Appeal No. 2007-1530
Application 10/095,112
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for rejection. In
re Oetiker, 977 F.2d 1443, 1447 [24 USPQ2d 1443] (Fed. Cir. 1992).
References are selected as being reasonably pertinent to the problem
based on the judgment of a person having ordinary skill in the art. Id.
(“[I]t is necessary to consider ‘the reality of the circumstances,’—in
other words, common sense—in deciding in which fields a person of
ordinary skill would reasonably be expected to look for a solution to
the problem facing the inventor.” (quoting In re Wood, 599 F.2d 1032,
1036 [202 USPQ 171] (C.C.P.A. 1979))).
Kahn, 441 F.3d at 986-87, 78 USPQ2d at 1335-36. See also In re Clay, 966 F.2d
656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992) (“[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 matter with which it deals, logically
would have commended itself to an inventor's attention in considering his
problem.”).
In view of KSR’s holding that “any need or problem known in the field of
endeavor at the time of invention and addressed by the patent can provide a reason
for combining the elements in the manner claimed,” 127 S. Ct. at 1742,
82 USPQ2d at 1397 (emphasis added), it is clear that the second part of the
analogous-art test as stated in Clay, supra, must be expanded to require a
determination of whether the reference, even though it may be in a different field
from that of the inventor's endeavor, is one which, because of the matter with
which it deals, logically would have commended itself to an artisan’s (not
necessarily the inventor’s) attention in considering any need or problem known in
the field of endeavor. Furthermore, although under KSR it is not always necessary
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