In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope and content of the prior art. This is because not every potential disclosure that pre-dates the invention can be considered prior art; the disclosure must be analogous to the claimed invention. It is well-established that the test for whether prior art is analogous is “if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” The Federal Circuit used the Circuit Check decision to iterate that there are indeed limits to determining what is “reasonably pertinent” to the particular problem the inventor is trying to solve.
The patents at issue in Circuit Check (U.S. Patent Nos. 7,592,796, 7,695,766, and 7,749,566) generally related to interface plates for an expensive circuit board tester, and specifically the inclusion of a “second indicia [that] is removed from areas when said plate [is] adjacent each of said predetermined holes.” QXQ alleged that the patents at issue were invalid as obvious in view of one or more primary references in combination with any one of three separate secondary references. The three secondary references related to: (1) rock carvings; (2) engraved signage; and a machining technique known as Prussian Blue. Circuit Check contested that any of the three references were analogous art, asserting that none of the three references were reasonably pertinent to the particular problem the inventors were trying to solve at the time the inventions were made.
In considering the test for determining whether prior art is analogous, the Court specifically focused on the portion that evaluates whether the art “is reasonably pertinent to the particular problem the inventor is trying to solve.” The Court noted that the “question is not whether simple concepts . . . are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether the inventor would look to this particular art to solve the particular problem at hand.” (Emphasis added.) The Court determined that because the patent holder Circuit Check provided sufficient evidence (to wit, testimony) that “an inventor would not have considered the disputed prior art when trying to improve [the] marking [as recited in the claims],” the three disputed references were non-analogous art.
One takeaway from this case is that prior art that is not in the same field of endeavor cannot be relied on by the examiner in an obviousness rejection unless it is reasonably pertinent to the particular problem the inventor is trying to solve. This is true even if the prior art teaches a relatively simple concept. Providing arguments and evidence demonstrating that a secondary reference is so far afield that one of ordinary skill in the art would not look to that art to solve the particular problem at hand can be used to argue against obviousness rejections that include prior art references from seemingly disparate fields.
Further, patent practitioners may consider framing the particular problem the inventor was trying to solve in a field-based or otherwise narrow manner directly in the text of the application while drafting it. Doing so may prove helpful in establishing that the problem addressed by the inventors was not of the nature that would have led a person having ordinary skill in the art to look to a disparate field to arrive at the claimed solution. Of course, when framing the questions, practitioners will recognize that framing should also be done with an eye toward the potential impact question framing can have on future claim interpretations, where a narrowly defined question may narrow the scope of claims.