In In re Klein, the Federal Circuit reversed an obviousness rejection because the cited references were found to be non-analogous art. This case is an important reminder that questioning the relevance of the cited references can be an important first step to overcoming an obviousness rejection.
The Claims At Issue
The claims at issue were directed to a device for mixing sugar-water nectar for bird and butterfly feeders. As described by the court, the device includes a container with "a series of rails that, when engaged with a divider, allow for the creation of two compartments for separating sugar and water within the device." The rails "divide the device into proportionate volumes of one part sugar to four parts water (to make hummingbird nectar), one part sugar to six parts water (to make oriole nectar), and one part sugar to nine parts water (to make butterfly nectar)." To use the device, each compartment is filled to the same level with sugar and water, the divider is removed, and the sugar and water are stirred.
Claim 21 was the only independent claim at issue:
21. A convenience nectar mixing device for use in preparation of sugar-water nectar for feeding hummingbirds, orioles or butterflies, said device comprising: a container that is adapted to receive water, receiving means fixed to said container, and a divider movably held by said receiving means for forming a compartment within said container, wherein said compartment has a volume that is proportionately less than a volume of said container, by a ratio established for the formulation of sugar-water nectar for hummingbirds, orioles or butterflies, wherein said compartment is adapted to receive sugar, and wherein removal of said divider from said receiving means allows mixing of said sugar and water to occur to provide said sugar-water nectar.
According to the specification, the sugar-water ratios for each type of nectar was known in the art.
The Cited References
The claims were rejected as obvious over five references, each cited individually:
- U.S. 580,899 (Roberts) is directed to an "Apparatus for Keeping Accounts." The apparatus looks like a drawer with compartments that are designed to receive statement cards.
- U.S. 1,523,136 (O'Connor) is directed to a tool tray with movable dividers.
- U.S. 2,985,333 (Kirkman) is directed to a "Plastic Cabinet Drawer With Removable Partitions" for dividing the drawer into compartments of varying size.
- US. 2,787,268 (Greenspan) is directed to a blood plasma bottle having a compartment for dried plasma and a compartment for water, separated by a wall with a removable plug.
- U.S. 3,221,917 (De Santo) is directed to a two-compartment "Fluid Container" divided by a partition with a valve.
The Board affirmed the rejections, noting that each reference teaches "a device with a container having a movable divider held in place by a 'receiving means,' such as slots, grooves, or threads, which could be used to divide ingredients in specific ratios."
The Board disagreed with Klein's arguments that the references were non-analogous art, finding that they were "reasonably pertinent to the problem Mr. Klein addresses," which the Board characterized as "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals."
The Federal Circuit Decision
The Federal Circuit summarized the relevant legal principles as follows:
A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. ...
"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." ...
"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." ...
"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."
The Federal Circuit considered each reference, and agreed with Klein that they do not address the same problem, or serve the same purpose, as Klein's device.
With regard to Roberts, O'Connor and Kirkman, the court agreed that each is "directed to a container designed to separate its contents, as opposed to one designed to facilitate the mixing of those contents." Moreover, the court noted that they each related to separating solid objects.
An inventor considering the problem of "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals," would not have been motivated to consider any of these references ... particularly since none ... shows a partitioned container that is adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments.
With regard to Greenspan and DeSanto, the court agreed that they "do not address multiple rations" or have a "movable divider."
[A]n inventor considering the problem of "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals," would not have been motivated to consider either of these references since neither of the references shows a movable divider or the ability to prepare different ratios."
The court therefore reversed all five obviousness rejections.
"Analogous Art" Is A Threshold Question
This case is a good reminder that a threshold question when evaluating an obviousness rejection is whether the cited references are analogous art to the claimed invention. It also emphasizes the importance of defining the problem solved by the invention in terms that distinguish the references at issue. As noted by the Federal Circuit:
If a reference is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it.
That is the showing an applicant wants to be able to make in order to avoid an obviousness rejection.