Obviousness Rejections Must Include References From Analogous Arts

Posted Friday, August 12, 2011.

In Bellevue and Seattle, patent clients are very savvy. When inventors contact me regarding their invention and an application for a patent, they are often already familiar with the basic requirements of utility and novelty. Nonobviousness, however, is a more difficult concept to grasp.

The United States Patent and Trademark Office (“USPTO”) doesn’t issue a patent for just any random idea. The concept sought to be patented has to be non-obvious. A previous legal standard for nonobviousness held that the idea had to demonstrate some inventive spark of genius. Another was that there was required to be synergy that made a combination of elements more than the sum of the parts. While these legal standards for nonobviousness are no longer used by courts, they help to get across the general idea.

Among my favorite examples is Post-it notes. (“Post-it Brand” is a registered trademark of 3M.) 3M had an adhesive that didn’t adhere permanently. Nobody saw the need for such a non-permanent glue, until it was combined with a scrap of paper, and voila! The Post-it was born. The combination of a glue that didn’t adhere with a piece of note paper was sufficiently nonobvious.

The USPTO may reject patent claims that present combinations of known elements for being obvious. If the USPTO were to reject the Post-it note on obviousness grounds, it would have found and cited a patent for a non-permanent glue and a patent for a quarter-sheet of note paper, and said it would have been obvious to combine the two to result in the invention for which the patent application was submitted. One way to overcome such a rejection is to point out that when making an obviousness-type rejection, the prior art (the prior patents or other documents the USPTO cites) must be from an “analogous art.” In other words, for it to be obvious, the problems being solved by the prior art must be in the same field or the same type of problem as the new invention sought to be patented. The theory is that an inventor trying to solve a problem would naturally be familiar with other developments in the same technology, but not necessarily know of innovations in other technologies. For purposes of obviousness, similar solutions in other technological arts can’t be used as prior art. (They can, however, be used for novelty-type rejections, but that’s for a different blog post.)

As an example (and credit goes to Ramsey al-Salam of the Seattle office of Perkins Coie for providing this example), if you come up with a chemical formula for new shoe polish, and it happens to have a similar structure to a formula for a hair dye, the hair dye can not be prior art against your shoe polish in an obviousness-type rejection. Why? Because the development of hair dye is not an analogous art to the development of an improved shoe polish.

There are two factual considerations in play when considering whether prior art is from an analogous art. The first is whether the art is from the same field of endeavor, regardless of the problem addressed. The second is that, even 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. These considerations were set out by the Court of Appeals for the Federal Circuit. *In re Clay,* 966 F.2d 656 (Fed. Cir. 1992). For our shoe polish example, it seems pretty clear that inventors of shoe polish and hair dye are not in the same field of endeavor. With respect to the second consideration, when attempting to create an improved formula for making shoes shiny, would an inventor naturally look at formulas that change the color of one’s hair? The particular problems being solved are different. Therefore, in the shoe polish example, the hair dye could not be cited by the USPTO as part of a combination in an obviousness-type rejection. (Again, it could possibly be cited in a novelty-type rejection, but at least one wouldn’t see it in an obviousness-type rejection.)

Other methods of overcoming obviousness-type rejections exist. There are “secondary considerations,” for example, which are submitted by the inventor with factual evidence that the combination is non-obvious. Secondary considerations merit a blog post of their own.

But the bottom line is that if you are considering patenting your invention and it is a combination of known elements, you may not have as big of a challenge with obviousness as you might think. After all, most inventions are combinations of known elements to some degree. Just remember, if the USPTO rejects the combination for being obvious, the existing elements they cite must be from analogous arts.

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