On Monday, the Federal Circuit reversed several PTO obviousness rejections in In re Klein.
Klein had invented a feeder for birds and butterflies that held sugar and water for preparation of nectar. The feeder included separate compartments for the sugar and water and a divider that is removed to mix the sugar and water in precisely specified ratios based on the type of animal to be fed. The ratios were already known; the claimed invention was directed to the particular device for mixing the sugar and water.
The patent examiner had issued 5 obviousness rejections that were affirmed by the PTO Board of Patent Appeals and Interferences. The Board characterized the problem sought to be addressed by the invention as “making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals.”
The rejections relied on the following references. Roberts was directed to an “Apparatus for Keeping Accounts” that included receptacles designed to receive statement cards. The receptacles included removable partitions. O’Connor was directed to a tool tray having dividers that were easily removed. Kirkman was directed to a plastic cabinet drawer with removable partitions. The drawer is used to contain relatively small objects.
Next, Greenspan was directed to a blood plasma bottle having a compartment for dried plasma and a compartment for water. During transport, a wall separates the plasma from the water. When the plasma is to be used, the wall is removed permitting the plasma to mix with the water. Shaking is required to dissolve the plasma in the water.
Finally, De Santo was directed to a fluid container having two compartments to hold two different types of fluid. A valve between the two compartments permits the fluids to be mixed together without opening the container.
The Federal Circuit’s Holding
The Federal Circuit addressed Klein’s arguments relating to the references being “non-analogous art.”
A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. . . . 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 this case, the Board relied on the second test in finding the references related to the same problem addressed by the Klein invention.
The Federal Circuit disagreed, holding that Roberts, O’Connor, and Kirkman relate to containers designed to separate their contents, as opposed to one designed to mix the contents. Further, these references all related to separating solid objects; an inventor would not be motivated to consider such references when addressing the problem of mixing liquids, such as sugar and water. Thus, the references are non-analogous art and do not qualify as prior art for obviousness purposes.
Next, the court likewise held that Greenspan and DeSanto are non-analogous art. They do not address multiple ratios and do not have movable dividers.
This decision from the court is a refreshing counterbalance to the obviousness decisions issued after the Supreme Court’s KSR decision. KSR made it significantly easier for patent examiners to issue obviousness rejections because they are no longer required to make specific findings from the references that would demonstrate a motivation to combine or alter the references in such a way as to arrive at the claimed invention.
Since KSR, I have seen more and more rejections based on references that have little or nothing to do with the claimed invention. As claims are amended to add additional features in the hopes of overcoming an obviousness rejection, some examiners will simply continue to add additional references that might show an individual element of the claim. The new references often have nothing to do with the invention. The examiner will simply argue that the new references were directed to the same problem as the claimed invention.
Klein should help tip the balance back toward equilibrium and give applicants an additional tool for overcoming obviousness rejections based on references from disparate fields. In some ways, the issue to be addressed may now be the problem the invention seeks to solve.