Appeal No. 2006-0583
Application No. 10/322,008
3 and 6 thereof specifically, the examiner has designated as admitted prior art only the
Background section on pages 1-2 of the specification (and not the Summary of the Invention
section on specification page 4 as indicated by the appellants on page 10 of their brief), and at
no point in the answer has the examiner contended that the admitted prior art includes “some
admission regarding the need to improve the method of making a pollution control device” as
urged by the appellants on page 12 of their specification.
The appellants further argue that the Farr reference is nonanalogous art because “the
teaching of Farr has nothing to do with pollution control devices, and especially the particular
problems with which the present Appellant was concerned, namely, methods of making a
pollution control device” (brief, page 11). We perceive no convincing merit in this argument.
It is well settled that prior art is analogous: (1) if the reference is from the inventor’s field
of endeavor regardless of the problem addressed, and (2) if the reference is reasonably
pertinent to the particular problem with which the inventor was involved regardless of the field
of endeavor. See In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060 (Fed. Cir. 1992).
Here, the Farr reference is reasonably pertinent to the appellants’ problem relating to the use
of non-preformed insulation (e.g., see lines 1-6 on specification page 4 in comparison with
lines 6-26 in column 1 of Farr). The appellants’ contrary view is based on a confused
conflation of the field of an inventor’s endeavor and the problem with which the inventor was
involved. That is, the latter is not confined to the environment of the former as the appellants
seem to believe since otherwise the legal standard for analogous art would not be a two-
pronged test.
3
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007