Appeal No. 2006-3310 Page 12
Application No. 10/282,424
Although § 103 does not, by its terms, define the “art to which [the] subject
matter [sought to be patented] pertains,” this determination is frequently
couched in terms of whether the art is analogous or not, i.e., whether the
art is “too remote to be treated as prior art.” In re Sovish, 769 F.2d 738,
741, 226 USPQ 771, 773 (Fed. Cir. 1985).
. . . .
Two criteria have evolved for determining whether prior art is
analogous: (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 Deminski, 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).
Clay at 966 F.2d at 658-59, 23 USPQ2d at 1060.
In this case, we do not consider WO ‘628 to be within Appellants’ field of
endeavor. WO ‘628 is concerned with “non-flowable adhesive and sealant
compositions which are particularly useful in the threadlocking and sealing applications.”
WO ‘628, page 1, lines 8-10. In experiments performed in WO ‘628, the adhesive was
applied to threaded bolts and “[t]he bolts were then mated with nuts and allowed to cure
24 hours.” Id., page 20, lines 19-21. Appellants’ claimed subject matter is an anti-seize
lubricant which is “useful for preventing seizing of threaded fasteners.” Specification,
[0001]. The objective of the claimed anti-seize composition is to lubricate surfaces, the
opposite of the purpose stated for WO ‘628. Consequently, we do not find them to be in
the same field of endeavor.
Even though WO ‘628 is not within Appellants’ field of endeavor, it may be
properly combined with WO ‘528 and Hefling if it is reasonably pertinent to the problem
addressed by Appellants.
A reference is reasonably pertinent if, even though it may be in a different
field from that of the inventor's endeavor, it is one which, because of the
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