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Saturday, June 18, 2011


                A recent precedential decision from the United States Court of Appeals for the Federal Circuit, In re Klein, discusses the obviousness of U.S. Patent Application No. 10/200,747 under 35 U.S.C. §103.  Inventor, Arnold G. Klein (“Klein”), appeals the final decision of the Board of Patent Appeals and Interferences (“Board”), which rejected certain claims provided in the patent application.  The invention, titled “Convenience Nectar Mixing and Storage Devices,” provides a means to easily proportion water to sugar ratios for hummingbirds, orioles, and butterflies.  While the ratios are not claimed as novel, the primary claim at issue is

[a] convenience nectar mixing device for use in preparation of sugar-water nectar . . . comprising: a container that is adapted to receive water, receiving means fixed to said container, and a divider movably held by said receiving means . . . .

The Board made five separate rejections under 35 U.S.C. §103 based on references to five prior U.S. patents.  The Board defines the issue Klein is seeking to solve with his device as a “compartment separation problem.”  The Board contends that keeping things separated is not novel to nectar mixing and storage devices, and “nothing about the prior art with adjustable, removable dividers is unique to their particular applications.”  Finally, the Board argues that nothing more than ordinary skill is required to solve the particular problem Klein is trying to solve; essentially, the invention is obvious.

35 U.S.C §103(a) provides:

[a] patent may not be obtained . . . if the differences between the subject matter sought to be patented and the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.

            The Court states that a determination of obviousness under §103 is ultimately a question of law, but is based on several underlying factual findings, including: (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, such as commercial success, long-felt need, and the failure of others.  However, a reference will only qualify as prior art for an obviousness determination under §103 when it is analogous to the claimed invention.

To determine whether prior art is analogous to the present invention, the court determines (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.

Klein argues that the Board erred when it determined the referenced patents—upon which the rejections were based—are “reasonably pertinent to the particular problem addressed by Klein.”  Three of the referenced inventions provide containers that aim to separate the contents put inside the container.  Conversely, Klein’s invention seeks to provide a means to mix the contents of the container.  Furthermore, none of the referenced containers are “adapted to receive water.”  The Court agrees that these distinctions render the references not “reasonably pertinent.”

The last two patents referenced by the Board provide containers that facilitate the mixing of two separated substances.  However, neither presents a container with moveable dividers capable of preparing different ratios like Klein’s invention.  The Court defined Klein’s problem as “making a nectar feeder with a moveable divider to prepare different ratios of sugar and water for different animals.”  Viewing the problem in this manner, an inventor would not consider either of the references because of their lack of moveable dividers and inability to prepare different ratios.  In conclusion, the last two references also fail as “reasonably pertinent” to Klein’s invention.

Because none of the references upon which the Board based their rejection were “reasonably pertinent,” the Court holds that the references are not analogous art.  Accordingly, the Board’s findings are not supported by substantial evidence and the rejections under 35 U.S.C. §103 cannot be sustained.
Credit to Ashley Meyer for this case summary.