Appeal No. 2001-0724
Application No. 09/251,602
Two criteria have evolved for determining whether prior art is analogous: (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 is involved. Id. at 658-59, 23 USPQ2d at 1060.
The examiner responds (Answer at 7) that Miller is within the same field of
endeavor as Shiraki, as both references are classified in class 251, entitled “Valves and
Valve Actuation.”1 Classification carries some weight in determining whether a
reference is analogous art; however, similarities and differences in structure and
function of the inventions carry far greater weight. See In re Deminski, 796 F.2d 436,
442 n.3, 230 USPQ 313, 315 n.3 (Fed. Cir. 1986); In re Ellis, 476 F.2d 1370, 1372, 177
USPQ 526, 527 (CCPA 1973).
Here, Shiraki and Miller are similar in structure and function because, as the title
of the classification indicates, both inventions are directed to valves for controlling the
flow of fluid in a system, and mechanisms for actuating the valves. We therefore agree
with the examiner that the references satisfy the first criterion for analogous art because
they are within the field of the inventor's endeavor. We also agree with the examiner
that, even with the assumption that Miller is not within the inventor’s field of endeavor,
1 Appellant recognizes Shiraki as being in appellant’s field of endeavor (Brief at 3). A showing that
Miller is within Shiraki’s field of endeavor would, by implication, serve as a showing that Miller is within
appellant’s field of endeavor.
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