In an Office Action, the Examiner may cite to one or more patent references or other documents collectively known as the cited prior art. This is the body of prior art references that the Examiner is utilizing to say that the invention is not novel or is obvious in light of the cited prior art. Oftentimes, the cited prior art may contain one or more references which the inventor feels is not related to the invention. In legalese, the inventor is really saying that the cited prior art is non-analogous to the claimed invention. These situations are oftentimes frustrating for the inventor since it appears that the invention is being denied a patent based on prior art that the inventor feels is so far removed from the subject matter of the invention.
However, as with many things legal, the layperson’s understanding may not coincide with the legal requirements. The same is true here where a layperson’s understanding of analogous prior art and the legal definition for analogous prior art may be very different.
From a legal viewpoint, prior art is analogous if it is (1) from the same field of endeavor or (2) if it is reasonably pertinent to the particular problem the inventor is trying to solve. Under current U.S. patent laws, non-analogous references may be used to reject the claim based on novelty even without meeting either of the above two criteria. That’s right, unrelated references can be used to reject a claim but only for novelty or anticipation, not for obviousness. Reading between the lines, when these types of rejections are made in an Office Action, the Examiner is really saying that the claims submitted for examination are so broad that the claim can encompass products in entirely different fields. In such cases the Examiner is suggesting that the claim be narrowed to avoid such broad claims.
The non-analogous references argument is only applicable when the claim being rejected is being rejected under obviousness reasons.
In Circuit Check Inc. v. QXQ Inc. (Fed. Cir. 2015), the parties stipulated to infringement and the defendant made its sole stance on invalidity based on obviousness. Circuit Check involved USPNs 7592796, 7695766 and 7749566. In order to support its obviousness argument, the defendant presented three prior art references which were directly related to the subject matter of the patent being litigated, namely, methods of marking interface plates for testing circuit boards. But those three references did not disclose removable markings as required by the claims. The defendant also presented three prior art references not related to the subject matter of the patent being litigated but which showed removable markings. These three references related to rock carvings, engraved signage and a machining technique known as Prussian blue. These additional prior art references are referred to as the disputed prior art.
The disputed prior art was not from the same field of endeavor as the subject matter of the patent being litigated (marking interface plates for circuit board testing). As such, the sole issue was whether the disputed prior art was reasonably pertinent to the particular problem the inventor was trying to solve. However, the standard is more nuanced. “The question is whether an inventor would look to this particular prior art to solve a particular problem at hand.”
A jury trial was held and the jury found that the disputed prior art was non-analogous and upheld the patent’s validity. The Federal Circuit affirmed the District Court’s decision based on a view that the jury had made its decision based on substantial evidence. In other words, there was substantial evidence to support the jury’s finding that the disputed prior art was non-analogous. The substantial evidence included testimony from experts indicating that they would not have used the disputed prior art in order to solve the problem solved by the patented invention. The patent owner also submitted reasons why an inventor would not have considered the disputed prior art when trying to improve marking techniques for circuit boards.
The court noted that:
“Even though an inventor may be aware of rock carvings it is not surprising that the inventor would not have looked to rock carvings to improve the process of painting small dots on interface plates for expensive circuit board testers. And, even though an inventor may work in an office with engraved signage, the inventor would not necessarily have considered using the techniques disclosed in engraved signage to solve the problem of making circuit board tester interface plates. Finally, even though an inventor in this case was aware of Prussian blue, it is not surprising that one of skill in the art would not consider using the machining technique that employed removable dye on interface plates where such dye could fall into and interfere with the underlying electronics of the circuit board testers.”
For these reasons the court held that the disputed prior art was non-analogous and affirmed the jury’s decision for not invalidating the patent at issue.
Now how does this opinion translate into the patent prosecution of the patent application? A non-analogous reference argument is typically a very difficult argument to make since it is dependent upon the Examiner’s perspective. From a patent prosecution stand point, it is oftentimes difficult to change the mind of an Examiner. As such, it is often more beneficial to present new evidence so that the Examiner can make a new decision rather than simply reverse his or her prior position. To this end, the Circuit Check decision indicates the direction that one may take in order to improve the chances of eliminating prior art as being non-analogous.
For example, the Circuit Check decision relied heavily on evidence submitted by the patent owner that the disputed prior art was non-analogous. Likewise, inventors can include declarations to the extent that the cited art is non-analogous. Moreover, reasons should be included in the declaration as well as the remarks section of the response in order to show why the cited art is non-analogous and not merely make bald conclusions that the cited art is non-analogous.
I invite you to contact me with your patent questions at (949) 716-8178. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.