You Call THAT Prior Art?!
As briefly discussed in my recent article titled Obviousness & USPTO Guidance (click here), a couple of issues relating to prior art have been making news lately. The two prior art topics I’m referring to are (i) the analogous prior art test and (ii) the scope of permissible motivations to combine prior art references. In addition to the recent Guidance, an even more recent decision by the Court of Appeals for the Federal Circuit (CAFC) addresses how these prior art considerations impact obviousness determinations made in U.S. patents and patent applications. So, if obviousness is an issue with one of your issued patents, one of your pending patent applications, or one of your recently-conceived inventions – and I’m guessing that it is - then you may want to continue reading.
What is Prior Art?
Before we dive into the two prior art topics making recent news, let’s take a quick look at what exactly the commonly-used term, “prior art,” means. The statutory definition of prior art[i] is sufficiently complex to merit separate articles focused exclusively on the interpretation of individual terms like “printed publications,” “public use,” “on sale,” “otherwise available to the public.” For its part, the United States Patent and Trademark Office (USPTO) generally characterizes prior art as constituting those references or documents which may be used to determine the novelty and/or non-obviousness of claimed subject matter in a patent application. More specifically, the USPTO describes those references or documents as information known publicly before the effective filing date of a U.S. patent application and including U.S. patents and published patent applications, foreign patents and published patent applications, journal and magazine articles, books, manuals, catalogs, websites, scientific papers, and conference proceedings. It probably comes as no surprise in today’s digital world that prior art may be published either on paper or in electronic format.
Printed Publications
The Analogous Prior Art Test
So, now that we understand the general purpose for which prior art is used, and we have an idea as to what types of subject matter qualify as prior art, we can turn to the question of what subset of prior art can be relied upon to reject claims in a patent application and/or invalidate claims in a previously-allowed patent. One of the filters used to reduce the types of prior art that may be used to reject or invalidate claims is the analogous prior art test. According to the analogous art test, even if a reference or document qualifies as prior art under the statute, it can be relied upon for an obviousness determination only if it would be considered to be “analogous” to the invention at issue by a person having ordinary skill in the art (PHOSITA) to which the invention pertains.
More particularly, under the analogous prior art test, a prior art reference or document may be used to reject or invalidate a patent claim only if it (1) is in the samefieldof endeavor as the inventor’s, OR (2) is reasonably pertinentto the particular problem with which the inventor was involved. The “same field of endeavor” inquiry focuses on the broad scope of the field and not the specific problem being solved. By contrast, under the “reasonably pertinent to the particular problem” inquiry, even though the prior art may be in a different field from that of the inventor’s endeavor, if it is one which logically would have commended itself to an inventor’s attention in considering his problem, then it may be relied upon in an obviousness analysis. A prior art reference that fits into EITHER of these categories is considered analogous art and therefore can be relied upon in an obviousness determination to reject and/or invalidate a claim. The recent Guidance further provides that the flexible approach favored for determining the scope of prior art eligible to be relied upon in obviousness determinations also applies to both of the categories of the analogous art test.
An apple . . .
. . . or an orange?
In the short time since the publication of the recent Guidance, the CAFC has issued a decision addressing the analogous prior art test. In Daedalus Blue LLC v. Vidal,[ii] the court agreed that one of the problems identified in the patent in question (i.e., not allowing a user to automatically select a data storage option from multiple data storage options) was the same as the problem identified in the prior art reference relied upon in the obviousness determination. Thus, under the “reasonably pertinent” inquiry, the CAFC held that the prior art reference qualified as analogous art that was properly relied upon to find the claimed invention obvious in view of the prior art. As an aside, the CAFC did not address the “same field of endeavor” inquiry of the two-part analogous art test because the “reasonably pertinent” inquiry was satisfied.
Motivations to Combine Prior Art
Another critical factor in an obviousness determination is the absence or presence of a motivation to combine the prior art references or documents relied upon for such a determination. The “motivation to combine” inquiry means that even if two or more prior art references or documents are analogous to the claimed invention, they cannot be relied upon to support an obviousness determination unless the references would motivate a PHOSITA to combine them in order to render the claimed invention obvious in view of the combined references or documents.
Motivation to Combine?
According to the recent obviousness Guidance, the scope of permissible motivations to combine prior art references and documents has expanded since the KSR decision by the Supreme Court of the United States.[iii] As noted in the Guidance, the permissible motivations that may be relied upon by a PHOSITA include market forces, design incentives, the interrelated teachings of multiple patents, known needs or problems in a field of endeavor, desires to improve on the prior art, and the background knowledge, creativity, and common sense of the PHOSITA. A PHOSITA may also be properly motivated to combine even when a perceived problem could potentially be addressed in a more advantageous way. Given the broad scope of the permissible motivations to combine prior art references, it is usually advisable to consult with an experienced patent attorney to establish a lack of motivation to combine prior art references in order to overcome an adverse obviousness determination.
If you have any questions about analogous prior art, motivations to combine prior art, or ways in which your patent application specification and claims can be drafted to minimize the risk of being on the wrong side of an obviousness determination, please contact Paul at paul@brightwiselaw.com.
[i] See 35 U.S.C. § 102.
[ii] No. 2023-1313, slip op. at 2 (Fed. Cir. Mar. 13, 2024).
[iii] KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
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