647 F.3d 1343
Fed. Cir.2011Background
- Klein’s 2002 '747 application concerns a nectar mixing device with a movable divider that creates two compartments for sugar and water.
- The device uses rails and a divider to form proportionate volumes (e.g., 1:4 for hummingbird nectar, 1:6 for oriole nectar, 1:9 for butterfly nectar) with mixing after divider removal.
- Claim 21 recites a container with receiving means and a movable divider forming a proportionate compartment that can receive sugar and allow mixing to produce sugar-water nectar.
- The examiner issued five §103(a) rejections (Roberts, O'Connor, Kirkman, Greenspan, De Santo) based on prior art and Klein’s known sugar-water ratios.
- The Board affirmed the rejections, finding the five references analogously applicable to the problem of making a nectar feeder with a movable divider, and Klein appealed.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Are Roberts, O'Connor, Kirkman analogous art? | Klein contends these are not analogous to the nectar problem. | The Board found they are reasonably pertinent to the problem of separating and mixing contents. | Not supported; Roberts, O'Connor, Kirkman not analogous. |
| Are Greenspan and De Santo analogous art? | Klein argues they lack a movable divider and the multiple-ratio mixing focus. | The Board deemed them analogous evidence of mixing components. | Not analogous; no movable divider or multiple ratios. |
| Did the Board improperly sustain obviousness without analogous art? | If five references are not analogous, they cannot render claims obvious. | Even if some references are analogical, the Board’s broader reasoning supported obviousness. | Obviousness rejections cannot stand; reversed and remanded. |
Key Cases Cited
- Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314 (Fed. Cir. 2011) (defines analogous art tests for §103)
- In re Bigio, 381 F.3d 1320 (Fed. Cir. 2004) (two tests for scope of analogous prior art)
- In re Clay, 966 F.2d 656 (Fed. Cir. 1992) (analogous art requires same problem or one reasonably pertinent)
- Graham v. John Deere Co., 383 U.S. 1 (U.S. 1966) (foundation for obviousness with facts and secondary considerations)
- In re Kotzab, 217 F.3d 1365 (Fed. Cir. 2000) (review standard for factual underpinnings of obviousness)
- In re Icon Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007) (analytical framework for substantial evidence review of obviousness and related findings)