Appeal No. 2006-2414
Application No. 10/668,514
On the other hand, we agree with appellants’ general observations in the
brief and reply brief as to the nonobviousness of the subject matter of claims 11
through 14 and 16 through 18.
Although not explicitly stated at page 6 of the principal brief on appeal as to
the rejection of independent claims 11 and 16 on appeal, appellants’ more focused
argument at pages 2 and 3 of the reply brief that Gould is not analogous art is well-
taken.
The test to determine whether the prior art is analogous is: “(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 Clay, 966 F.2d 656, 658-59, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992)(citing In re Deminiski, 796 F.2d 436, 442, 230 USPQ 313, 315
(Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA
1979). Note also the common sense analysis in In re Oetiker, 977 F.2d 1443, 24
USPQ2d 1443 (Fed. Cir. 1992) as to what fields of endeavor an artisan would
reasonably be expected to look for a solution to the problems facing the appellants.
10
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