Ex Parte Schell et al - Page 4




              Appeal No. 2005-1204                                                                Page 4                
              Application No. 10/057,476                                                                                



              ("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." (citation omitted)).  In deciding whether a reference is from a relevant art, we first            
              must determine whether the reference is within the appellants' field of endeavor, and if it               
              is not we next must determine whether the reference is reasonably pertinent to the                        
              particular problem confronting the appellants.  Wood, 599 F.2d at 1036, 202 USPQ at                       
              174.                                                                                                      


                     The appellants' field of endeavor in this case is fastener tools.  Clearly, Foster's               
              invention drawn to manually operated pump dispensers such as trigger sprayers is not                      
              within the appellants' field of endeavor.  Accordingly, we must now determine if Foster is                
              analogous art that is "reasonably pertinent to the particular problem with which the                      
              inventor was involved."  Wood, 599 F.2d at 1036, 202 USPQ at 174.  "A reference is                        
              reasonably pertinent if, even though it may be in a different field of endeavor, it is one                
              which, because of the matter with which it deals, logically would have commended itself                   
              to an inventor's attention in considering his problem."  In re Clay, 966 F.2d 656, 659, 23                
              USPQ2d 1058, 1061 (Fed. Cir. 1992).  If a reference disclosure relates to the same                        
              problem as that addressed by the claimed invention, "that fact supports use of that                       







Page:  Previous  1  2  3  4  5  6  7  8  Next 

Last modified: November 3, 2007