Appeal No. 1998-0724
Application No. 08/231,287
§ 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 whether the prior art is from the same field of endeavor, regardless of the
problem addressed. Second, even if the prior art is not in the same field of endeavor, it
must be determined whether the reference still is reasonably pertinent to the particular
problem with which the inventor is involved. In re Clay, supra, 966 F.2d at 658-659, 23
USPQ2d at 1060. With respect to the field of endeavor, there is little dispute that the prior
art references are not within the same specific field of endeavor, i.e., multiple entry point
code resources. However, prior art references may still be analogous if it is “reasonably
pertinent to the particular problem with which the inventor is involved.” Id.
See also In re Paulsen, 30 F.3d 1475, 1481, 31 USPQ2d 1671, 1675-76 (Fed. Cir.
1994). Here, we find that the prior art references are not reasonably pertinent to the
particular problem with which the inventor is involved. Therefore, the underlying general
software concepts are not properly combinable based upon the rationale set forth by the
examiner.
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