Appeal 2006-3235
Reexamination Control No. 90/006,696
1 [The field of endeavor] test for analogous art requires the PTO
2 to determine the appropriate field of endeavor by reference to
3 explanations of the invention's subject matter in the patent
4 application, including the embodiments, function, and structure
5 of the claimed invention. See Wood, 599 F.2d at 1036
6 [202 USPQ at 174] (confining the field of endeavor to the scope
7 explicitly specified in the background of the invention); see
8 also Deminski, 796 F.2d at 442 [230 USPQ at 315]
9 (determining that the cited references were within the same
10
11 field of endeavor where they “have essentially the same
12 function and structure”).
13 381 F.3d at 1321, 72 USPQ2d at 1212 (bracketed citations in USPQ2d
14 version.) The issue of what constitutes the relevant “field of endeavor” is a
15 question of fact. See Bigio, 381 F.3d at 1324, 72 USPQ2d at 1211 (“The
16 identification of analogous prior art is a factual question.”).
17 The specification includes any subject matter properly incorporated by
18 reference therein. As explained in Cook Biotech, Inc. v. ACell, Inc.,
19 460 F.3d 1365, 1376, 79 USPQ2d 1865, 1872 (Fed. Cir. 2006):
20 “Incorporation by reference provides a method for
21 integrating material from various documents into a host
22 document . . . by citing such material in a manner that makes
23 clear that the material is effectively part of the host document as
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 Deminski, 796 F.2d
436, 442 [230 USPQ 313] (Fed. Cir. 1986); see also In re
Wood, 599 F.2d 1032, 1036 [202 USPQ 171] (CCPA 1979).
(Bracketed citations in USPQ2d version.)
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