Appeal No. 2004-2139
Application No. 09/181,601
We disagree with the appellants’ contention that Farber is non-analogous art.
We point out that analogous art refers to a reference which is either in the field of the
applicant's endeavor or, if not, then reasonably pertinent to the particular problem with
which the inventor was concerned. See, In re GPAC, 57 F.3d 1573, 1578,
35 USPQ2d 1116, 1120 (Fed.Cir. 1995); In re Deminski, 796 F.2d 436, 442,
230 USPQ 313, 315 (Fed. Cir. 1986); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1535, 218 USPQ 871, 876 (Fed. Cir. 1983); In re Wood, 599 F.2d 1032, 1036,
202 USPQ 171, 174 (CCPA 1979)). Thus, the prior art relevant to an obviousness
determination necessarily encompasses not only the field of the inventor's endeavor,
but also any analogous arts. See, In re Wood, 599 F.2d at 1036, 202 USPQ at 174;
Heidelberger Druckmaschinen v. Hantscho Commercial, 21 F.3d 1068, 1071, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) ("References that are not within the field of the
inventor's endeavor may also be relied on in patentability determinations, and thus are
described as 'analogous art', when a person of ordinary skill would reasonably have
consulted those references and applied their teachings in seeking a solution to the
problem that the inventor was attempting to solve"). Here, we agree with the examiner
that the Farber publication is within the appellants’ field of endeavor and it relates to the
same problem as that which was addressed by the claimed invention. That is, those in
field of molecular biology now sequence megabases of isolated DNA, such as the
human or other genomes, identify which segments (i.e., parse the polynucleotide)
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