Appeal No. 2007-1530
Application 10/095,112
to identify a known need or problem as a motivation for modifying or combining
the prior art, it is nevertheless always necessary that the prior art relied on to prove
obviousness be analogous. See KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1395 (“The
Court [in United States v. Adams, 383 U.S. 39, 40 (1966)] recognized that when a
patent claims a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination must do
more than yield a predictable result.”) (emphasis added). See also Sakraida, 425
U.S. at 280, 189 USPQ at 452 (“Our independent examination of that evidence
persuades us of its sufficiency to support the District Court's finding ‘as a fact that
each and all of the component parts of this patent . . . were old and well-known
throughout the dairy industry long prior to the date of the filing of the application
for the Gribble patent.’”).
ANALYSIS OF ISSUE 1 (IS PYZIK ANALOGOUS ART?)
Claim 1 is directed to a “shield connector for connecting a braid of shielded
wire to a metal casing of an equipment.” We find that the relevant field of
endeavor is the design of shield (i.e., electrically conductive) connectors for
electrically connecting the shielding layers (e.g., braids) of shielded wires to the
metal casings (i.e., housings) of electrical equipment. Pyzik discloses no housing
at all and thus clearly fails to qualify as analogous art under the first, i.e., “field of
endeavor,” part of the analogous-art test.
Pyzik is nevertheless analogous art under the second part of the analogous-
art test if it reasonably would have been expected to address any known need or
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