Appeal 2007-0761
Application 09/907,610
References within the statutory terms of 35 U.S.C. § 102 qualify as
prior art for an obviousness determination only when analogous to the
claimed invention. In re Clay, 966 F.2d 656, 658, 23 USPQ2d 1058, 1060
(Fed. Cir. 1992). 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, 315 (Fed. Cir. 1986); see also In re Wood,
599 F.2d 1032, 1036, 202 USPQ 171, 174 (CCPA 1979) and In re Bigio,
381 F.3d 1320, 1325, 72 USPQ2d 1209, 1212 (Fed. Cir. 2004). ).
Furthermore, “‘there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness’ . . . [H]owever,
the analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385
(2007) (quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336
(Fed. Cir. 2006)).
However, our reviewing court has held that nonfunctional descriptive
material cannot lend patentability to an invention that would have otherwise
been anticipated by the prior art. In re Ngai, 367 F.3d 1336, 1339,70
USPQ2d 1862,1864 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 138 1,
1385,217 USPQ 401,404 (Fed. Cir. 1983) (when descriptive material is not
functionally related to the substrate, the descriptive material will not
distinguish the invention from the prior art in terms of patentability).
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