Appeal No. 2005-0941
Application 09/941,029
of claim 10 under 35 U.S.C. § 103(a) as being unpatentable over Golden in view of
Spremulli and Margulies. The thrust of appellant’s arguments in the request is that
Spremulli, Emmer and Margulies are from non-analogous arts and thus would not
reasonably have been consulted by a person of ordinary skill in the art in addressing the
particular problem confronted by appellant.
We have carefully considered each of the points of argument raised by appellant in the
request for rehearing, however, those arguments do not persuade us that the prior merits
panel overlooked or misapprehended any points raised in the appeal, or that the
determinations on the patentability of claims 9 and 10 were in error.
In considering the question of non-analogous prior art for resolution of obviousness
under 35 U.S.C. 103, the law presumes full knowledge by the hypothetical worker having
ordinary skill in the art of all the prior art in the inventor's field of endeavor. With regard to
prior art outside the inventor's field of endeavor, knowledge is presumed only as to those
arts reasonably pertinent to the particular problem with which the inventor was involved. See
In re Clay,966 F.2d 656, 23 USPQ2d 1058 (Fed. Cir. 1992), In re Wood, 599 F.2d 1032,
202 USPQ 171 (CCPA 1979) and In re Antle, 444 F.2d 1168, 170 USPQ 285 (CCPA 1971).
Thus, as the prior merits panel noted on page 9 of the decision, the determination that a
reference is from a non-analogous art is twofold. First, it must be decided if the reference is
from within the inventor's field of endeavor. If it is not, then it must be determined whether
the reference is reasonably pertinent to the particular problem with which the inventor was
concerned.
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