Appeal No. 2006-2280 Page 18
Application No. 10/244,011
removable patch (12). The examiner found that it would have been obvious to one
of ordinary skill in the art to modify the fastener of Finegan by providing adhesive
with a removable patch, as taught in Shrader, because such modification would
have involved mere substitution of one well-known fastener for another well-
known type which is well within the ambit of one of ordinary skill in the art.
Answer, pp. 4-5.
The appellant argues that Shrader is non-analogous art and that only in the
light of the appellant’s claimed invention would one combine Shrader, which
relates to a cable jacket, with Finnegan, which relates to an adjustable grip for a
golf club. We agree with the appellant.
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor
or is reasonably pertinent to the problem with which the
inventor was concerned in order to rely on that reference
as a basis for rejection. In re Oetiker, 977 F.2d 1443,
1447 (Fed. Cir. 1992). References are selected as being
reasonably pertinent to the problem based on the
judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the
circumstances,’-in other words, common sense-in
deciding in which fields a person of ordinary skill would
reasonably be expected to look for a solution to the
problem facing the inventor.” Id. (quoting In re Wood,
599 F.2d 1032, 1036 (C.C.P.A.1979))).
In re Kahn, 441 F.3d 977, 986-87, 78 USPQ2d 1329, 1335-1336 (Fed. Cir. 2006).
We find that Shrader is not in the field of the applicant’s endeavor of attaching
flexible pads to crutches or canes. We further see no reason why one having
ordinary skill in the art would combine the teaching of a reference relating to cable
jackets with the teachings of a reference relating to a golf club grip to solve the
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