There is nothing particularly surprising in the recent Fed. Cir. decision of Innovation Toys v. MGA Entertainment, App. No. 2010-1290 (Fed. Cir. March 21, 2011) (a copy is available at the end of this post), which reversed a District Court finding of unobviousness, except that the District Court had erroneously found that a key piece of prior art – an 80’s electronic chess-type laser game, was nonanalogous art to the patent-in-suit on a 3-dimensional laser-target board game. Nonanalogous art decisions are rare, so this is an opportunity to revisit what is, after all, an important part of the Graham v. Deere test for obviousness. Graham v Deere requires that the differences between the claimed invention and the relevant art be considered in resolving obviousness. The key word here is “relevant art,” and how far afield Examiners and Courts can travel to find it.
Most commentators concluded that KSR further weakened the practical usefulness of this test, with the language that the POSA might be led to elements of the art other than those designed to solve the problem addressed by the invention:
“Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a [POSA] will be able to fit the teachings of multiple patents together like pieces of a puzzle.”
However, the KSR Court also cited In re Kahn, 441 F.3d 977 (Fed. Cir. 2006) with approval, and this decision has a lot to say about nonanalogous art:
“[T]he ‘analogous art’ test —has long been part of the primary Graham analysis articulated by the Supreme Court…The analogous-art test requires that the Board show that a 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.”…”[The Deere test] begins the inquiry into whether a skilled artisan would have been motivated to combine references by defining the prior art relevant for the obviousness determination, and it is meant to defend against hindsight.”
Put conversely, if an Examiner has to reach outside of the relevant art areas to find elements of the claim, the Examiner may be cueing you to argue “hindsight reconstruction”— the Examiner is using your client’s invention like the picture of the finished puzzle on the box, as a guide to locate and assemble widely scattered pieces. In some cases, the Examiner may have reached into such disparate areas of endeavor that the art is not “logically combinable” to yield the claimed invention. If you think such arguments do not have any force, look at Ex parte Haymond, 41 USPQ2d 1217 (Bd App 1996) where a 103 rejection was reversed after an Examiner reached into the vaccine art to find an element of a parenteral feeding solution. Such arguments may not always be available, and may not seem compelling to you, but in a post-KSR world in which the PTO believes that it is prima-facie obvious in the medical arts that each element in a combination of actives will retain its original functionality in vivo, every little bit helps.