By Paul Cole, Professor of Intellectual Property Law, Bournemouth University; Lucas & Co, Warlingham, UK
Those prosecuting patent applications before the USPTO, the EPO and other examining patent offices confront on a daily basis objections of the kind: “A is known from X, B is known from Y; there was no invention in combining A with B.” Such objections are time-consuming to counter and often seem to a prosecuting attorney and his or her client less than reasonable. A sequence of recent decisions from the CAFC provides a clear indication that objections of this kind are being made too freely and too often.
In re Arnold G. Klein decided 6th June 2011 was a unanimous opinion of Judges Newman, Schall and Linn. It concerned a jug for mixing nectar having two compartments separated by a movable divider. Sugar (presumably in granular form) could be placed in one compartment and water in the other, after which the divider could be removed and a correct mixture for hummingbirds and other specific creatures that it was intended to feed could be obtained. The USPTO Appeal Board held that the claimed subject matter lacked inventive step having regard inter alia to various primary references disclosing office drawers with movable partitions using as secondary reference admitted knowledge in the prior art of the appropriate sugar to water ratios for the creatures that it was intended to feed. The CAFC unequivocally rejected the cited primary references as analogous art on the ground that they were neither within the field of endeavour of the invention nor reasonably pertinent to the problem with which the invention was involved. In a footnote the Court rejected the proposition that the problem with which the inventor was concerned could be arbitrarily redefined to support an obviousness rejection and went on to comment that: