Appeal 2007-2027
Application 10/210,269
We do not find Appellant’s argument persuasive. As stated in In re
Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992), the
two criteria for evaluating whether a reference is sufficiently analogous to
the invention are “(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.”
Jacobs states that the disclosed mouth piece was designed “to provide
a resilient composition having gas pockets therein to increase attenuation
and dampening of shocks or blows applied thereto thus increasing
protection” (Jacobs, col. 3, ll. 32-36). Thus, Jacobs’ disclosure is directly
pertinent to the same problem addressed by athletic cups -- protecting areas
of the human body susceptible to damage from direct shocks or blows.
Therefore, Jacobs’ resilient material addresses the same problem
addressed by athletic cups. We therefore agree with the Examiner that
Jacobs is “reasonably pertinent to the particular problem with which the
inventor is involved.” In re Clay, 966 F.2d at 659, 23 USPQ2d at 1060.
Moreover, because Jacobs discloses that the gas pocket-containing resilient
material dampens shocks or blows applied to it, one of ordinary skill would
have considered Jacobs’ gas pocket-containing material to be desirable as
the resilient material in Lukens’ athletic cup.
We affirm the Examiner’s rejection of claim 1 as obvious over Lukens
and Jacobs. Because they were not argued separately, claims 3-6, 9-11, 13-
16, 19, and 20 fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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