Appeal No. 2003-1374
Application No. 09/591,947
The appellants argue that no proper nexus is established to
combine the teachings of Hayes and Prescott and then rely on, inter
alia, In re Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060 (Fed.
Cir. 1992)1 to support their position. See the Brief, pages 4-7.
Thus, it appears that the appellants are taking the position that
Hayes and Prescott are nonanalogous and therefore,
they are not combinable. Id. We do not agree.
As our reviewing court stated in Clay, 966 F.2d at 658-59, 23
USPQ at 1060,
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.
As is clearly apparent from the teachings of both Hayes and
Prescott discussed above, they are directed to the same field of
endeavor as the appellants’. They, like the claimed invention, are
drawn to the same catheter art, with a particular emphasis on those
employing light sources and energizing means. Thus, we cannot
1 The appellants also refer to unpublished decisions, Oscar
Mayer Foods Corp. v. ConAgra Inc., 45 F.3d 443, (Table), 35
USPQ2d 1278, 1281 (Fed. Cir. 1994) and In re Levitt, 873 F.2d
1451, (Table), 11 USPQ2d 1315, 1316 (Fed. Cir. 1989)
7
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