Posts Tagged ‘mark muller’

Nonanalogous Art Lives! In Re Klein

Thursday, June 9th, 2011

Yesterday, the CAFC decided IN RE ARNOLD G. KLEIN 2010-1411, finding error in the USPTO’s rejection of patent claims based on obviousness, using non-analogous art.  You may find the following useful in your prosecution efforts. (A link to the decision can be found at the end of this post.)

The law is …

“A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. Mar. 21, 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). “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.” Bigio, at 1325. Here, the Board focused exclusively on the “reasonably pertinent to the particular problem” test. “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” Clay, 966 F.2d at 659. “If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same  problem, and that fact supports use of that reference in an obviousness rejection.” Id.


Supplementary 112 Examination Guidelines – What’s In It For Me?

Monday, February 14th, 2011

This Post is from Mark Muller, Shareholder at Schwegman, Lundberg & Woessner, P.A.

Supplementary examination guidelines for Section 112 were recently published in the Federal Register and sent out for public comment.  While the details may not be too exciting, it’s a good opportunity to remind ourselves that when claims use functional language referencing some degree of “goodness” or fit, etc. we should always ask: Have I put something in the specification to support an absolute/relative reference for comparison, or that enables determination of that quality? 

This may seem obvious to many, but it’s surprising how often the issue arises.  The guidelines give a fairly obvious example, where a claim to a computer interface screen with an “aesthetically pleasing look and feel” (without sufficient corresponding information in the specification to define what this might mean) is noted as being insufficient to meet the requirements of Section 112.  So obvious is the problem in this case that even on its face, many would deem the claim to be lacking.  Nevertheless, examiners continue to encounter deficient claims.  As an aid to your own drafting efforts, here are some less obvious, but perhaps more common usage examples that I have made up to spur your thinking about claim elements that have the potential for exceeding the bounds of Section 112: