Appeal No. 95-3288
Application 08/148,020
Appellants argue that the Charles disclosure of
improved alumina is not analogous art. Appellants maintain that
Charles does not pertain to the same field endeavor as
Appellants' field of high pressure discharge lamps and that
Charles is not concerned with the problems faced by Appellants.
In determining whether a claim would have been obvious
at the time of the invention, the Examiner must first determine
the scope and content of the prior art. Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). "Although § 103
does not, by its terms, define the 'art to which [the] subject
matter [sought to be patented] pertains,' this determination is
frequently couched in terms of whether the art is analogous or
not, i.e., whether the art is 'too remote to be treated as prior
art.'" In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992) citing In re Sovish, 769 F.2d 738, 741, 226 USPQ 771,
773 (Fed. Cir. 1985).
In making this determination, we must consider two
criteria. First, it must be determined if the prior art is from
the same field of endeavor, regardless of the problem addressed.
Secondly, even if the prior art is not in the same field of
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