Ex Parte ANDERSON et al - Page 13




               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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