Appeal No. 2006-1279
Application No. 10/249,005
Gilpatrick as teaching forming x-ray readable information on a
substrate that is later concealed and detected with an x-ray
system. The examiner finds that it would have been obvious to
one of ordinary skill in the art at the time of the invention to
use x-rays in the device of Berson to enable reading a document
through almost any envelope or package [answer, page 4].
Appellant responds that Gilpatrick is non-analogous art and not
properly combined [brief, pages 8 and 12].
"Two separate tests define the scope of analogous prior art:
(1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor's endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved." In re Bigio, 381 F.3d
1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). See also In
re Oetiker, 977 F.2d 1443, 1446, 24 USPQ2d 1443, 1445 (Fed. Cir.
1992); In re Deminski, 796 F.2d 436, 230 USPQ 313 (Fed. Cir.
1986); and In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1060-61
(Fed. Cir. 1992).
In determining the appropriate scope of the field of the
inventor's endeavor, we must refer to "the invention's subject
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