Appeal 2006-3342
Application 10/195,217
1 provide sufficient evidence to show that one having ordinary skill in the art
2 would have done what Applicants did. United States v. Adams, 383 U.S. 39,
3 48, 148 USPQ 479, 482-83 (1966).
4
5 Analogous Art
6 The analogous-art test requires that the Board show that a reference is
7 either in the field of the applicant's endeavor or is reasonably pertinent to the
8 problem with which the inventor was concerned in order to rely on that
9 reference as a basis for rejection. In re Oetiker, 977 F.2d 1443, 1447, 24
10 USPQ2d 1443, 1445-46 (Fed. Cir. 1992). References are selected as being
11 reasonably pertinent to the problem based on the judgment of a person
12 having ordinary skill in the art. Id. (“[I]t is necessary to consider ‘the reality
13 of the circumstances,’ . . . -in other words, common sense-in deciding in
14 which fields a person of ordinary skill would reasonably be expected to look
15 for a solution to the problem facing the inventor.” (Id. quoting In re Wood,
16 599 F.2d 1032, 1036 202 USPQ 171, 174 (CCPA 1979)). In re Kahn, 441
17 F.3d 977, 986-87, 78 USPQ2d 1329, 1335-36 (Fed. Cir. 2006). See also In
18 re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992) (“[a]
19 reference is reasonably pertinent if, even though it may be in a different field
20 from that of the inventor's endeavor, it is one which, because of the matter
21 with which it deals, logically would have commended itself to an inventor's
22 attention in considering his problem”).
23 In view of KSR's holding that “any need or problem known in the
24 field of endeavor at the time of invention and addressed by the patent can
25 provide a reason for combining the elements in the manner claimed,” KSR,
7
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