Appeal 2007-1787
Application 10/742,187
teachings directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of ordinary skill
in the art would employ.” Id.
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. In re Deminski, 796 F.2d 436, 442, 230 USPQ
313, 315 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174
(CCPA 1979). Some question whether the analogous art test remains the same
following the Supreme Court’s ruling in KSR, in which the Court found that the
Court of Appeals had erred in assuming that a person of ordinary skill attempting
to solve a problem will be led only to those elements of prior art designed to solve
the same problem. KSR, 127 S.Ct. at 1742, 82 USPQ2d at 1397. We do not need
to decide this issue in the present appeal, because even under the strict analogous
arts test, as set forth in Deminski and Wood, the art relied on by the Examiner in
the present appeal constitutes analogous art for purposes of an obviousness
determination, as explained infra.
ANALYSIS
The rejection of claim 13 as unpatentable over Bounds and Anderson
Appellants contend that the systems of Bounds and Anderson are not
analogous because railroad ballast and aggregate “are far different things” (Reply
9
Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 Next
Last modified: September 9, 2013