In re Klein – a breakthrough for arguments as to non-analogous art before the USPTO?

Guest Post by Professor Paul Cole, Bournemouth University; European Patent Attorney, Lucas & Co, UK.

The above decision has been comprehensively reviewed in yesterday’s posting by Dennis Crouch, but it is of interest because it provides a sign that the analogous art tests in Europe and in the US may not be as different as previously believed

For a primary reference, the black-letter law of the EPO as explained in the Case Law of the Boards of Appeal is that it is normally a prior art document should be selected disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention and having the most relevant technical features in common, i.e. requiring the minimum of structural modifications. As regards selection of a secondary reference, T 176/84 MÖBIUS/Pencil sharpener is a widely followed appeal board decision. The primary reference concerned a known pencil sharpener and the question was whether that disclosure should be considered in combination with a second reference disclosing a securing mechanism for the slot of a savings box. It was held that a skilled person would, as well as considering the state of the art in the specific technical field of the invention, look for suggestions in neighbouring fields and/or in a broader general technical field of which the specific field was part, i.e. any field in which the same technical problem or one similar to it arose and of which the person skilled in the art should be expected to be aware.

The US analogous art test as explained in In re Bigio 381 F.3d 1320 would be accepted by most European practitioners as no more and no less than a summary of the test adopted by the EPO Appeal Boards:

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.

With this similarity in their underlying legal tests it is surprising how far the EPO and the USPTO have diverged in practice. A classic example is found in the Bigio case itself i.e. that toothbrush references are analogous art to hairbrushes, both being brushes having a handle segment and a bristle substrate segment. Judge Newman was more appreciative of the difference between a hairbrush and a toothbrush but she was in the minority. The more recent decision in Innovention Toys v MGA Entertainment (Fed Cir., Mar 21 2011) though perhaps less factually clear-cut also ruled that the art there cited was analogous.

As regards field of endeavour Klein nailed his colours firmly to the mast of nectar feeding with no less than four references to nectar in his main claim and two references to the hummingbirds, orioles and butterflies that were to receive the nectar:

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.

The objection as set out in the government’s appeal brief was that the art taught multiple examples of containers with compartments separated by removable dividers, that Mr Klein was not entitled to a patent just because he sought to put these containers to a particular use to which these prior art containers had not been put and that substantial evidence supported the Board’s conclusion that the prior art containers would have commended themselves to someone like Klein who faced the problem of finding a container capable of being divided into separate compartments. However, the government’s contention that the problem was simply one of “compartment separation” did not resonate with the CAFC. They dismissed this broadening from the narrower nectar-related formulation of the problem found by the Board for procedural reasons. It is difficult to see what basis there could be for broadening the problem in this way except for wilful blindness as to the nature of the invention and creation of an improper hindsight mosaic of prior art. However, it seems doubtful that Klein would have succeeded on this issue but for the forthright way in which he had defined his field of endeavour in his claim.

In the previous posting it has been noted that Klein’s narrow “purpose” of the invention goes against common patent attorney practice because the narrow purpose can also lead courts to narrow the claim scope during claim construction and in their analysis of infringement under the doctrine of equivalents. Attorneys may want to rethink that approach in light of this case. A European practitioner would say “amen” to that. Klein was in the business of jugs for nectar mixing and nothing else. There was no mileage for him in extending his claim scope into unrelated and wholly speculative fields from which he could not expect ever to receive revenue, but which would expose him to unknown and potentially fatal prior art.

The USPTO’s decision to select e.g. an accounting drawer as starting point prior art seems to a European practitioner to be putting the cart before the horse. European practice follows the approach of the Irish farmer asked by an English visitor lost in the back roads of Kerry: “Can you direct me to Dublin?” He replied: “If I wanted to go to Dublin, I definitely wouldn’t start from here!” Arguably the natural starting point for development of the invention was the nectar and how to dispense its ingredients accurately. That the drawer was an unnatural starting point is supported by the reasoning in EPO Appeal Board in T 570/91 AE PLC/Pistons which with modification to follow the facts in the present case would read as follows:

“If … a person skilled in the art prefers and decides to start from a specific accounting drawer, he can further develop that drawer but at the end of that development the normal result will still be an accounting drawer and not a nectar mixing device.”

In its opinion the CAFC adopted a similar approach to AE PLC, following a dictum in In re Clay 966 F.2d 659 that “If [a reference]is directed to a different purpose the inventor would accordingly have had less motivation or occasion to consider it.” None of the references of this type showed a partitioned container that was adapted to receive water or contain it long enough to be able to prepare different ratios in the different compartments, and the Board’s finding that the five references at issue were analogous art was not supported by substantial evidence.

As to the merits of the case, useful guidance is given in the opinion of Jacob L.J. in Schlumberger v Electromagnetic Geoservices [2010] EWCA Civ 819 where he was grappling with the same problem of a combination of prior art A and B in dissimilar arts and asked in what circumstances a marriage of skills in dissimilar arts could be obvious to either notional partner. He observed:

“In the case of obviousness in view of the state of the art, a key question is generally “what problem was the patentee trying to solve?” That leads one in turn to consider the art in which the problem in fact lay. It is the notional team in that art which is the relevant team making up the person skilled in the art. If it would be obvious to that team to bring in different expertise, then the invention will nonetheless be obvious. Likewise if the possessor of the “extra expertise” would himself know of the other team’s problem. But if it would not be obvious to either of the notional persons or teams alone and not obvious to either sort of team to bring in the other, then the invention cannot fairly be said to be obvious. As it was put in argument before us the possessors of the different skills need to be in the same room and the team with the problem must have some reason for telling the team who could solve it what the problem is.”

The value of the insight in Schlumberger is amply demonstrated by the fact pattern in the present case, although admittedly the invention discussed in Schlumberger lies at the opposite end of the scale in terms of commercial importance and technical difficulty. In the present case the state of the art had not progressed beyond retailers selling nectar feeding equipment and giving advice as to the ratio of sugar to water for the various creatures that it was desired to feed. On the evidence of what was said in the specification customers had been confused and forgetful for years, but until Mr Klein’s invention nobody had identified this as a technical problem, still less thought of looking in the receptacle art for a potential solution. In the words of Jacob L.J. in Schlumberger:

“They did not say: “this is our problem. If only we had a solution to it.” Instead they simply put up with things as they were. Then the essence of the invention is the insight that there was a solvable problem at all.”

If the less plausible starting point in the receptacle art is taken as the starting point, what realistic prospect was there of a designer of receptacles with removable dividers e.g. for business or accounting purposes realising that there was a problem associated with nectar feeding that could be solved by making the receptacle water-tight and adapting the divider positions for sugar and water to make nectar?

On either view the objection sustained by the Board was based on impermissible hindsight and was correctly reversed by the CAFC. The nectar feeding people and the receptacle designers would never have got engaged, still less married, if they had not somehow been introduced, and there was no straightforward mechanism in the prior art for such an introduction to have been made.

The mechanical examples in the MPEP at 2141.01(a) all reflect cases where the government view as to how the analogous art test should be applied succeeded. Klein provides a counter-example of applicant success that it is hoped will soon find its way into MPEP. As regards Bigio, while that decision can usefully be cited for the rule that it affirms, it is submitted that it is an outlier which while possibly correct on its special facts should not be held up to examiners as a good way of arguing the normal run of cases.

58 thoughts on “In re Klein – a breakthrough for arguments as to non-analogous art before the USPTO?

  1. 58

    Inviting Body Punches,

    If you call making vacuous conclusory statements “advocating,” I suggest you find yourself a new profession.

  2. 57

    UK law does not have the prohibition that you suggest.

    In the Workmate case it turned out that the structure as claimed was a scaled up bookbinder’s press. But the article was held not to be a workbench, and Ron Hickman’s product was held to eb both novel and inventive. I believe incidentally that the US patent was also upheld, but have not read the US court’s opinion.

    In another classic case, Molins, the claim was to a known cigarette making machine configured to run at a higher speed. Once the speed limitation was in the claim, the patented feature solved a problem that was not present on the older low-speed machine and the patent was held to be valid.

    If the fish hook is scaled up to become a crane hook, then it is a different product, and if it solves a new problem it is potentially patentable. That it the position in the UK and before the EPO and I would be surprised if the situation was materially different in the US because are laws are very similar in most respects.

    I sympathise with you about use claims (now purpose-related product claims). They have been granted for decades, but I know of no UK case where there has been an order of the court following a finding of validity. I have asked my German colleagues whether there is any reported court order in Germany, but have drawn a blank. So the rights have been granted but we do not really know how they will be enforced. I think, though that the purpose-related product claims e.g. aspirin for prophylaxis against cardiac disorders could be easier for the courts than the old Swiss-form use claims.

  3. 56

    I hope you see the problem from an infringement point of view. If you re-claim an old machine, article or composition, but limit the claim to a new use in the preamble, how does one infringe such a claim?

    By making the old article?

    By selling the old article?

    By using the old article in the new use?

    You quickly come to see that there is something very wrong with a claim to an old machine, article or composition that is limited to a particular use.

  4. 55

    They are both structurally different. One is half something .. half nothing.. And they fold into each other.. not like fan, but like a fit back into a whole of something. But they are still in fact two halves!

    The other whole pieces that fold like a fan on to each other.
    And on the other hand, the second preamble in the Application although redeeming itself to a similar size it is one whole. not a sequence of wholes. And it is very different from the ? application that claims itself to be before mine! It wasn’t. That is why I only sent one set of Drawings and two Checks at first! The Mail was never lost…
    A PIG is still a PIG.
    Mine was a Silk Purse.. And you know what they say about Pigs Ears!
    Just like I said about the RAKES! Both very different! You can change the handle, the color the material. And even though they are both rakes they are different. Come on now.. How can the others that now are like mine with a short whole of something and a long whole of something welded together exist as Utility? Cause they can’t…. Enough said!

  5. 54

    Ned, I have indeed read the original statutes.

    I seem to remember from my 2008 article for the John Marshall Review that Thomas Jefferson in his celebrated letter to Isaac M’Pherson said that rules had been evolved to exclude patents for certain kinds of subject-matter:

    (a) a mere change of use of an existing machine, e.g. the use of “a screw for crushing plaster might be employed for crushing corn cobs” or the use of “a chain pump for raising water might be used for raising wheat”;
    (b) a mere change of form, e.g. “a high-quartered shoe instead of a low one; a round hat instead of a three-square; or a square bucket instead of a round one”;
    (c) a mere change of material, e.g. “a ploughshare of cast rather than of wrought iron; a comb of iron instead of horn or of ivory, or the connecting buckets by a band of leather rather than of hemp or iron.”

    Such ideas found their way into the 1793 statute but the provisions relating to form and proportion were not incorporated into the 1836 statute, or indeed any subsequent statute up to 35 USC.

    Furthermore, even in the form expressed by Thomas Jefferson the word “mere” appears, showing that he was concerned not to turn this general guideline into a rigid rule.

  6. 53

    I’m not presuming anything, Ping.

    I’m advocating for the adoption of a rule, and using this situation to illustrate a beneficial outcome from the use of that rule.

    NOW go away, Ping. Your genius is underwhelming.

  7. 52


    Ignoring your preamble (!), the current judge-made rule is that the preamble can sometimes be limiting.

    That ill-considered rule is unwieldy, unnecessary, and unappealing, IMHO.

    Remember our discussion here:

    link to

    You are exalting the virtue of flexibility over that of predictability.

    The kind of flexibility for which you advocate is the kind of flexibility that, in Malcolm’s words, allows the court to reach “the result the court wants to achieve”.

    The power in the system should not be in the court–it should be in the law. The court is NOT the law. You of all should appreciate this, coming from the English legal heritage.

  8. 51

    It must be nice to label a view that does not comport with one’s desired outcome with “Troll” or “Ping” and not actually address the point being made.

    Here, Inviting Body Punches ignores the fact that the preamble is not “always” one way of the other. His bald presumption that the preamlbe is always limiting is simply, and undenialbly, false.

    Calling Hardworking Monkier of a Thousand Permutations “Ping” no more cahnges this fact then Ned Heller’s inability to properly construct the claim inthis case.

    Calls of “Go away” and “Get real” are pathetic responses, showing only weaknesses on the points under discussion. They are admissions that one’s positions are not tenable.

    From a debating standpoint, I love seeing such comments because I know which side has carried the day.

  9. 47

    Paul, read the original US statutes. Those statutes said that a change in size of something was not patentable. While this express limitation on patentable subject matter has long been removed from the statutes it has not been remove from the law. Mere change in the size of a machine or article of manufacture is not patentable subject matter in the United States. However, we typically deal with this in terms of obviousness.

    As well, we developed the doctrine that a new use for an old object or machine was not patentable as a new machine or object, but only as a process.

    In view of the above, a claim to an old hook for a new use regardless of implicit size changes is not patentable subject matter – albeit we typically handle the situation through anticipation or obviousness.

    So while the Europeans may allow a claim for new use for an old article of manufacture, in United States that is not patentable subject matter. Simply declaring a use in the preamble is not sufficient to obtain a valid claim where the body of the claim defines an old apparatus or an old machine.

    I hope this helps with your understanding my point of view.

  10. 46

    The EPO regards intended use as very important. For example a claim specifying a shipyard crane hook would not be anticipated by a prior disclosure of a hook for catching game fish, even if in other respects the two hooks were structurally similar. In this case, the intended shipyard use incorporates implicit features of size and strength not found in the small fishing hook.

    Likewise a claim to a hairbrush is not anticipated by a prior toothbrush, even if the CAFC thinks it might be. If you think about it, even though you might be able to use the toothbrush for brushing hair if so minded, you could not use the hairbrush for brushing teeth.

    Respectfully, Ned, we must disagree.

  11. 45

    Here you fairly point out that the body of the claim as well had “nectar” limitations.

    It’s not like all of a sudden you have been told what the claims have for the first time, Ned.

    Any other wild-a_$$ theories to throw against the wall for this case? Perhaps the third time will be the charm.

  12. 44

    Paul, for anticipation purposes, clearly the preamble that only defines a use for the body of the claim should be ignored. Whether it is ignored for obviousness would depend. Here you fairly point out that the body of the claim as well had “nectar” limitations.

  13. 43

    The claim says: “by a ratio established for the formulation of sugar-water nectar for hummingbirds, orioles or butterflies.”

    So reference to the field of use is NOT confined to a preamble. It is in the body of the claim as well.

    “Here, a preamble generally is ignored.” Not very useful, really. People are generally honest. Does that make Fred honest? Sometimes the preamble should be ignored, but sometimes it gives life and meaning to the claim so that it is wrong to do so. The one universal rule is that you have to look at the real merits of the case.

  14. 42

    Wife asks for her husband to bring downstairs a hairbrush. Husband brings a toothbrush. Outcome: wife questions husband’s sanity; severe marital stress.

    If “hairbrush” is interpreted in the context of the Bigio specification its meaning is clear and unequivocal: a brush for scalp hair. That is a natural meaning of the word and the correct meaning in context. As Lord Hoffmann said in the Kirin-Amgen case in the UK it is what the applicant meant by the word. However, the USPTO and the CAFC gave the word the widest possible meaning. Another piece of black-letter law which is apt to be misapplied, as it arguably was in Bigio.

  15. 41

    I’ll repeat.

    We do not know how the “field” was so narrowly defined in the first place Or whether the preamble had anything to do with it. That was not an issue either at the board or at the Fed level.

  16. 40

    The free market is not an unregulated market – never has been, never will be.

    Time to retire that anti-patent canard.

    A seldom funny parody evoked a small chuckle from yours truly.

    Note to Dennis: not worth it.

  17. 39

    The preamble was not an issue. On that we agree.

    That the PTO changed its position on appeal, it did. See, fn. 2. See how it changed its position. It just took the elements claimed and did not add in any “purpose.”

    That the field at the Board was agreed to by both the PTO and Klein. Given. That it matched the preamble. It did.

    Give me a break.

  18. 38

    But, when it went up to the Federal Circuit, the PTO changed its position. They did not agree that the preamble was limiting. So they addressed the claimed invention directly, not reading the preamble into the claim limitations

    To paraphrase Justice Sotomayor, Ned, squint as I may, I fail to see the qualifications that you purport to be related to any preamble usage that you now claim to be driving this decision.

    I wish that you would stop making things up.

    There is no indication anywhere that the examiner, the board or the government before the court based anything on some preamble usage that is not covered in the heart of the claim. There is no given an “assumed field.” YOur statment of “They were not entitled to focus in on the claim itself” has no foundation.

    You state “But, since the issue of the preamble and its weight was not before the Court” – (I pause momentarily to reflect how oddly this statement of not-before-the-Court is, given that you also state the government made this an issue through it’s different treatement of the preamble – but as I mentioned- such treatment cannot be seen, no matter how much one squints) but you are errant on any result drawn from this because quite simply, the issue was not before the court because the preamble was never an issue – anywhere in this case.

  19. 37

    No doubt. But the European usage of preambles is generally different from our own. Here, a preamble generally is ignored.

    In this case, it “apparently” was not. Both the PTO and the applicant agreed, perhaps based on the preamble, that the field of endeavor was as stated in the preamble. But, when it went up to the Federal Circuit, the PTO changed its position. They did not agree that the preamble was limiting. So they addressed the claimed invention directly, not reading the preamble into the claim limitations.

    The Feds told the PTO that they were bound by the field as agreed to by both the PTO and the applicant at the Board. They were not entitled to focus in on the claim itself at this late stage.

    So, given the assumed field, the result was to be expected. But, since the issue of the preamble and its weight was not before the Court, we still do not know, as practitioners, how to limit a claim to a particular field. But this is critical.

    Had this issue been presented and resolved, this case would have been far more interesting.

  20. 36

    A “drawer with a movable divider” cannot possibly be analagous to a “container for proportioning two fluent materials prior to their mixing upon removal of the partition”, unless one works for the USPTO it seems…
    How the examiner considered these to be analagous is seriously beyond comprehension. There are surely much better examples of vaguely similar prior art in “mixing jugs for proportioning culinary ingredients” or even “buckets for mixing concrete”!

  21. 35

    Professor Cole,

    WRT the Bigio case, anyone who does not consider hair brushes and tooth brushes to be analogous art must not be familiar with the humor of the late American comic George Carlin.

    In one of his short skits, Mr. Carlin explained that for hygiene he brushed his hair, his teeth, and his a__hole every day; and for economy, he used the same brush.

    I respectfully submit that is a mere stand up comic considers them analogous art, surely one of ordinary skill in the art would as well.

  22. 34

    Patents are the incentive for the creation of the free market without them the market wouldent exist because there would have been no incentive for the creation of capitalism.Patents need to be improved on reguarding inventorship determination enforcability and independant inventor partnershiping and top patent funding in order to continue human advancement.

  23. 33

    The free market is not an unregulated market – never has been, never will be.

    Time to retire that anti-patent canard.

    “Regulations” and “rules” are necessary to define any system. When those “regulations” and “rules” are grounded in the very constitution of this country (like Patents), they cannot be antithetical to the free market, as they are a baseline construct. One must have rules to define a system and patents are a part of those very definitions that define our “free market” system.

    If you do not like this, there are appropriate channels to change these baseline rules. Merely declaring so on a blog is not one of those channels.

  24. 31

    These situations should be eliminated from controversy and wasting the courts time if the court issued a ruling that nothing may be declaired obvious when it is a superior competing product or has the potential to be if a patent is granted. Obviousness filings are nothing but stealing the patent rights and profits of the superior invention destroying the incentive to create. Let the free market determine the worth of the new idea. Let the consumer have the full right to purchase and appriciate if they want Instead of the noncreation and nothingness of expending large amounts of money to bring the product to market only to have it struck down by the competition. This isent free market capitalism.

  25. 30

    Thanks Paul. Good to see the reference to T570/91 pistons. I love that Decision. Prosecutor readers, do click on it. You might enjoy it too.

  26. 29

    “It would have been obvious to cross a chicken with a buffalo to arrive at the claimed invention of buffalo wings.”

    One of the classic and most memorable observations ever! It deserves to spread throughout Europe and I will do my best!

  27. 28


    I completely agree with that lst observation about the result being what the court wants to achieve.

    In a case like the present it is all about persuading the judges that there really is an invention (albeit a very modest one). If that is done, the court may be helpful. If, as in Chef America the court for some reason disapproves of the patent, the outcome can be surprisingly unfavorable for the patentee.

  28. 27

    PhilS: “This is a great improvement over the court’s prior jurisprudence.”

    “If you want to look thin, hang around fat people.”

  29. 26


    I actually agree with your last paragraph.

    I also agree with your sentiment that the court had a desired outcome–I don’t know precisely why, just a feeling.

    I was left wondering how many of the justices nurture Victorian-era sentiments about the majesty and order of nature, and how many of them had one of these devices adjacent their kitchen sink, overlooking the oriole, hummingbird, and butterfly feeders.

    As an aside, I’m disappointed that moths weren’t included in the analysis, especially the ever-popular hawkmoths and sphinxes, which are the nocturnal physiognomic equivalents of diurnal hummingbirds.

    Maybe the inventor should have used the term “lepidoptera” rather than “butterflies”–all it should take to be non-infringing would be to include another division for moths.

    The question arises, though, what to do if moths and butterflies (and other lepidoptera, such as skippers) all prefer the same concentration? Would different labeling suffice to avoid infringement? A different instruction manual?

    All hummingbirds and orioles, or just certain species? Orchard Oriole, Baltimore Oriole, or Bullock’s Oriole?

    I’m sure the justices ponder these issues as they thumb their well-worn Field Guide to the Birds of Eastern North America, or if they are in favor of novelty, a less-used copy of the Sibley Guide…

    As a nod to Paul and the resonating supremacy of US colonial masters, we of course have the Brits to thank for the entire issue of “amateur ornithology”.

    Well done, chaps!

  30. 25

    Sometimes the preamble is limiting. Other times it is not. It all depends on the result the court wants to achieve


  31. 23

    They thought this nectar mixer device was cool and they weren’t offended by the applicants’ behavior.

    I would offer that a more plausible explanation is that the CAFC did not care one way or another about the device and that they were offended by the Office behavior (both Examiner and BPAI).

    The rejections as written and affirmed by the BPAI are even more crappy than this invention.

  32. 22

    If the analysis had instead proceeded on the basis of the preamble always being limiting,

    You are aware, of course, Inviting, that that is an assumption that you simply cannot make, correct?

  33. 21

    The human brain, so I have read, uses more energy than any other organ in the human body. That is why people like to be economical in its use.

    Rigid rules economise on human thought and therefore save energy for lawyers. There are some people who like them, but I don’t.

    Sometimes the preamble is limiting. Other times it is not. It all depends on the circumstances of the case. In this instance there was enough in the claim (not just the preamble) to be limiting – hence the decision. But it should not be assumed for the next case that the preamble will be limiting – the claim and the surrounding circumstances may be different.

    When I think about it inflexible rules make for boring cases.

  34. 20

    This is a great improvement over the court’s prior jurisprudence. Examiners have been more or less free to cite almost anything as rendering a claim obvious. Hopefully, the BPAI will reconsider affirming an examiner’s rejection as obvious when the applicant provides supporting evidence that the fields of endeavor are non-analogous. (Arguing non-analogous art is known to be a losing argument with BPAI).

    Applicants should be able to rely on MPEP 2141.01(a) II which states “While Patent Office classification of references and the cross-references in the official search notes of the class definitions are some evidence of “nonanalogy” or “analogy” respectively, the court has found “the similarities and differences in structure and function of the inventions to carry far greater weight.”

    While this case does not specifically deal with USPTO classifications, the classification evidence is almost always ignored; to the point of “it would have been obvious to cross a chicken with a buffalo to arrive at the claimed invention of buffalo wings.”

    I certainly hope this holding provides some basis to restrain unwarranted obviousness rejections based on far afield references.

  35. 19

    The EPO is (on the whole) predictable as to inventive step. However they are completely random as to added subject matter, the infamous 1.123(2) EPC. So our life in Europe is interesting too!

  36. 18

    Plurality In this case, I can see why the CAFC frowned on the accounting drawer, but I don’t get why the liquid-mixing containers (both the blood plasma and the other one) don’t at least meet the threshold of analogous art.

    They are analogous art. The fact that you are mixing sugar and water is irrelevant. And drawer is perfectly analogous art for the purpose of showing that there was no innovation in the design of the movable divider.

    What you are seeing is the court simply applying the various tests in a way designed to achieve the outcome they desire. They thought this nectar mixer device was cool and they weren’t offended by the applicants’ behavior. So they lent a helping hand.

    I remain quite certain that a thorough search through culinary and laboratory non-patent literature will blow these claims out of the water.

  37. 17

    From the prosecutor’s perspective, sure, you guys could just stay well away from the boundaries if you want, and you would never have to worry about these kinds of questions. You don’t have to go down the garden path, and sure, it probably makes decisions like this somewhat boring.

    On the other hand, examiners see every strategy that prosecutors come up with, and some of those strategies are going to fall really close to whatever boundary the courts have chosen most recently. So, we actually need to worry about the sundry details if we’re going to produce good office actions.

  38. 16

    Your question gets to the essence of why this decision is not interesting:

    IF preamble always limiting,

    Clear limitations = clear statement of field of endeavo(u)r = clear statement of problem to be solved = clear demarcation of analogous art

    That is to say, since in this instance the analogousness decision could easily have been informed simply by the claimed subject-matter (IF the preamble was considered limiting) and have resulted in the very same decision, the answer is a simple one and is uninteresting to consider.

    Let us not get too far down the garden path.

  39. 15

    The other reference (DeSanto) mentions mixing dye solution and hydrogen peroxide for hair rinses, although it also says that it relates more generally to a container that allows the mixing of two liquids when desired.

    I guess my question is this: where do you draw the line between analogous and non-analogous art? What informs that decision – is it based on the claimed subject matter in the application, or the disclosed subject matter? How do claimed statements of intended use affect the determination? What about statements of general applicability in the references in question (boilerplate which virtually every modern patent has in at least one paragraph)?

    In this case, I can see why the CAFC frowned on the accounting drawer, but I don’t get why the liquid-mixing containers (both the blood plasma and the other one) don’t at least meet the threshold of analogous art. It seemed like they were conflating the analogous art threshold with the determination of whether the combined references taught what was claimed, and it also seemed like they were misinterpreting the claim and/or not following BRI.

  40. 14

    If the analysis had instead proceeded on the basis of the preamble always being limiting, the decision would be as simple as dirt, uninteresting, and totally predictable…

    …all good qualities from the perspective of patentees.

    In fact, I venture to say that the issue would never have made it to court, and would never have consumed increasingly scarce public resources.

    I’m sure Malcolm considers this to have been an excellent use of the court’s, and the USPTO’s, time.

    A crappy and confused system is not interesting when the solution is simple, logical, and easy.

    It may be frustrating, convoluted, complex, etc.–but certainly not interesting.

  41. 13

    People are only interested in it to the extent that it exhibits analysis that proceeds from an impoverished and confused paradigm regarding the possibly limiting qualities of the preamble.

    Yeah, that’s probably it.

  42. 12

    Talk about making mountains out of molehills.

    preamble = always limiting

    Clear limitations = clear statement of field of endeavo(u)r = clear statement of problem to be solved

    Preamble limitations cause the field of endeavo(u)r to inhere in the claim.

    If there are none, such as “I claim an article comprising (structural limitations), then field of endeavo(u)r is very wide.

    This is not an interesting decision, although it may prove valuable to some. People are only interested in it to the extent that it exhibits analysis that proceeds from an impoverished and confused paradigm regarding the possibly limiting qualities of the preamble.

    If the decision is being discussed in the abstract (as it is on this board) and not in relation to the alleged obviousness of a specific invention, it would be a better use of people’s time to discuss the fundamental issues embodied in this decision than to discuss the superficial minutae of the mechanics of the decision.

    Sorry, but the discussion is eminently boring.

  43. 11

    The rails are located to 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). — CAFC

    Durn! Now I know why I don’t get any hummers at my feeder, and why the deck has oriole poop all over it.

    Now if I could just find the optimum ratio of tuna guts to herring guts for my penguin feeder.

  44. 9

    If I were drafting this case for Europe, I would do so in distributed format starting with method claims i.e. providing a container, positioning the partition to achieve a given sugar:water ratio for a specific species, filling with sugar one compartment, adding water to the other compartment, removing the partition and mixing to form nectar. I might then add a further claim to introducing the resulting nectar into a feeder. Then the apparatus claims could be to a mixing jug for use in the bove method, comprising [the apparatus features]

    According to the EPO practice on distributed inventions the apparatus claims would be interpreted narrowly with reference to the process features. Even without that format, the ribs are not positined randomly but specifically with refernce to particular volumes for particular ratios of sugar (powdered? granular?) and water. So the fingerprint of the method is to be found in the jug. In answer to your question, I think that the rib positions and their relation to intended use are important technical features.

    As regards the application of Klein to the feeding of kittens and monkeys, the art has changed because Klein made his invention. It could be much harder if not impossible to get a patent for the same structure as a goat or monkey feature. Of course you always have the circumstantial evidence: is Klein a mere paper proposal or has it been put to practical use?

    There is a very interesting decision of the UK IP Office on common general knowledge. In the 1960’s magnetic core storage was part of the common general knowledge in the computer manuafcturing art. Nowadays arguably it is not because core storage is no longer commonplace and the technology is obsolete.

  45. 8

    The difference is that there ARE positive examples in the 2010 Guidelines and there were virtually none in the 2007 Guidelines, so that there has been progress. Unfortunately there are not so many recent examples of good mechanical patents being upheld by the CAFC, but that is beyond the control of the USPTO and depends only on what comes before the courts. It was not possible to achieve a complete balance, but the new Guidelines are arguably better than before.

    If you are a prosecution attorney it is good to filter out the positive examples and see where they lead. I did that in an article for the CIPA Journal in the UK, and found a lot of positive precedents, very notably the recent Rolls-Royce decision in the CAFC.

  46. 7

    Thanks, Paul. That’s an interesting answer. I expected that the EPO would ignore the detailed purpose, to the extent that the details don’t manifest themselves in the technical features. I mean, the purpose of the claimed device is certainly for mixing a fluid and a solute, and there are structural features (leaving aside the poorly drafted claim) that help achieve that effect. I agree completely that a drawer doesn’t provide a very good starting point, given that purpose. There are also features that achieve the effect of variable ratios of fluid to solute. But other than providing some information as to precisely where to put the dividers, are the recitations to birds and butterflies really technical features?

    If we give that much credit to the inventors’ stated purpose, does that disqualify Klein as a reference against my very similar mixing device that is designed to provide the proper ratios to mix formula for premature kittens and monkeys? Are either of our devices really so different from a device designed to separate, pre-specified, quantities of blood and something else, so that these things can be mixed in the right ratio?

    These are serious questions – I’m trying to get a better insight into the inventive step analysis. And thanks again for the article.

  47. 5

    I’ve read them. So please stop the patronizing attitude.

    I’ve also read a lot of criticism of the PTO’s KSR guidelines that they focus too much on providing guidance to examiners on how to reject, and not enough on helping the examiners determine non-obviousness. And I agree with those criticisms.

    But I agree that the new PTO leadership is much better than the hacks who running the place prior to their arrival.

  48. 4

    You obviously have not read the 2010 KSR Guidelines or the previous postings on Patently-O that foreshadowed them.

    Especially under its new leadership the USPTO listens to its customers, and the MPEP itself shows great and sustained attention to developing case law.

  49. 3

    One of the solution mixing packages is concerned with blood products, which is a long way from nectar. I could not find quickly in the decision what the other mixing package does. But who would introduce a person who makes either of those packages to a person who designs and makes makes equipment for nectar feeding of birds and butterflies? It is only with the Infinite Improbability Drive of the Hitchhiker’s Guide to the Galaxy that you can make such an event happen. I don’t think that either of those is a better starting point than an accounting drawer, except to those who reconstruct inventions with hindsight.

  50. 2

    Nice article, Paul. The structure provided by PSA is quite attractive. But I have a question, please. The USPTO’s approach looks quite absurd if we start with the accounting drawer as the closest prior art. But what if we started with the solution-mixing package (with the fixed divider and the removable plug) as the CPA? Do we get a different result?

    Must the secondary reference also be “conceived for the same purpose or aiming at the same objective as the claimed invention,” or is it enough that it “is reasonably pertinent to the particular problem with which the inventor is involved”?

  51. 1

    “Klein provides a counter-example of applicant success that it is hoped will soon find its way into MPEP.”

    Can I interest you in some beachfront property in Nebraska?

Comments are closed.