Appeal No. 2002-1970 Page 5
Application No. 09/072,333
Appellants argue that the examiner’s obviousness rejection is improper because
Bergvall is non-analogous art. For the reasons which follow, we agree with appellants.
As explained in In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992), a prerequisite to a finding of obviousness
is determining what is “prior art,” in order to consider
whether “the differences between the subject matter sought
to be patented and the prior art are such that the subject
matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the
art.” 35 U.S.C. § 103. 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.”
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. Id. See also 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).
Even giving the teachings of Bergvall and appellants’ invention their broadest
reading and application, they cannot reasonably be considered to be within the same
field of endeavor so as to satisfy the first criterion for analogous art. Bergvall is directed
to a device for measuring distances on a workpiece to be treated by a machine and for
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