During the examination of a patent, an examiner searches a number of databases in search of “analogous” prior art references that either disclose the same or is sufficiently close to the invention so that the examiner can make a determination of patentability of the invention. At times, a reference cited by the USPTO may appear to be unrelated to the invention (or non-analogous prior art) being examined. For example, lock technology appears to be unrelated to truck hitches. However, these two seemingly unrelated technologies might be “related” under the legal definition of “analogous” prior art.
The Patent Office as well as the courts define analogous prior art references as those references within the same field of endeavor as the claimed invention. If the reference is not within the same field of endeavor, then the prior art reference is still analogous if the reference is reasonably pertinent to the particular problem with which the inventor was concerned. In 2005, the Supreme Court decided KSR which instructed the courts to broadly construe the definition of “analogous” art, stating that “familiar items may have obvious uses beyond their primary purposes.”
The following case applies the Supreme Court’s instruction to construe the scope of “analogous” art broadly. In Wyers v. Master Lock (Fed. Cir. July 22, 2010), the patent at issue related to hitch pin locks that secure trailers to motor vehicles. The patented pin had a sleeve that could be placed over the pin to enlarge the diameter of the pin so that the hitch pin can be used with hitch receivers having different pin holes. The hitch pin also had a sealed lock to prevent internal contamination.
The court reviewed whether two prior art references, namely, a sleeve reference and a seal reference were “analogous”. The sleeve reference was directed to a trailer-towing application, adaptable to “a motor vehicle such as an automobile for towing.” Hence, the Court held that the sleeve reference is analogous prior art since it is related to the same field of endeavor as the patent at issue.
The seal reference disclosed a typical padlock which had a seal for preventing internal contamination. The Court held that even if this reference is not within the same field of endeavor as the patent at issue, the seal reference is “analogous” since the seal reference is directed toward the same problem the inventor was trying to solve – mitigating internal contamination.
Based on this case, it is substantially harder to succeed in making the non-analogous art argument in order to convince the examiner that the cited reference should not be used to reject the claimed invention. As an alternate argument, the solution may be to convince the examiner that the cited unrelated prior art reference “teaches away” from the claimed invention so that there is no motivation to combine the references cited by the examiner. If the cited reference is truly unrelated then it has been my experience that there typically is some statement or fact in the cited reference that could be used to show that the reference “teaches away” from your invention.
I invite you to contact me regarding your patent questions at (949) 433-0900 or [email protected]. 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.