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[BobRoberts]

Looked back at the In Re Klein post again. 

Essentially Analagous if:
1) if in the same field of endeavor; or
2) The reference is reasonably pertinent to the particular problem with which the inventor is involved.  (citing Bigio) and Problem is reasonably pertinent if, though in a different field than inventor's endeavor, it is one which because of the matter with which it deals, logically would have commended itself to an inventor's attention in consideration his problem.

   In In Re Klein, the blood plasma bottle was considered not to be analagous art, because an inventor wouldn't have been motivated to consider the reference because it didn't show a moveable divider or the ability to prepare different ratios.  I get it to an extent, that it deals with a different problem.  But I kept waiting to see the statement: "An inventor wouldn't have been motivated to consider the reference because WHY IN THE HELL would an inventor of a bird feeder nector making device even THINK of looking to the medical blood-plasma industry for the solution of their problem."  I suppose the argument used by the Fed Circuit was a much easier road to go down, but how far can the logically of "because of the matter with which it deals, logically would have commended itself " be stretched... 
  Here, One Silled in the Art is not a zoologist/biologist/etc that has studied the feeding habbits of Hummingbirds, Oriels, and Butterfly's their whole life to find out ideal ratios of sugar and water for their nectar, is it?!?  Rather, it seems that one skilled is more likely the 'backyard mechanic type' someone that perhaps saw the three nectars next to one another in the store, or read in a book that the different ratios of sugar/water would work to feed other of your backyard companions".  How is it logical to go from the step of "gee I need a container that lets me select one of 3 ratios to make animal nectar" to " Oh, I know, I'm sure I'll find something in the medical blood plasma field!"

Perhaps it's just me, but it doesn't seem 'logical' at all...  It seems that the Analagous art question for different fields should have a threshold of "is it even logical to look there" before even getting to the "problem solved issue."   In any event, I just don't see who OSITA (whomever that would be) of creating a mixing container for nectar would be motivated  to look to plasma bottles for a solution...

[JimIvey]

I don't have a legal answer, just a perspective of one who used to build things professionally (software).

I think that one of the most clever and non-obvious things one can do is step back from the particular technology in which you work and find solutions in other technologies that can be adopted to your particular problem.

The one thing I did many years ago that was probably the most "non-obvious" for me was adapt a computer graphics method for rasterizing a straight line to shear a graphical image using only integer arithmetic and shifting of columns of pixels.  Back in the day when processing resources were quite limited, the user was able to interactively control the shear with real-time feedback.

It was an adaptation of one computer graphics process to a different computer graphics purpose.  Still, I -- and my colleagues at the time -- thought it was very clever (i.e., non-obvious).  Even within computer graphics, rasterizing drawing primitives was not really analogous to processing of two-dimensional images at the time. 

That's how it was in the real world.  Try convincing the Office of that!  In the Office, all arts are analogous.

Regards.

[JustAnotherExaminer]

I'm a strong supporter behind the "analogous art case law is garbage" movement.  Why? Half the case law is looking at stuff that isn't even in the claim. 

Maybe if you took your inventor, his field of endeavor, and the problem he was addressing, and then stuck that in the claim.  Then you might have an argument that my art isn't analogous because it's in a different field or solving a different problem.

To me it makes more sense to compare the "analogous of art" between the prior art references in an obviousness rejection, than comparing them to some random fact about the inventor.

[patentatt]

I'm a strong supporter behind the "analogous art case law is garbage" movement.  Why? Half the case law is looking at stuff that isn't even in the claim. 

Maybe if you took your inventor, his field of endeavor, and the problem he was addressing, and then stuck that in the claim.  Then you might have an argument that my art isn't analogous because it's in a different field or solving a different problem.

To me it makes more sense to compare the "analogous of art" between the prior art references in an obviousness rejection, than comparing them to some random fact about the inventor.

These are two good points, although I don't agree quite as much as you do.  For example, even if a claim doesn't recite every aspect and advantage of an invention (independent claims are intentionally worded broadly), it can still be very clear that a reference has nothing to do with the problem that the inventor is addressing.

The analogous art doctrine is absolutely fascinating for a variety of reasons:

1. it is extremely potent - when it succeeds (which is rare) it doesn't just render the particular kind of combination invalid - it renders the entire reference inapplicable to the application.  It is like flipping the clock on the reference's publication/filing date to remove it from prior art.
2. it is in great tension with KSR.  KSR did not explicitly abolish the analogous art doctrine (and it explicitly approved the teaching away doctrine).  But it did state:

"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."

And this is the quote that APJs cite when they reject analogous art arguments - which they do about 95% of the time it is attempted (according to my last measurement).

And yet:

A. the Federal Circuit continues to apply the doctrine - see In re Klein
B. the statement here, in KSR, appears to be limited to the "design incentives and other market forces" rationale in KSR - See MPEP 2143 (F)
C. the non-analogous art focuses on the inventor's problem that the invention addresses - yet KSR says "The first error of the Court of Appeals in this case was to foreclose this reasoning by holding that courts and patent examiners should look only to the problem the patentee was trying to solve."  It is not clear how much the non-analogous art argument survives that statement.
D. the statement here, in KSR, assumes that the person of ordinary skill in the art actually knows that the reference exists - which begs the entire question against the proponent of the non-analogous art argument.  I would argue that, accordingly, KSR says virtually nothing about the non-analogous art doctrine.

3. Which brings me to the third point: the PHOSITA cannot be omniscient.  KSR itself tried to use a more realistic approach to obviousness, not a less realistic.  The non-analogous art argument itself is attempting to make the PHOSITA less than omniscient of all 102 prior art.  It does a very, very poor job - even after we remove all non-analogous art, the PHOSITA, under U.S. law, is still semi-omniscient, and has instant recall of a zillion-times more prior art than a flesh-and-blood human being.  But it is better than nothing.

The problem is drawing the line: where do we draw the line between the omniscient PHOSITA and the semi-omniscient PHOSTITA?  The doctrine is so potent that courts and the PTO are reluctant to use it.  But clearly there should be some limit on the scope of 102 art that the PHOSITA would realistically, or reasonably, know at the time of invention (or the time of filing - after patent reform kicks in).

[patentatt]

BTW does anyone know where the CAFC opinion in KSR can be found online?

It doesn't seem to be on Google Scholar (presumably because it is non-precedential)?

[Isaac]

Did you try the court web page?

[patentatt]

Did you try the court web page?

I found it:

http://scholar.google.com/scholar_case?case=16466951411498348362

[JimIvey]

To me it makes more sense to compare the "analogous of art" between the prior art references in an obviousness rejection, than comparing them to some random fact about the inventor.

Isn't that how the law of (non) analogous art is applied? 

If you're suggesting that some argue that the prior art is not analogous to the technology described in the detailed description, I'd agree that such is a very weak argument at best.  The way I'd probably address a situation like that would be to include the field of use or something about it in the claim.  However, I'd expect the examiner to ignore that as a "mere field of use limitation".  The fact that you suggested putting the specific field of technology in the claim(s) implies that you'd accept such an amendment.  Good to know.

Regards.

[patentatt]

To me it makes more sense to compare the "analogous of art" between the prior art references in an obviousness rejection, than comparing them to some random fact about the inventor.

Isn't that how the law of (non) analogous art is applied? 

Nope.  The test for analogous art:

“Two separate tests define the scope of analogous prior art: (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 was involved.”
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)

Where:

“A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.”
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

[NJ Patent1]

IMO, as often in law, it depends on how one “frames the issue” or, here, how one defines the field of endeavor or problem being addressed.  See patentatts post.  In Klein, was the “issue” birdfeeders, or containers / dispensers with adjustable partitions to adjust ratios of ingredients?  I might use such a device in the kitchen depending on the needed ratio of flour-to-water, oil-to-water, etc., depending on what I wanted (whitewash or buerre blanc, vinaigrette or mayonnaise?)  As others have noted, “field of use” or nonanalogous art is rarely (but not never) successful.  I recall a case from 1997 in which a popcorn dispenser was held anticipated by a disclosure of a dispenser for motor oil.  Perhaps if it were a 103 rather than 102 one might have successfully argued “non-analogous art”.  But if the field of endeavor were characterized “dispensers” not “food dispensers” the argument might not fly. 

[JimIvey]

To me it makes more sense to compare the "analogous of art" between the prior art references in an obviousness rejection, than comparing them to some random fact about the inventor.

Isn't that how the law of (non) analogous art is applied? 

Nope.  The test for analogous art:

“Two separate tests define the scope of analogous prior art: (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 was involved.”
In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)

Where:

“A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem.”
In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

If I'm not mistaken, In re Klein involved claims which explicitly recited feeders.  Don't have quick access to the case.  Am I wrong?

In the cited cases, were the field(s) of endeavor also explicitly recited in the claims?

See, JAE said:

I'm a strong supporter behind the "analogous art case law is garbage" movement.  Why? Half the case law is looking at stuff that isn't even in the claim. 

Maybe if you took your inventor, his field of endeavor, and the problem he was addressing, and then stuck that in the claim.  Then you might have an argument that my art isn't analogous because it's in a different field or solving a different problem.

To me, that suggests 102 analysis, not 103, since the field of endeavor is not already in the claim(s). 

If the law of analogous art hangs on 103 and the gap between the prior art and the recited invention is the difference in technical endeavor of the prior art and that explicitly recited in the claims, then JAE appears to be clearly wrong.  On the other hand, if the technical endeavor of the claim can be implicit from the detailed description, then JAE may have a point though not consistent with the prevailing law.

Regards.

[patentatt]

If I'm not mistaken, In re Klein involved claims which explicitly recited feeders.  Don't have quick access to the case.  Am I wrong?

Yes, the field of endeavor in Klein was pretty clearly stated in the claims.  Even better, the BPAI made a finding of fact, in its written decision, that defined the applicant's field of endeavor narrowly.

In the cited cases, were the field(s) of endeavor also explicitly recited in the claims?

I don't know.  The test is the same regardless.

If the law of analogous art hangs on 103 and the gap between the prior art and the recited invention is the difference in technical endeavor of the prior art and that explicitly recited in the claims, then JAE appears to be clearly wrong.  On the other hand, if the technical endeavor of the claim can be implicit from the detailed description, then JAE may have a point though not consistent with the prevailing law.

JAE was simply making a reasonable argument that the test for NAA, as currently stated, may not represent the best policy.  Rather, perhaps a better policy would be for the test to compare the fields of endeavor for the references (instead of comparing a reference with the applicant's field of endeavor).  Although that might be a better policy, it is not the law as it stands.

To my knowledge, the law on NAA does not clearly address how explicit the field/problem must be recited in the claims.  There is earlier case law stating that claims generally should not state either the problem or the solution, because that is a job better served by the specification.  On the other hand, KSR - which did not really discuss the issue of NAA at all - states very clearly:

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.

[JimIvey]

To my knowledge, the law on NAA does not clearly address how explicit the field/problem must be recited in the claims. 

FWIW, I think NAA only applies under 103, not 102.  So, for the different technical arts to even be relevant, it seems that the technical art must be recited in the claim for NAA to come up -- unless it comes up in the reverse doctrine of equivalents (haven't seen a case on that in a very long time).

On the other hand, KSR - which did not really discuss the issue of NAA at all - states very clearly:

In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.

I don't think that's very clear.  In essence, it says that the test for obviousness is what's obvious.  However, if I recite "a bird feeder nectar mixer comprising: ...", that's not an avowed purpose; that's a claim limitation -- especially if I've used that language to distinguish an IV bag during prosecution.

If I were prosecuting the In re Klein and it only recited "a vessel for mixing a solution, the vessel comprising:" (i.e., not that it's mixing bird feeder nectar) and the examiner cited an IV bag that wasn't easily circumvented (as suggested by JAE), I wouldn't argue NAA; I'd amend the claim to limit coverage to bird feeder nectar mixing.  If the claim already included such language, I'd traverse JAE and appeal if necessary, relying on NAA case law.

Regards.

[patentatt]

FWIW, I think NAA only applies under 103, not 102.

Of course.  By definition, all 102 art anticipates.

So, for the different technical arts to even be relevant, it seems that the technical art must be recited in the claim for NAA to come up -- unless it comes up in the reverse doctrine of equivalents (haven't seen a case on that in a very long time).

You've completely lost me.  I understand your argument that the field of invention must be recited in the claims.  What does have to do with the distinction between 102 and 103?

It seems to me that you're taking a relatively simple issue (the test for NAA) and needlessly complicating it.

I don't think that's very clear.  In essence, it says that the test for obviousness is what's obvious.  However, if I recite "a bird feeder nectar mixer comprising: ...", that's not an avowed purpose; that's a claim limitation -- especially if I've used that language to distinguish an IV bag during prosecution.

Again, you've lost me.

The statement in KSR is chastising the CAFC for focusing too narrowly on the motivation/purpose of the patentee.  In other words, the Supreme Court was reminding KSR that inventions can be obvious based on motivations/purposes that are different than that of the patentee.

If I were prosecuting the In re Klein and it only recited "a vessel for mixing a solution, the vessel comprising:" (i.e., not that it's mixing bird feeder nectar) and the examiner cited an IV bag that wasn't easily circumvented (as suggested by JAE), I wouldn't argue NAA; I'd amend the claim to limit coverage to bird feeder nectar mixing.  If the claim already included such language, I'd traverse JAE and appeal if necessary, relying on NAA case law.

1. You're focusing on the field of endeavor as recited in the claims, but the CAFC in Klein focused on the field of endeavor as stated by the Board.
2. JAE didn't have anything to do with Klein (to my knowledge)!

Everything you've written above - to the extent that I understand it - suggests that you are criticizing the test for NAA, which I quoted at the beginning of this thread.  Is that right?  If not, then what point are you trying to prove?  If you're criticizing the test, that's fine, but the test is the same regardless of whether you like it.  It's important to remember exactly what the test is.

[khazzah]

I recite "a bird feeder nectar mixer comprising: ...", that's not an avowed purpose; that's a claim limitation

But it's in the preamble, and therefore may not be given patentable weight unless you can successfully argue that it should be given patentable weight. 

And language is that's not given patentable weight is ignored when determining whether the reference/combination teaches all elements.  Are you saying that the language-not-given-patentable-weight is nonetheless considered when determining [non]-analogous art ?