspto.gov/web/offices/pac/mpep/documents/2100_2141_01_a.htm#sect2141.01a

[bartmans]

Although the term 'analogous use' is new to me, it has been discussed in the European case law of the Boards of Appeal of the EPO in regard to inventive step.
As you know, inventive step in Europe is normally assessed by choosing the nearest priro art, defining the problem that is solved by the invention and assessing if the skilled person would be able to find the same solution without inventive activity.
For the sake of argument I will use the same example as DogDayPM. There the similar plant-growing system will be considered the closest prior art and the problem from this was to find a soil cover with the desired ranges of wettability and/or other features. The question now is whether the skilled person would consider the publicly known ICBM filter as suitable for this purpose. Several considerations should be made here:
- would the cover function of the filter, and its desired features, be derivable from the ICBM application?
- would the skilled person consider the field in which the filter was published as a source to look for alternatives?
- is there a pointer from the closest prior art pointing in the direction of filters?

The answer to these and other questions will determine the result of the assessment. As you can imagine, the further away the second publication is from the first, the more likely that the invention will be found not to be obvious over the combination.
I suppose I can find some case law that will address these issues, but since most of the case law on this is very fact specific, I doubt whether that will be of any help