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Bigio’s patent application claims a hair bursh with an “hourglass configuration for both the bristle substrate and the overall bristle array.” (Patent Application Serial No. 09/451,747). After receiving obviousness rejections from the Examiner and the BPAI, Bigio pursued his claims at the Federal Circuit. Some of the cited references were designed for use on animals rather than human hair, and Bigio argued that they should not apply because non-human hair brushes where excluded from the patent scope by language in the specification.
[T]he Board rejected Bigio’s interpretation of “hair brush” as limited to brushes only for scalp hair. Instead, the Board broadly construed “hair brush” to encompass “not only brushes that may be used for human hair on [a] scalp, but also brushes that may be used for hairs [o]n other parts of animal bodies (e.g. human facial hair, human eyebrow hair, or pet hair).”
On appeal, the Appellate Panel (RADER, J.) affirmed, finding that the Board correctly declined to import limitations on terms from the specification. Next, the Panel found that a toothbrush was an analogous art — and thus could form a basis of an obviousness rejection.
[I]t is necessary to consider ‘the reality of the circumstances’ – in other words, common sense – in deciding in which fields a person of ordinary skill would reasonably be expected to look for a solution to the problem facing the inventor.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992) . Accordingly, the examiner and the Board must consider the “circumstances” of the application – the full disclosure – and weigh those circumstances from the vantage point of the common sense likely to be exerted by one of ordinary skill in the art in assessing the scope of the endeavor. …
[T]he Board applied the test for analogous art in keeping with the counsel of this court’s predecessor: “The differences are mere change of size and substitution of material of the most obvious kind, on a par with the differences between a hairbrush and a toothbrush.” In re Wolfe, 251 F.2d 854, 856 (CCPA 1958). Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention.
In Dissent, Judge Newman argued that the toothbrush should not be considered a 103(a) reference.
The toothbrush art is not analogous to the hair brush art. Bigio’s patent application is directed to a hair brush, and his claims are limited to a hair brush.
Newman concluded with the money quote: “A brush for hair has no more relation to a brush for teeth than does hair resemble teeth.”