Analogous Art Must Address the Entire Problem Solved by the Patent
The U.S. Court of Appeals for the Federal Circuit has interpreted the analogous art doctrine narrowly in an obviousness analysis, concluding that all the art relied on by the U.S. Patent and Trademark Office (USPTO) was non-analogous art with respect to the claimed invention. In re Klein, Case No. 10-1411 (Fed. Cir., June 6, 2011) (Schall, J.).
The invention in issue is a device for mixing sugar and water in configurable ratios to create nectar for different birds and butterflies. The device includes a pitcher for holding liquids and a movable divider separating the pitcher into a sugar and a water section. The movable divider varies the sizes of the two sections, adjusting the ratio of sugar and water based on whether the user is feeding the nectar to hummingbirds, orioles or butterflies. Once the bird is chosen and the movable divider is set, the user then fills the sections with sugar and water and lifts the divider to mix the ingredients into nectar.
Using five prior art references, the USPTO upheld an obviousness rejection. Three of the references were directed to movable dividers for separating solid objects, as in a drawer or cabinet. The other two references were directed to immovable partitions for separating liquids to be mixed.
The inventor argued that the five references were not analogous art and that the references could not be applied to render the claimed invention obvious. The Board of Patent Appeals and Interferences disagreed, finding that the five references were reasonably pertinent to the problem of “making a nectar feeder with a moveable divider to prepare different ratios of sugar and water for different animals.” Klein appealed.
The Federal Circuit reversed, concluding that the five references were not analogous with regard to the claimed invention because they did not address the entire problem addressed by the invention. Although the first three references described movable dividers, the dividers separated solid objects and not liquids. Similarly, although the last two references described dividers that separated liquids, the dividers were immovable. Thus, the Court concluded that the cited references were not related to solving the entire problem of “making a nectar feeder with a moveable divider to prepare different ratios of sugar and water for different animals.”
Practice Note: The Federal Circuit decision did not cite to the Supreme Court’s 2007 KSR decision, which focused on the question of obviousness and which speaks to the issue of analogous art. Nevertheless, In re Klein will likely be often cited to the USPTO in support of the argument that analogous art must be directed towards the entire problem addressed by the patent, not just pieces of the problem.