data/2100/s2141.html.txt

[
# 2141 Examination Guidelines for Determining Obviousness Under 35 U.S.C.
 103 [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications subject
 to the first inventor to file (FITF) provisions of the AIA except that the relevant date
 is the "effective filing date" of the claimed invention instead of the "time of the
 invention," which is only applicable to applications subject to **[pre-AIA 35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP §
 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*



#### *35 U.S.C. 103  
 Conditions for patentability; non-obvious subject matter*


A patent for a claimed invention may not be obtained,
 notwithstanding that the claimed invention is not identically disclosed as set forth in
 **[section
 102](mpep-9015-appx-l.html#al_d1fbe1_234ed_52)**, if the differences between the claimed invention and the
 prior art are such that the claimed invention as a whole would have been obvious before
 the effective filing date of the claimed invention to a person having ordinary skill in
 the art to which the claimed invention pertains. Patentability shall not be negated by
 the manner in which the invention was made.
 




#### *Pre-AIA 35 U.S.C. 103  
 Conditions for patentability; nonobvious subject matter*


* (a) A patent may not be obtained though the invention
 is not identically disclosed or described as set forth in **[section 102](mpep-9015-appx-l.html#d0e302383)**,
 if the differences between the subject matter sought to be patented and the prior
 art are such that the subject matter as a whole would have been obvious at the
 time the invention was made to a person having ordinary skill in the art to which
 said subject matter pertains. Patentability shall not be negatived by the manner
 in which the invention was made.


\*\*\*\*\*


**EXAMINATION GUIDELINES FOR DETERMINING OBVIOUSNESS UNDER 35 U.S.C. 103**These guidelines are intended to assist Office personnel to make a
 proper determination of obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, and to provide an
 appropriate supporting rationale in view of the decision by the Supreme Court in
 *KSR International Co. v. Teleflex Inc. (KSR),* 550 U.S. 398, 82
 USPQ2d 1385 (2007). The guidelines are based on the Office’s current understanding of
 the law, and are believed to be fully consistent with the binding precedent of the
 Supreme Court. The *KSR* decision reinforced earlier decisions that
 validated a more flexible approach to providing reasons for obviousness. However, the
 Supreme Court’s pronouncement in *KSR* overruled cases such as
 *In re Lee,* 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir. 2002), insofar
 as those cases require record evidence of an express reason to modify the prior art. As
 the Federal Circuit has explained:
 



> 
>  At the time [of the decision in *In re
>  Lee*], we required the PTO to identify record evidence of a teaching,
>  suggestion, or motivation to combine references because "[o]mission of a relevant
>  factor required by precedent is both legal error and arbitrary agency action."
>  However, this did not preclude examiners from employing common sense. More recently
>  [in *DyStar Textilfarben GmbH v. C.H. Patrick Co.,* 464 F.3d 1356,
>  1366 (Fed. Cir. 2006)], we explained that use of common sense does not require a
>  "specific hint or suggestion in a particular reference," only a reasoned explanation
>  that avoids conclusory generalizations.
>  
> 
> 
> 


*Perfect Web Technologies, Inc. v. InfoUSA,
 Inc.,* 587 F.3d 1324, 1329, 92 USPQ2d 1849, 1854 (Fed. Cir. 2009) (citations
 omitted). 
 


In another case, the Federal Circuit also stated
 that:
 



> 
> "… we conclude that while ‘common sense’ can be
>  invoked, even potentially to supply a limitation missing from the prior art, it must
>  still be supported by evidence and a reasoned explanation....[T]his is particularly
>  true where the missing limitation goes to the heart of an invention."
>  
> 
> 
> 


*Arendi v. Apple,* 832 F.3d 1355, 1363,
 119 USPQ2d 1822, 1827 (Fed. Cir. 2016).
 


These guidelines do not constitute substantive rule making and hence do
 not have the force and effect of law. They have been developed as a matter of internal
 Office management and are not intended to create any right or benefit, substantive or
 procedural, enforceable by any party against the Office. Rejections will continue to be
 based upon the substantive law, and it is these rejections that are appealable.
 Consequently, any failure by Office personnel to follow the guidelines is neither
 appealable nor petitionable.
 

**I.** **THE *KSR* DECISION AND PRINCIPLES OF THE LAW OF
 OBVIOUSNESS** The Supreme Court in *KSR* reaffirmed the familiar
 framework for determining obviousness as set forth in *Graham v. John Deere
 Co*., 383 U.S. 1, 148 USPQ 459 (1966), but stated that the Federal
 Circuit had erred by applying the teaching-suggestion-motivation (TSM) test in an
 overly rigid and formalistic way. *KSR,* 550 U.S. at 404, 82 USPQ2d
 at 1391. Specifically, the Supreme Court stated that the Federal Circuit had erred in
 four ways: (1) "by holding that courts and patent examiners should look only to the
 problem the patentee was trying to solve " *(Id.* at 420, 82 USPQ2d
 at 1397); (2) by assuming "that a person of ordinary skill attempting to solve a
 problem will be led only to those elements of prior art designed to solve the same
 problem" *(Id.);* (3) by concluding "that a patent claim cannot be
 proved obvious merely by showing that the combination of elements was ‘obvious to
 try’" *(Id.* at 421, USPQ2d at 1397); and (4) by overemphasizing
 "the risk of courts and patent examiners falling prey to hindsight bias" and as a
 result applying "[r]igid preventative rules that deny factfinders recourse to common
 sense" *(Id.)*. 
 


 In *KSR,* the Supreme Court particularly
 emphasized "the need for caution in granting a patent based on the combination of
 elements found in the prior art,"*Id.* at 415, 82 USPQ2d at 1395,
 and discussed circumstances in which a patent might be determined to be obvious.
 Importantly, the Supreme Court reaffirmed principles based on its precedent that
 "[t]he combination of familiar elements according to known methods is likely to be
 obvious when it does no more than yield predictable results."*Id.*
 at 415-16, 82 USPQ2d at 1395. The Supreme Court stated that there are "[t]hree cases
 decided after *Graham* [that] illustrate this doctrine."
 *Id.*  at 416, 82 USPQ2d at 1395. (1) "In *United States
 v. Adams,* . . . [t]he Court recognized that when a patent claims a
 structure already known in the prior art that is altered by the mere substitution of
 one element for another known in the field, the combination must do more than yield a
 predictable result." *Id.* (2) "In *Anderson’s-Black Rock,
 Inc. v. Pavement Salvage Co.,* . . . [t]he two [pre-existing elements] in
 combination did no more than they would in separate, sequential operation."
 *Id.*  at 416-17, 82 USPQ2d at 1395. (3) "[I]n *Sakraida
 v. AG Pro, Inc.,* the Court derived . . . the conclusion that when a
 patent simply arranges old elements with each performing the same function it had
 been known to perform and yields no more than one would expect from such an
 arrangement, the combination is obvious." *Id.* at 417, 82 USPQ2d at
 1395-96 (Internal quotations omitted.). The principles underlining these cases are
 instructive when the question is whether a patent application claiming the
 combination of elements of prior art would have been obvious. The Supreme Court
 further stated that:
 



> 
>  When a work is available in one field of endeavor, design
>  incentives and other market forces can prompt variations of it, either in the same
>  field or a different one. If a person of ordinary skill can implement a
>  predictable variation, **[§ 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** likely bars its
>  patentability. For the same reason, if a technique has been used to improve one
>  device, and a person of ordinary skill in the art would recognize that it would
>  improve similar devices in the same way, using the technique is obvious unless its
>  actual application is beyond his or her skill. *Id.* at 417, 82
>  USPQ2d at 1396.
>  
> 
> 
> 


 When considering obviousness of a combination of known elements,
 the operative question is thus "whether the improvement is more than the predictable
 use of prior art elements according to their established functions."
 *Id.*


The Supreme Court’s flexible approach to the
 obviousness inquiry is reflected in numerous pre-*KSR* decisions;
 see **[MPEP §
 2144](s2144.html#d0e210576)**. That section provides many lines of reasoning to
 support a determination of obviousness based upon earlier legal precedent that had
 condoned the use of particular examples of what may be considered common sense or
 ordinary routine practice (e.g., making integral, changes in shape, making
 adjustable). Thus, the type of reasoning sanctioned by the opinion in KSR has long
 been part of the patent examination process. 
 

**II.** **THE BASIC FACTUAL INQUIRIES OF *GRAHAM v. JOHN DEERE CO.*** An invention that would have been obvious to a person of ordinary
 skill at the time of the invention is not patentable. See **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** or **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**.  As
 reiterated by the Supreme Court in *KSR,* the framework for the
 objective analysis for determining obviousness under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**
 is stated in *Graham v. John Deere Co.,* 383 U.S. 1, 148 USPQ 459
 (1966). Obviousness is a question of law based on underlying factual inquiries. The
 factual inquiries enunciated by the Court are as follows:
 


* (A) Determining the scope and content of the prior art;
* (B) Ascertaining the differences between the claimed invention and
 the prior art; and
* (C) Resolving the level of ordinary skill in the pertinent
 art.


 Objective evidence relevant to the issue of obviousness must be
 evaluated by Office personnel. *Id.* at 17-18, 148 USPQ at 467. Such
 evidence, sometimes referred to as "secondary considerations," may include evidence
 of commercial success, long-felt but unsolved needs, failure of others, and
 unexpected results. The evidence may be included in the specification as filed,
 accompany the application on filing, or be provided in a timely manner at some other
 point during the prosecution. The weight to be given any objective evidence is made
 on a case-by-case basis. The mere fact that an applicant has presented evidence does
 not mean that the evidence is dispositive of the issue of obviousness.
 


The question of obviousness must be resolved on the basis of the
 factual inquiries set forth above. While each case is different and must be decided
 on its own facts, these factual inquiries, including secondary considerations when
 present, are the controlling inquiries in any obviousness analysis. The
 *Graham* factors were reaffirmed and relied upon by the Supreme
 Court in its consideration and determination of obviousness in the fact situation
 presented in *KSR,* 550 U.S. at 406-07, 82 USPQ2d at 1391 (2007).
 The Supreme Court has utilized the *Graham* factors in each of its
 obviousness decisions since *Graham.* See *Sakraida v. Ag
 Pro, Inc.,* 425 U.S. 273, 189 USPQ 449, *reh’g denied,*
 426 U.S. 955 (1976); *Dann v. Johnston,* 425 U.S. 219, 189 USPQ 257
 (1976); and *Anderson’s-Black Rock, Inc. v. Pavement Salvage Co.,*
 396 U.S. 57, 163 USPQ 673 (1969). As stated by the Supreme Court in
 *KSR,* "While the sequence of these questions might be reordered
 in any particular case, the [*Graham*] factors continue to define
 the inquiry that controls."*KSR,* 550 U.S. at 407, 82 USPQ2d at
 1391. 
 

***Office Personnel As Factfinders*** Office personnel fulfill the critical role of factfinder when
 resolving the *Graham* inquiries. It must be remembered that
 while the ultimate determination of obviousness is a legal conclusion, the
 underlying *Graham* inquiries are factual. When making an
 obviousness rejection, Office personnel must therefore ensure that the written
 record includes findings of fact concerning the state of the art and the teachings
 of the references applied. In certain circumstances, it may also be important to
 include explicit findings as to how a person of ordinary skill would have
 understood prior art teachings, or what a person of ordinary skill would have
 known or could have done. Factual findings made by Office personnel are the
 necessary underpinnings to establish obviousness. 
 


 Once the findings of fact are articulated, Office personnel must
 provide an explanation to support an obviousness rejection under **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**. **[35 U.S.C. 132](mpep-9015-appx-l.html#d0e303187)** requires that
 the applicant be notified of the reasons for the rejection of the claim so that
 the applicant can decide how best to proceed. Clearly setting forth findings of
 fact and the rationale(s) to support a rejection in an Office action leads to the
 prompt resolution of issues pertinent to patentability. 
 


 In short, the focus when making a determination of obviousness
 should be on what a person of ordinary skill in the pertinent art would have known
 at the time of the invention, and on what such a person would have reasonably
 expected to have been able to do in view of that knowledge. This is so regardless
 of whether the source of that knowledge and ability was documentary prior art,
 general knowledge in the art, or common sense. What follows is a discussion of the
 *Graham* factual inquiries. 
 

***A.******Determining the Scope and Content of the Prior Art*** In determining the scope and content of the prior art, Office
 personnel must first obtain a thorough understanding of the invention disclosed
 and claimed in the application under examination by reading the specification,
 including the claims, to understand what has been invented. See
 **[MPEP §
 904](s904.html#d0e115569)**. The scope of the claimed invention must be
 clearly determined by giving the claims the "broadest reasonable interpretation
 consistent with the specification." See *Phillips v. AWH
 Corp.,* 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)
 and **[MPEP
 § 2111](s2111.html#d0e200352)**. Once the scope of the claimed invention is
 determined, Office personnel must then determine what to search for and where
 to search.
 

**1.** **What To Search For:** The search should cover the claimed subject matter and
 should also cover the disclosed features which might reasonably be expected
 to be claimed. See **[MPEP § 904.02](s904.html#d0e115698)**. Although a
 rejection need not be based on a teaching or suggestion to combine, a
 preferred search will be directed to finding references that provide such a
 teaching or suggestion if they exist.
 

**2.** **Where To Search:** Office personnel should continue to follow the general
 search guidelines set forth in **[MPEP § 904](s904.html#d0e115569)** to
 **[§ 904.03](s904.html#d0e115840)** regarding search of the prior art.
 Office personnel are reminded that, for purposes of **[35 U.S.C.
 103](mpep-9015-appx-l.html#d0e302450)**, prior art can be either in the field of
 applicant’s endeavor or be reasonably pertinent to the particular problem
 with which the applicant was concerned. See **[MPEP §
 2141.01(a)](s2141.html#d0e208985)** for a discussion of analogous art.
 Furthermore, prior art that is in a field of endeavor other than that of the
 applicant (as noted by the Court in *KSR,* "[w]hen a work
 is available in one field of endeavor, design incentives and other market
 forces can prompt variations of it, either in the same field or a
 different one," 550 U.S. at 417, 82 USPQ2d at 1396
 (emphasis added)), or solves a problem which is different from that which
 the applicant was trying to solve, may also be considered for the purposes
 of **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**. (The Court in *KSR*
 stated that "[t]he first error…in this case was…holding that courts and
 patent examiners should look only to the problem the patentee was trying to
 solve. The Court of Appeals failed to recognize that the problem motivating
 the patentee may be only one of many addressed by the patent’s subject
 matter…The second error [was]…that a person of ordinary skill attempting to
 solve a problem will be led only to those elements of prior art designed to
 solve the same problem." 550 U.S. at 420, 82 USPQ2d at 1397. Federal Circuit
 case law prior to the Supreme Court’s decision in *KSR* is
 generally in accord with these statements by the *KSR*
 Court. See e.g., *In re Dillon,* 919 F.2d 688, 693, 16
 USPQ2d 1897, 1902 (Fed. Cir. 1990) *(en banc)*
 (
 "[I]t is not necessary in order to
 establish a *prima facie* case of obviousness that both
 a structural similarity between a claimed and prior art compound (or a
 key component of a composition) be shown and that there be a suggestion
 in or expectation from **the prior art** that the claimed
 compound or composition will have the same or a similar utility **as
 one newly discovered by applicant**"
 
 
 ) (emphasis added); *In re Lintner,*
 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972) ("The fact that appellant
 uses sugar for a different purpose does not alter the conclusion that its
 use in a prior art composition would be *prima facie*
 obvious from the purpose disclosed in the references."). 
 


 For a discussion of what constitutes prior art, see
 **[MPEP §
 901](s901.html#d0e110011)** to **[§ 901.06(d)](s901.html#d0e113237)** and
 **[§
 2121](s2121.html#d0e201731)** to **[§ 2129](s2129.html#d0e202844)**. See
 **[MPEP §
 2141.01(a)](s2141.html#d0e208985)** for a discussion of analogous art.
 

***B.******Ascertaining the Differences Between the Claimed Invention and the
 Prior Art*** Ascertaining the differences between the claimed invention
 and the prior art requires interpreting the claim language, see
 **[MPEP §
 2111](s2111.html#d0e200352)**, and considering both the invention and the
 prior art as a whole. See **[MPEP § 2141.02](s2141.html#d0e209106)**. 
 

***C.******Resolving the Level of Ordinary Skill in the Art*** Any obviousness rejection should include, either explicitly
 or implicitly in view of the prior art applied, an indication of the level of
 ordinary skill. A finding as to the level of ordinary skill may be used as a
 partial basis for a resolution of the issue of obviousness.
 


 The person of ordinary skill in the art is a hypothetical
 person who is presumed to have known the relevant art at the time of the
 invention. Factors that may be considered in determining the level of ordinary
 skill in the art may include: (1) "type of problems encountered in the art;"
 (2) "prior art solutions to those problems;" (3) "rapidity with which
 innovations are made;" (4) "sophistication of the technology; and" (5)
 "educational level of active workers in the field." *In re
 GPAC,* 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir. 1995).
 "In a given case, every factor may not be present, and one or more factors may
 predominate." *Id.* See also *Custom Accessories, Inc.
 v. Jeffrey-Allan Indust., Inc.,* 807 F.2d 955, 962, 1 USPQ2d 1196,
 1201 (Fed. Cir. 1986); *Environmental Designs, Ltd. v. Union Oil
 Co.,* 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983). 
 


 "A person of ordinary skill in the art is also a person of
 ordinary creativity, not an automaton."*KSR,* 550 U.S. at 421,
 82 USPQ2d at 1397. "[I]n many cases a person of ordinary skill will be able to
 fit the teachings of multiple patents together like pieces of a
 puzzle."*Id.* at 420, 82 USPQ2d at 1397. Office personnel
 may also take into account "the inferences and creative steps that a person of
 ordinary skill in the art would employ."*Id.* at 418, 82
 USPQ2d at 1396. 
 


 In addition to the factors above, Office personnel may rely
 on their own technical expertise to describe the knowledge and skills of a
 person of ordinary skill in the art. The Federal Circuit has stated that
 examiners and administrative patent judges on the Board are "persons of
 scientific competence in the fields in which they work" and that their findings
 are "informed by their scientific knowledge, as to the meaning of prior art
 references to persons of ordinary skill in the art." *In re
 Berg,* 320 F.3d 1310, 1315, 65 USPQ2d 2003, 2007 (Fed. Cir. 2003).
 In addition, examiners "are assumed to have some expertise in interpreting the
 references and to be familiar from their work with the level of skill in the
 art ." *PowerOasis, Inc. v. T-Mobile USA, Inc.,* 522 F.3d
 1299, 86 USPQ2d 1385 (Fed. Cir. 2008) (quoting *Am. Hoist & Derrick
 Co. v. Sowa & Sons,* 725 F.2d 1350, 1360, 220 USPQ 763, 770
 (Fed. Cir. 1984). See **[MPEP § 2141](s2141.html#d0e208143)** for a discussion
 of the level of ordinary skill. 
 

**III.** **RATIONALES TO SUPPORT REJECTIONS UNDER 35 U.S.C. 103**  Once the *Graham* factual inquiries are resolved,
 Office personnel must determine whether the claimed invention would have been obvious to
 one of ordinary skill in the art. 
 



> 
> The obviousness analysis cannot be confined by . . . overemphasis on
>  the importance of published articles and the explicit content of issued
>  patents. . . . . In many fields it may be that there is little discussion of obvious
>  techniques or combinations, and it often may be the case that market demand, rather
>  than scientific literature, will drive design trends.*KSR,* 550 U.S.
>  at 419, 82 USPQ2d at 1396. 
>  
> 
> 
> 


 Prior art is not limited just to the references being applied, but
 includes the understanding of one of ordinary skill in the art. The prior art reference
 (or references when combined) need not teach or suggest all the claim limitations,
 however, Office personnel must explain why the difference(s) between the prior art and
 the claimed invention would have been obvious to one of ordinary skill in the art. The
 "mere existence of differences between the prior art and an invention does not establish
 the invention’s nonobviousness." *Dann v. Johnston,* 425 U.S. 219, 230,
 189 USPQ 257, 261 (1976). The gap between the prior art and the claimed invention may
 not be "so great as to render the [claim] nonobvious to one reasonably skilled in the
 art." *Id**.* In determining obviousness, neither the particular motivation to
 make the claimed invention nor the problem the inventor is solving controls. The proper
 analysis is whether the claimed invention would have been obvious to one of ordinary
 skill in the art after consideration of all the facts. See **[35 U.S.C.
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)** or **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**. Factors
 other than the disclosures of the cited prior art may provide a basis for concluding
 that it would have been obvious to one of ordinary skill in the art to bridge the gap.
 The rationales discussed below outline reasoning that may be applied to find obviousness
 in such cases.
 


If the search of the prior art and the resolution of the
 *Graham* factual inquiries reveal that an obviousness rejection may
 be made using the familiar teaching-suggestion-motivation (TSM) rationale, then such a
 rejection is appropriate. Although the Supreme Court in *KSR* cautioned
 against an overly rigid application of TSM, it also recognized that TSM was one of a
 number of valid rationales that could be used to determine obviousness. (According to
 the Supreme Court, establishment of the TSM approach to the question of obviousness
 "captured a helpful insight." 550 U.S. at 418, 82 USPQ2d at 1396 (citing *In re
 Bergel,* 292 F.2d 955, 956-57, 130 USPQ 206, 207-208 (1961)). Furthermore,
 the Court explained that "[t]here is no necessary inconsistency between the idea
 underlying the TSM test and the *Graham* analysis." 550 U.S. at 419, 82
 USPQ2d at 1396. The Supreme Court also commented that the Federal Circuit "no doubt has
 applied the test in accord with these principles [set forth in *KSR*]
 in many cases." *Id.* Office personnel should also consider whether one
 or more of the other rationales set forth below support a conclusion of obviousness. The
 Court in *KSR* identified a number of rationales to support a
 conclusion of obviousness which are consistent with the proper "functional approach" to
 the determination of obviousness as laid down in *Graham*.
 *KSR,* 550 U.S. at 415-21, 82 USPQ2d at 1395-97. Note that the list
 of rationales provided below is not intended to be an all-inclusive list. Other
 rationales to support a conclusion of obviousness may be relied upon by Office
 personnel. 
 


The key to supporting any rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** is
 the clear articulation of the reason(s) why the claimed invention would have been
 obvious. The Supreme Court in *KSR* noted that the analysis supporting
 a rejection under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** should be made explicit. The Court quoting *In
 re Kahn,* 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated
 that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements;
 instead, there must be some articulated reasoning with some rational underpinning to
 support the legal conclusion of obviousness.’" *KSR,* 550 U.S. at 418,
 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness
 include: 
 


* (A) Combining prior art elements according to known methods to yield
 predictable results;
* (B) Simple substitution of one known element for another to obtain
 predictable results;
* (C) Use of known technique to improve similar devices (methods, or
 products) in the same way;
* (D) Applying a known technique to a known device (method, or product)
 ready for improvement to yield predictable results;
* (E) "Obvious to try" – choosing from a finite number of identified,
 predictable solutions, with a reasonable expectation of success;
* (F) Known work in one field of endeavor may prompt variations of it
 for use in either the same field or a different one based on design incentives or
 other market forces if the variations are predictable to one of ordinary skill in
 the art;
* (G) Some teaching, suggestion, or motivation in the prior art that
 would have led one of ordinary skill to modify the prior art reference or to
 combine prior art reference teachings to arrive at the claimed invention.


 See **[MPEP § 2143](s2143.html#d0e209516)** for a discussion of the rationales listed above
 along with examples illustrating how the cited rationales may be used to support a
 finding of obviousness. See also **[MPEP § 2144](s2144.html#d0e210576)** - **[§ 2144.09](s2144.html#d0e212153)** for
 additional guidance regarding support for obviousness determinations.
 

**IV.** **APPLICANT’S REPLY**Once Office personnel have established the *Graham*
 factual findings and concluded, in view of the relevant evidence of record at that time,
 that the claimed invention would have been obvious, the burden then shifts to the
 applicant to (A) show that the Office erred in these findings or (B) provide other
 evidence to show that the claimed subject matter would have been nonobvious.
 **[37 CFR
 1.111(b)](mpep-9020-appx-r.html#d0e322449)** requires applicant to distinctly and specifically point
 out the supposed errors in the Office’s action and reply to every ground of objection
 and rejection in the Office action. The reply must present arguments pointing out the
 specific distinction believed to render the claims patentable over any applied
 references. 
 


 If an applicant disagrees with any factual findings by the Office, an
 effective traverse of a rejection based wholly or partially on such findings must
 include a reasoned statement explaining why the applicant believes the Office has erred
 substantively as to the factual findings. A mere statement or argument that the Office
 has not established a *prima facie* case of obviousness or that the
 Office’s reliance on common knowledge is unsupported by documentary evidence will not be
 considered substantively adequate to rebut the rejection or an effective traverse of the
 rejection under **[37 CFR
 1.111(b)](mpep-9020-appx-r.html#d0e322449)**. Office personnel addressing this situation may repeat
 the rejection made in the prior Office action and make the next Office action final. See
 **[MPEP §
 706.07(a)](s706.html#d0e68889)**.
 

**V.** **CONSIDERATION OF APPLICANT’S REBUTTAL EVIDENCE**  Office personnel should consider all rebuttal evidence that is timely
 presented by the applicants when reevaluating any obviousness determination. Rebuttal
 evidence may include evidence of "secondary considerations," such as "commercial
 success, long felt but unsolved needs, [and] failure of others" *(Graham v. John
 Deere Co.,* 383 U.S. at 17, 148 USPQ at 467), and may also include evidence
 of unexpected results. As set forth above, Office personnel must articulate findings of
 fact that support the rationale relied upon in an obviousness rejection. As a result,
 applicants are likely to submit evidence to rebut the fact finding made by Office
 personnel. For example, in the case of a claim to a combination, applicants may submit
 evidence or argument to demonstrate that: 
 


* (A) one of ordinary skill in the art could not have combined the
 claimed elements by known methods (e.g., due to technological difficulties);
* (B) the elements in combination do not merely perform the function
 that each element performs separately; or
* (C) the results of the claimed combination were unexpected.


 Once the applicant has presented rebuttal evidence, Office personnel
 should reconsider any initial obviousness determination in view of the entire record.
 See, e.g., *In re Piasecki,* 745 F.2d 1468, 1472, 223 USPQ 785, 788
 (Fed. Cir. 1984); *In re Eli Lilly & Co.,* 902 F.2d 943, 945, 14
 USPQ2d 1741, 1743 (Fed. Cir. 1990). All the rejections of record and proposed rejections
 and their bases should be reviewed to confirm their continued viability. The Office
 action should clearly communicate the Office’s findings and conclusions, articulating
 how the conclusions are supported by the findings. The procedures set forth in
 **[MPEP §
 706.07(a)](s706.html#d0e68889)** are to be followed in determining whether an action
 may be made final. 
 


See **[MPEP
 § 2145](s2145.html#d0e212553)** concerning consideration of applicant’s rebuttal
 evidence. See also **[MPEP §
 716](s716.html#d0e92085)** to **[§ 716.10](s716.html#d0e93797)** regarding affidavits or
 declarations filed under **[37 CFR 1.132](mpep-9020-appx-r.html#d0e323552)** for purposes of
 traversing grounds of rejection. 
 



# 2141.01 Scope and Content of the Prior Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time the invention was made," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C.
 103**"Before answering *Graham’s* ‘content’ inquiry, it
 must be known whether a patent or publication is in the prior art under
 **[35 U.S.C. §
 102](mpep-9015-appx-l.html#d0e302383)**." *Panduit Corp. v. Dennison Mfg. Co.,*
 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), *cert.
 denied,* 481 U.S. 1052 (1987). Subject matter that is prior art under
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** can be used to support a rejection under **[section
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. *Ex parte Andresen,* 212 USPQ 100, 102
 (Bd. Pat. App. & Inter. 1981) ("it appears to us that the commentator [of 35
 U.S.C.A.] and the [congressional] committee viewed **[section 103](mpep-9015-appx-l.html#d0e302450)** as
 including all of the various bars to a patent as set forth in **[section 102](mpep-9015-appx-l.html#d0e302383)**."). 
 


Furthermore, admitted prior art can be relied upon for both
 anticipation and obviousness determinations, regardless of whether the admitted prior
 art would otherwise qualify as prior art under the statutory categories of
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)**. *Riverwood Int’l Corp. v. R.A. Jones &
 Co.,* 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003);
 *Constant v. Advanced Micro-Devices Inc.,* 848 F.2d 1560, 1570, 7
 USPQ2d 1057, 1063 (Fed. Cir. 1988). See **[MPEP § 2129](s2129.html#d0e202844)** for discussion of
 admissions as prior art.
 


A **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** rejection is based on **[35 U.S.C. 102(a)(1) or
 (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**,
 **[102(b)](mpep-9015-appx-l.html#d0e302395)**, **[102(e)](mpep-9015-appx-l.html#d0e302407)**, etc. depending on the
 type of prior art reference used and its publication or issue date. For instance, an
 obviousness rejection over a U.S. patent which was issued more than 1 year before the
 filing date of the application subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** is said to
 be a statutory bar just as if it anticipated the claims under **[pre-AIA 35 U.S.C.
 102(b)](mpep-9015-appx-l.html#d0e302395)**. Analogously, an obviousness rejection based on a
 publication which would be applied under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** if it
 anticipated the claims can be overcome by swearing behind the publication date of the
 reference by filing an affidavit or declaration under **[37 CFR
 1.131](mpep-9020-appx-r.html#aia_d0e323504)**.
 


For an overview of what constitutes prior art under
 **[35 U.S.C.
 102,](mpep-9015-appx-l.html#d0e302383)** see **[MPEP § 901](s901.html#d0e110011)** - **[§ 901.06(d)](s901.html#d0e113539)**,
 **[§ 2121](s2121.html#d0e201731)** - **[§ 2129](s2129.html#d0e202844)** and **[§
 2151](s2151.html#ch2100_d2002f_22873_3d8)** - **[§ 2155](s2155.html#ch2100_d20034_16784_56)**.
 

**II.** **SUBSTANTIVE CONTENT OF THE PRIOR ART**See **[MPEP § 2121](s2121.html#d0e201731)** - **[§ 2129](s2129.html#d0e202844)** for case law relating to the
 substantive content of the prior art (e.g., availability of inoperative devices,
 extent to which prior art must be enabling, broad disclosure rather than preferred
 embodiments, admissions, etc.).
 

**III.** **CONTENT OF THE PRIOR ART IS DETERMINED AT THE TIME THE INVENTION WAS MADE TO
 AVOID HINDSIGHT**The **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**
 requirement "at the time the invention was made" is to avoid impermissible hindsight.
 See **[MPEP §
 2145](s2145.html#d0e212553)**, subsection X.A. for a discussion of rebutting
 applicants’ arguments that a rejection is based on hindsight.
 


"It is difficult but necessary that the decisionmaker forget what he
 or she has been taught . . . about the claimed invention and cast the mind back to
 the time the invention was made (often as here many years), to occupy the mind of one
 skilled in the art. ..." *W.L. Gore & Associates, Inc. v. Garlock,
 Inc.,* 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983),
 *cert. denied,* 469 U.S. 851 (1984). 
 

**IV.** **PRE-AIA 35 U.S.C. 103(c) — EVIDENCE REQUIRED TO SHOW CONDITIONS OF PRE-AIA 35
 U.S.C. 103(c) APPLY**An applicant subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** who wants
 to avail himself or herself of the benefits of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** has the
 burden of establishing that subject matter which only qualifies as prior art under
 subsection (e), (f) or (g) of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** used in a
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** and the claimed invention were, at
 the time the invention was made, owned by the same person or subject to an obligation
 of assignment to the same person. *Ex parte Yoshino,* 227 USPQ 52
 (Bd. Pat. App. & Inter. 1985). Likewise, an applicant who wants to avail himself
 or herself of the benefits of the joint research provisions of **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)** (for applications pending on or after December 10, 2004)
 has the burden of establishing that:
 


* (A) the claimed invention was made by or on behalf of parties to a
 joint research agreement that was in effect on or before the date the claimed
 invention was made;
* (B) the claimed invention was made as a result of activities
 undertaken within the scope of the joint research agreement; and
* (C) the application for patent for the claimed invention discloses
 or is amended to disclose the names of the parties to the joint research
 agreement.


This prior art disqualification is only applicable for subject
 matter which only qualifies as prior art under subsection (e), (f) or (g) of
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** used in a rejection under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 


Note that for applications filed prior to November 29, 1999, and
 granted as patents prior to December 10, 2004,
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** is limited on its face to subject matter
 developed by another person which qualifies as prior art only under subsection (f) or
 (g) of **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP §
 2146.01](s2146.html#ch2100_d2c184_126fa_f3)**. See also *In re Bartfeld,* 925
 F.2d 1450, 1453-54, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991) (Applicant attempted to
 overcome a **[pre-AIA
 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)** rejection with a terminal
 disclaimer by alleging that the public policy intent of **[pre-AIA 35 U.S.C
 103(c)](mpep-9015-appx-l.html#d0e302450)** was to prohibit the use of "secret" prior art in
 obviousness determinations. The court rejected this argument, holding "We may not
 disregard the unambiguous exclusion of **[§ 102(e)](mpep-9015-appx-l.html#d0e302407)** from the statute’s
 purview.").
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** for the requirements
 which must be met to establish common ownership or a joint research agreement.
 



# 2141.01(a) Analogous and Nonanalogous Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of
 the "time of the invention," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR
 ART**In order for a reference to be proper for use in an obviousness
 rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** , the reference must be analogous art to the
 claimed invention. *In re Bigio,* 381 F.3d 1320, 1325, 72 USPQ2d
 1209, 1212 (Fed. Cir. 2004). The examiner must determine what is "analogous prior
 art" for the purpose of analyzing the obviousness of the subject matter at issue.
 "Under the correct analysis, any need or problem known in the field of endeavor at
 the time of the invention and addressed by the patent [or application at issue]
 can provide a reason for combining the elements in the manner claimed. "
 *KSR Int'l Co. v. Teleflex Inc.,* 550 U.S. 398, 420, 82 USPQ2d
 1385, 1397 (2007). This does not require that the reference be from the same field
 of endeavor as the claimed invention, in light of the Supreme Court's instruction
 that 
 "[w]hen a work is available in one field of endeavor,
 design incentives and other market forces can prompt variations of it, either
 in the same field or a different one."
 
 
 *Id.* at 417, 82 USPQ2d 1396. Rather, a reference is analogous
 art to the claimed invention if: (1) the reference is from the same field of
 endeavor as the claimed invention (even if it addresses a different problem); or
 (2) the reference is reasonably pertinent to the problem faced by the inventor
 (even if it is not in the same field of endeavor as the claimed invention). See
 *Bigio,* 381 F.3d at 1325, 72 USPQ2d at 1212.
 


In order for a reference to be "reasonably pertinent"
 to the problem, it must 
 "logically [] have commended itself to
 an inventor's attention in considering his problem. "
 
 
 *In re ICON Health and Fitness, Inc.,* 496 F.3d 1374, 1379-80
 (Fed. Cir. 2007) (quoting *In re Clay,* 966 F.2d 656,658, 23
 USPQ2d 1058, 1061 (Fed. Cir. 1992)). *In re Klein,* 647 F.3d
 1343, 98 USPQ2d 1991 (Fed. Cir. 2011) is instructive as to the "reasonably
 pertinent" prong for determining whether a reference is analogous art. In
 determining whether a reference is reasonably pertinent, an examiner should
 consider the problem faced by the inventor, as reflected - either explicitly or
 implicitly - in the specification. In order to support a determination that a
 reference is reasonably pertinent, it may be appropriate to include a statement of
 the examiner's understanding of the problem. The question of whether a reference
 is reasonably pertinent often turns on how the problem to be solved is perceived.
 If the problem to be solved is viewed in a narrow or constrained way, and such a
 view is not consistent with the specification, the scope of available prior art
 may be inappropriately limited. It may be necessary for the examiner to explain
 why an inventor seeking to solve the identified problem would have looked to the
 reference in an attempt to find a solution to the problem, i.e., factual reasons
 why the prior art is pertinent to the identified problem. 
 


Any argument by the applicant that the examiner has
 misconstrued the problem to be solved, and as a result has improperly relied on
 nonanalogous art, should be fully considered in light of the specification. In
 evaluating the applicant's argument, the examiner should look to the teachings of
 the specification and the inferences that would reasonably have been drawn from
 the specification by a person of ordinary skill in the art as a guide to
 understanding the problem to be solved. A prior art reference not in the same
 field of endeavor as the claimed invention must be reasonably pertinent to the
 problem to be solved in order to qualify as analogous art and be applied in an
 obviousness rejection.
 

**II.** **CONSIDER SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION** 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." *In re Ellis,* 476 F.2d 1370, 1372, 177 USPQ
 526, 527 (CCPA 1973) (The structural similarities and functional overlap between
 the structural gratings shown by one reference and the shoe scrapers of the type
 shown by another reference were readily apparent, and therefore the arts to which
 the reference patents belonged were reasonably pertinent to the art with which
 appellant’s invention dealt (pedestrian floor gratings).).
 

**III.** **ANALOGY IN THE CHEMICAL ARTS**Examples of analogous art in the chemical arts include:
 *Ex parte Bland,* 3 USPQ2d 1103 (Bd. Pat App. & Inter.
 1986) (Claims were drawn to a particulate composition useful as a preservative for
 an animal foodstuff (or a method of inhibiting fungus growth in an animal
 foodstuff therewith) comprising verxite having absorbed thereon propionic acid.
 All references were concerned with absorbing biologically active materials on
 carriers, and therefore the teachings in each of the various references would have
 been pertinent to the problems in the other references and the invention at
 hand.); *Stratoflex, Inc. v. Aeroquip Corp.,* 713 F.2d 1530, 218
 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing
 electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow while
 precluding leakage of fuel. Two prior art references relied upon were in the
 rubber hose art, both referencing the problem of electrostatic buildup caused by
 fuel flow. The court found that because PTFE and rubber are used by the same hose
 manufacturers and experience the same and similar problems, a solution found for a
 problem experienced with either PTFE or rubber hosing would be looked to when
 facing a problem with the other.); *In re Mlot-Fijalkowski,* 676
 F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by appellant was enhancement and
 immobilization of dye penetrant indications. References which taught the use of
 dyes and finely divided developer materials to produce colored images preferably
 in, but not limited to, the duplicating paper art were properly relied upon
 because the court found that appellant’s problem was one of dye chemistry, and a
 search for its solution would include the dye arts in general.).
 

**IV.** **ANALOGY IN THE MECHANICAL ARTS**Examples of analogous art in the mechanical arts include:
 *Stevenson v. Int'l Trade Comm.,* 612 F.2d 546, 550, 204 USPQ
 276, 280 (CCPA 1979) ("In a simple mechanical invention a broad spectrum of prior
 art must be explored and it is reasonable to permit inquiry into other areas where
 one of ordinary skill in the art would be aware that similar problems exist.").
 See also *In re Bigio,* 381 F.3d 1320, 1325-26, 72 USPQ2d 1209,
 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a
 specific bristle configuration. The Board affirmed the examiner’s rejection of the
 claims as being obvious in view of prior art patents disclosing toothbrushes.
 *Id.* at 1323, 72 USPQ2d at 1210. The applicant disputed that
 the patent references constituted analogous art. On appeal, the court upheld the
 Board’s interpretation of the claim term "hair brush" to encompass any brush that
 may be used for any bodily hair, including facial hair. *Id.* at
 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the
 "field of endeavor test" for analogous art and determined that the references were
 within the field of applicant’s endeavor and hence was analogous art because
 toothbrushes are structurally similar to small brushes for hair, and a toothbrush
 could be used to brush facial hair. *Id.* at 1326, 72 USPQ2d at
 1212.
 


Also see *In re Deminski,* 796 F.2d 436, 230
 USPQ 313 (Fed. Cir. 1986) (Applicant’s claims related to double-acting high
 pressure gas transmission line compressors in which the valves could be removed
 easily for replacement. The Board relied upon references which taught either a
 double-acting piston pump or a double-acting piston compressor. The court agreed
 that since the cited pumps and compressors have essentially the same function and
 structure, the field of endeavor includes both types of double-action piston
 devices for moving fluids.); *Pentec, Inc. v. Graphic Controls
 Corp.,* 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue
 were directed to an instrument marker pen body, the improvement comprising a pen
 arm holding means having an integrally molded hinged member for folding over
 against the pen body. Although the patent owners argued the hinge and fastener art
 was nonanalogous, the court held that the problem confronting the inventor was the
 need for a simple holding means to enable frequent, secure attachment and easy
 removal of a marker pen to and from a pen arm, and one skilled in the pen art
 trying to solve that problem would have looked to the fastener and hinge art.);
 and *Ex parte Goodyear Tire & Rubber Co.,* 230 USPQ 357 (Bd.
 Pat. App. & Inter. 1985) (A reference in the clutch art was held reasonably
 pertinent to the friction problem faced by applicant, whose claims were directed
 to a braking material, because brakes and clutches utilize interfacing materials
 to accomplish their respective purposes.).
 

**V.** **ANALOGY IN THE ELECTRICAL ARTS**See, for example, *Medtronic, Inc. v. Cardiac
 Pacemakers,* 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) (Patent
 claims were drawn to a cardiac pacemaker which comprised, among other components,
 a runaway inhibitor means for preventing a pacemaker malfunction from causing
 pulses to be applied at too high a frequency rate. Two references disclosed
 circuits used in high power, high frequency devices which inhibited the runaway of
 pulses from a pulse source. The court held that one of ordinary skill in the
 pacemaker designer art faced with a rate-limiting problem would look to the
 solutions of others faced with rate limiting problems, and therefore the
 references were in an analogous art.).
 

**VI.** **EXAMPLES OF ANALOGY IN THE DESIGN ARTS**See **[MPEP § 1504.03](s1504.html#d0e154792)** for a discussion
 of the relevant case law setting forth the general requirements for analogous art
 in design applications.
 


For examples of analogy in the design arts, see *In re
 Rosen,* 673 F.2d 388, 213 USPQ 347 (CCPA 1982) (The design at issue
 was a coffee table of contemporary styling. The court held designs of contemporary
 furniture other than coffee tables, such as the desk and circular glass table top
 designs of the references relied upon, would reasonably fall within the scope of
 the knowledge of the designer of ordinary skill.); *Ex parte
 Pappas,* 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) (At issue
 was an ornamental design for a feed bunk with an inclined corner configuration.
 Examiner relied upon references to a bunk lacking the inclined corners claimed by
 appellant and the *Architectural Precast Concrete Drafting
 Handbook.* The Board found the *Architectural Precast Concrete
 Drafting Handbook* was analogous art, noting that a bunk may be a wood
 or concrete trough, and that both references relied upon "disclose structures in
 which at least one upstanding leg is generally perpendicular to a base portion to
 define a corner configuration between the leg and base portion."); *In re
 Butera,* 1 F.3d 1252, 28 USPQ2d 1399, 1400 (Fed. Cir. 1993)
 (unpublished - not citable as precedent) (The claimed invention, a spherical
 design for a combined insect repellent and air freshener, was rejected by the
 Board as obvious over a single reference to a design for a metal ball anode. The
 court reversed, holding the reference design to be nonanalogous art. "A prior
 design is of the type claimed if it has the same general use as that claimed in
 the design patent application . . . . One designing a combined insect repellent
 and air freshener would therefore not have reason to know of or look to a design
 for a metal ball anode."). 
 





# 2141.02 Differences Between Prior Art and Claimed Invention [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time the invention was made," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*


Ascertaining the differences between the prior art and the claims at
 issue requires interpreting the claim language, and considering both the invention and
 the prior art references as a whole. See **[MPEP § 2111](s2111.html#d0e200352)** - **[§ 2116.01](s2116.html#d0e201660)** for case
 law pertaining to claim interpretation. See also **[MPEP § 2143.03](s2143.html#d0e210501)** for examples of types of
 claim language that may raise a question as to its limiting effect.
 

**I.** **THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED**In determining the differences between the prior art and the claims,
 the question under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** is not whether the differences
 themselves would have been obvious, but whether the claimed
 invention as a whole would have been obvious.
 *Stratoflex, Inc. v. Aeroquip Corp.,* 713 F.2d 1530, 218 USPQ 871
 (Fed. Cir. 1983); *Schenck v. Nortron Corp.,* 713 F.2d 782, 218 USPQ
 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a
 hard-bearing wheel balancer) comprising a holding structure, a base structure, and a
 supporting means which form "a single integral and gaplessly continuous piece."
 *Nortron* argued the invention is just making integral what had
 been made in four bolted pieces, improperly limiting the focus to a structural
 difference from the prior art and failing to consider the invention as a whole. The
 prior art perceived a need for mechanisms to dampen resonance, whereas the inventor
 eliminated the need for dampening via the one-piece gapless support structure.
 "Because that insight was contrary to the understandings and expectations of the art,
 the structure effectuating it would not have been obvious to those skilled in the
 art." 713 F.2d at 785, 218 USPQ at 700 (citations omitted).).
 


See also *In re Hirao,* 535 F.2d 67, 190 USPQ 15
 (CCPA 1976) (Claims were directed to a three step process for preparing sweetened
 foods and drinks. The first two steps were directed to a process of producing high
 purity maltose (the sweetener), and the third was directed to adding the maltose to
 foods and drinks. The parties agreed that the first two steps were nonobvious but
 formed a known product and the third step was obvious. The Solicitor argued the
 preamble was directed to a process for preparing foods and drinks sweetened mildly
 and thus the specific method of making the high purity maltose (the first two steps
 in the claimed process) should not be given weight, analogizing with
 product-by-process claims. The court disagreed and held "due to the admitted
 unobviousness of the first two steps of the claimed combination of steps, the subject
 matter as a whole would not have been obvious to one of
 ordinary skill in the art at the time the invention was made." 535 F.2d at 69, 190
 USPQ at 17 (emphasis in original). The preamble only recited the purpose of the
 process and did not limit the body of the claim. Therefore, the claimed process was a
 three step process, not the product formed by two steps of the process or the third
 step of using that product.). 
 

**II.** **DISTILLING THE INVENTION DOWN TO A "GIST" OR "THRUST" OF AN INVENTION
 DISREGARDS "AS A WHOLE" REQUIREMENT**Distilling an invention down to the "gist" or "thrust" of an
 invention disregards the requirement of analyzing the subject matter "as a whole."
 *W.L. Gore & Assoc., Inc. v. Garlock, Inc.,* 721 F.2d 1540,
 220 USPQ 303 (Fed. Cir. 1983), *cert. denied,* 469 U.S. 851 (1984)
 (restricting consideration of the claims to a 10% per second rate of stretching of
 unsintered PTFE and disregarding other limitations resulted in treating claims as
 though they read differently than allowed); *Bausch & Lomb v.**Barnes-Hind/Hydrocurve, Inc.,* 796 F.2d 443, 447-49, 230 USPQ 416,
 419-20 (Fed. Cir. 1986), *cert. denied,* 484 U.S. 823 (1987)
 (District court focused on the "concept of forming ridgeless depressions having
 smooth rounded edges using a laser beam to vaporize the material," but "disregarded
 express limitations that the product be an ophthalmic lens formed of a transparent
 cross-linked polymer and that the laser marks be surrounded by a smooth surface of
 unsublimated polymer."). See also *Jones v. Hardy,* 727 F.2d 1524,
 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) ("treating the advantage as the invention
 disregards statutory requirement that the invention be viewed ‘as a whole’");
 *Panduit Corp. v. Dennison Mfg. Co.,* 810 F.2d 1561, 1 USPQ2d
 1593 (Fed. Cir. 1987), *cert. denied,* 481 U.S. 1052 (1987)
 (district court improperly distilled claims down to a one word solution to a
 problem).
 

**III.** **DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF "AS A WHOLE" INQUIRY**"[A] patentable invention may lie in the discovery of the source of
 a problem even though the remedy may be obvious once the source of the problem is
 identified. This is part of the ‘subject matter as a whole’
 which should always be considered in determining the obviousness of an invention
 under **[35 U.S.C. §
 103](mpep-9015-appx-l.html#d0e302450)**." *In re Sponnoble,* 405 F.2d 578, 585,
 160 USPQ 237, 243 (CCPA 1969). However, "discovery of the cause of a problem . . does
 not always result in a patentable invention. . . . [A] different situation exists
 where the solution is obvious from prior art which contains the same
 solution for a similar problem." *In re Wiseman,* 596
 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (emphasis in original). 
 


In *In re Sponnoble,* the claim was directed to a
 plural compartment mixing vial wherein a center seal plug was placed between two
 compartments for temporarily isolating a liquid-containing compartment from a
 solids-containing compartment. The claim differed from the prior art in the selection
 of butyl rubber with a silicone coating as the plug material instead of natural
 rubber. The prior art recognized that leakage from the liquid to the solids
 compartment was a problem, and considered the problem to be a result of moisture
 passing around the center plug because of microscopic fissures
 inherently present in molded or blown glass. The court found the inventor discovered
 the cause of moisture transmission was through the center
 plug, and there was no teaching in the prior art which would suggest the necessity of
 selecting applicant's plug material which was more impervious to liquids than the
 natural rubber plug of the prior art.
 


In *In re Wiseman,* 596 F.2d at 1022, 201 USPQ at
 661, claims directed to grooved carbon disc brakes wherein the grooves were provided
 to vent steam or vapor during a braking action to minimize fading of the brakes were
 rejected as obvious over a reference showing carbon disc brakes without grooves in
 combination with a reference showing grooves in noncarbon disc brakes for the purpose
 of cooling the faces of the braking members and eliminating dust, thereby reducing
 fading of the brakes. The court affirmed the rejection, holding that even if the
 inventor discovered the cause of a problem, the solution would have been obvious from
 the prior art which contained the same solution (inserting grooves in disc brakes)
 for a similar problem.
 

**IV.** **APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST PROVIDE
 SUBSTANTIATING EVIDENCE**Applicants who allege the inventor discovered the source of a
 problem must provide evidence substantiating the allegation, either by way of
 affidavits or declarations, or by way of a clear and persuasive assertion in the
 specification. *In re Wiseman,* 596 F.2d 1019, 201 USPQ 658 (CCPA
 1979) (unsubstantiated statement of counsel was insufficient to show appellants
 discovered source of the problem); *In re Kaslow,* 707 F.2d 1366,
 217 USPQ 1089 (Fed. Cir. 1983) (Claims were directed to a method for redeeming
 merchandising coupons which contain a UPC "5-by-5" bar code wherein, among other
 steps, the memory at each supermarket would identify coupons by manufacturer and
 transmit the data to a central computer to provide an audit thereby eliminating the
 need for clearinghouses and preventing retailer fraud. In challenging the propriety
 of an obviousness rejection, appellant argued he discovered the source of a problem
 (retailer fraud and manual clearinghouse operations) and its solution. The court
 found appellant’s specification did not support the argument that he discovered the
 source of the problem with respect to retailer fraud, and that the claimed invention
 failed to solve the problem of manual clearinghouse operations.).
 

**V.** **DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY**"In determining whether the invention as a whole would have been
 obvious under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, we must first delineate the invention as a whole.
 In delineating the invention as a whole, we look not only to the subject matter which
 is literally recited in the claim in question... but also to those properties of the
 subject matter which are inherent in the subject matter *and* are
 disclosed in the specification. . . Just as we look to a chemical and its properties
 when we examine the obviousness of a composition of matter claim, it is this
 invention *as a whole,* and not some part of it, which must be
 obvious under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**." *In re Antonie,* 559 F.2d 618,
 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed
 wastewater treatment device had a tank volume to contactor area of 0.12 gal./sq. ft.
 The court found the invention as a whole was the ratio of 0.12 and its inherent
 property that the claimed devices maximized treatment capacity regardless of other
 variables in the devices. The prior art did not recognize that treatment capacity was
 a function of the tank volume to contactor ratio, and therefore the parameter
 optimized was not recognized in the art to be a result-effective variable.). See also
 *In re Papesch,* 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963)
 ("From the standpoint of patent law, a compound and all its properties are
 inseparable.").
 


Obviousness cannot be predicated on what is not known at the time an
 invention is made, even if the inherency of a certain feature is later established.
 *In re Rijckaert,* 9 F.3d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993).
 See **[MPEP §
 2112](s2112.html#d0e201036)** for the requirements of rejections based on
 inherency.
 

**VI.** **PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH
 AWAY FROM THE CLAIMS**A prior art reference must be considered in its entirety, i.e., as a
 whole, including portions that would lead away from the
 claimed invention. *W.L. Gore & Assoc., Inc. v. Garlock, Inc.,*
 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), *cert. denied,* 469
 U.S. 851 (1984) (Claims were directed to a process of producing a porous article by
 expanding shaped, unsintered, highly crystalline poly(tetrafluoroethylene) (PTFE) by
 stretching said PTFE at a 10% per second rate to more than five times the original
 length. The prior art teachings with regard to unsintered PTFE indicated the material
 does not respond to conventional plastics processing, and the material should be
 stretched slowly. A reference teaching rapid stretching of conventional plastic
 polypropylene with reduced crystallinity combined with a reference teaching
 stretching unsintered PTFE would not suggest rapid stretching of highly crystalline
 PTFE, in light of the disclosures in the art that teach away from the invention,
 i.e., that the conventional polypropylene should have reduced crystallinity before
 stretching, and that PTFE should be stretched slowly). *Allied Erecting v.
 Genesis Attachments,* 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed.
 Cir. 2016) ("Although modification of the movable blades may impede the quick change
 functionality disclosed by Caterpillar, ‘[a] given course of action often has
 simultaneous advantages and disadvantages, and this does not necessarily obviate
 motivation to combine.’" (quoting *Medichem, S.A. v. Rolabo, S.L.,*
 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))).
 


However, "the prior art’s mere disclosure of more than one
 alternative does not constitute a teaching away from any of these alternatives
 because such disclosure does not criticize, discredit, or otherwise discourage the
 solution claimed…." *In re Fulton,* 391 F.3d 1195, 1201, 73 USPQ2d
 1141, 1146 (Fed. Cir. 2004). See also **[MPEP § 2123](s2123.html#d0e202024)**.
 




# 2141.03 Level of Ordinary Skill in the Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time of the invention" or "time the invention was made," which are only applicable
 to applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL**The person of ordinary skill in the art is a hypothetical person who
 is presumed to have known the relevant art at the time of the invention. Factors that
 may be considered in determining the level of ordinary skill in the art may include:
 (A) "type of problems encountered in the art;" (B) "prior art solutions to those
 problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the
 technology; and" (E) "educational level of active workers in the field. In a given
 case, every factor may not be present, and one or more factors may predominate."
 *In re GPAC,* 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir.
 1995); *Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,* 807
 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 ); *Environmental Designs,
 Ltd. V. Union Oil Co.,* 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir.
 1983). 
 


 "A person of ordinary skill in the art is also a person of ordinary
 creativity, not an automaton." *KSR Int'l Co. v. Teleflex Inc.,* 550
 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary
 skill will be able to fit the teachings of multiple patents together like pieces of a
 puzzle."  *Id.* at 420, 82 USPQ2d 1397. Office personnel may also
 take into account "the inferences and creative steps that a person of ordinary skill
 in the art would employ." *Id.* at 418, 82 USPQ2d at 1396. 
 


The "hypothetical ‘person having ordinary skill in the art’ to which
 the claimed subject matter pertains would, of necessity have the capability of
 understanding the scientific and engineering principles applicable to the pertinent
 art." *Ex parte Hiyamizu,* 10 USPQ2d 1393, 1394 (Bd. Pat. App. &
 Inter. 1988) (The Board disagreed with the examiner’s definition of one of ordinary
 skill in the art (a doctorate level engineer or scientist working at least 40 hours
 per week in semiconductor research or development), finding that the hypothetical
 person is not definable by way of credentials, and that the evidence in the
 application did not support the conclusion that such a person would require a
 doctorate or equivalent knowledge in science or engineering.). 
 


References which do not qualify as prior art because they postdate
 the claimed invention may be relied upon to show the level of ordinary skill in the
 art at or around the time the invention was made. *Ex parte Erlich,*
 22 USPQ 1463, 1465 (Bd. Pat. App. & Inter. 1992). See also *Thomas &
 Betts Corp. v. Litton Sys., Inc.,* 720 F.2d 1572, 1581, 220 USPQ 1, 7
 (Fed. Cir. 1983) ("Thus, the [unpublished internal materials], though not technically
 prior art, were, in effect, properly used as indicators of the level of ordinary
 skill in the art to which the invention pertained."). Moreover, documents not
 available as prior art because the documents were not widely disseminated may be used
 to demonstrate the level of ordinary skill in the art. For example, the document may
 be relevant to establishing "a motivation to combine which is implicit in the
 knowledge of one of ordinary skill in the art." *Nat'l Steel Car, Ltd. v.
 Can. Pac. Ry., Ltd.,* 357 F.3d 1319, 1338, 69 USPQ2d 1641, 1656 (Fed.
 Cir. 2004) (holding that a drawing made by an engineer that was not prior art can,
 nonetheless, "... be used to demonstrate a motivation to combine implicit in the
 knowledge of one of ordinary skill in the art").
 

**II.** **SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY WHERE THE PRIOR ART
 ITSELF REFLECTS AN APPROPRIATE LEVEL**If the only facts of record pertaining to the level of skill in the
 art are found within the prior art of record, the court has held that an invention
 may be held to have been obvious without a specific finding of a particular level of
 skill where the prior art itself reflects an appropriate level. *Chore-Time
 Equipment, Inc. v. Cumberland Corp.,* 713 F.2d 774, 218 USPQ 673 (Fed.
 Cir. 1983). See also *Okajima v. Bourdeau,* 261 F.3d 1350, 1355, 59
 USPQ2d 1795, 1797 (Fed. Cir. 2001).
 

**III.** **ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO MAINTAIN
 OBJECTIVITY**"The importance of resolving the level of ordinary skill in the art
 lies in the necessity of maintaining objectivity in the obviousness inquiry."
 *Ryko Mfg. Co. v. Nu-Star, Inc.,* 950 F.2d 714, 718, 21 USPQ2d
 1053, 1057 (Fed. Cir. 1991). The examiner must ascertain what would have been obvious
 to one of ordinary skill in the art at the time the invention was made, and not to
 the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the
 art at hand. *Environmental Designs, Ltd. v. Union Oil Co.,* 713
 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), *cert. denied,* 464 U.S.
 1043 (1984). 
 



[[top]](#top)


, 
# 2141.01 Scope and Content of the Prior Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time the invention was made," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **PRIOR ART AVAILABLE UNDER 35 U.S.C. 102 IS AVAILABLE UNDER 35 U.S.C.
 103**"Before answering *Graham’s* ‘content’ inquiry, it
 must be known whether a patent or publication is in the prior art under
 **[35 U.S.C. §
 102](mpep-9015-appx-l.html#d0e302383)**." *Panduit Corp. v. Dennison Mfg. Co.,*
 810 F.2d 1561, 1568, 1 USPQ2d 1593, 1597 (Fed. Cir.), *cert.
 denied,* 481 U.S. 1052 (1987). Subject matter that is prior art under
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)** can be used to support a rejection under **[section
 103](mpep-9015-appx-l.html#al_d1fbe1_19797_b0)**. *Ex parte Andresen,* 212 USPQ 100, 102
 (Bd. Pat. App. & Inter. 1981) ("it appears to us that the commentator [of 35
 U.S.C.A.] and the [congressional] committee viewed **[section 103](mpep-9015-appx-l.html#d0e302450)** as
 including all of the various bars to a patent as set forth in **[section 102](mpep-9015-appx-l.html#d0e302383)**."). 
 


Furthermore, admitted prior art can be relied upon for both
 anticipation and obviousness determinations, regardless of whether the admitted prior
 art would otherwise qualify as prior art under the statutory categories of
 **[35 U.S.C.
 102](mpep-9015-appx-l.html#d0e302383)**. *Riverwood Int’l Corp. v. R.A. Jones &
 Co.,* 324 F.3d 1346, 1354, 66 USPQ2d 1331, 1337 (Fed. Cir. 2003);
 *Constant v. Advanced Micro-Devices Inc.,* 848 F.2d 1560, 1570, 7
 USPQ2d 1057, 1063 (Fed. Cir. 1988). See **[MPEP § 2129](s2129.html#d0e202844)** for discussion of
 admissions as prior art.
 


A **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** rejection is based on **[35 U.S.C. 102(a)(1) or
 (a)(2)](mpep-9015-appx-l.html#al_d1d85b_11e72_2ee)** or **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302383)**,
 **[102(b)](mpep-9015-appx-l.html#d0e302395)**, **[102(e)](mpep-9015-appx-l.html#d0e302407)**, etc. depending on the
 type of prior art reference used and its publication or issue date. For instance, an
 obviousness rejection over a U.S. patent which was issued more than 1 year before the
 filing date of the application subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** is said to
 be a statutory bar just as if it anticipated the claims under **[pre-AIA 35 U.S.C.
 102(b)](mpep-9015-appx-l.html#d0e302395)**. Analogously, an obviousness rejection based on a
 publication which would be applied under **[pre-AIA 35 U.S.C. 102(a)](mpep-9015-appx-l.html#d0e302391)** if it
 anticipated the claims can be overcome by swearing behind the publication date of the
 reference by filing an affidavit or declaration under **[37 CFR
 1.131](mpep-9020-appx-r.html#aia_d0e323504)**.
 


For an overview of what constitutes prior art under
 **[35 U.S.C.
 102,](mpep-9015-appx-l.html#d0e302383)** see **[MPEP § 901](s901.html#d0e110011)** - **[§ 901.06(d)](s901.html#d0e113539)**,
 **[§ 2121](s2121.html#d0e201731)** - **[§ 2129](s2129.html#d0e202844)** and **[§
 2151](s2151.html#ch2100_d2002f_22873_3d8)** - **[§ 2155](s2155.html#ch2100_d20034_16784_56)**.
 

**II.** **SUBSTANTIVE CONTENT OF THE PRIOR ART**See **[MPEP § 2121](s2121.html#d0e201731)** - **[§ 2129](s2129.html#d0e202844)** for case law relating to the
 substantive content of the prior art (e.g., availability of inoperative devices,
 extent to which prior art must be enabling, broad disclosure rather than preferred
 embodiments, admissions, etc.).
 

**III.** **CONTENT OF THE PRIOR ART IS DETERMINED AT THE TIME THE INVENTION WAS MADE TO
 AVOID HINDSIGHT**The **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)**
 requirement "at the time the invention was made" is to avoid impermissible hindsight.
 See **[MPEP §
 2145](s2145.html#d0e212553)**, subsection X.A. for a discussion of rebutting
 applicants’ arguments that a rejection is based on hindsight.
 


"It is difficult but necessary that the decisionmaker forget what he
 or she has been taught . . . about the claimed invention and cast the mind back to
 the time the invention was made (often as here many years), to occupy the mind of one
 skilled in the art. ..." *W.L. Gore & Associates, Inc. v. Garlock,
 Inc.,* 721 F.2d 1540, 1553, 220 USPQ 303, 313 (Fed. Cir. 1983),
 *cert. denied,* 469 U.S. 851 (1984). 
 

**IV.** **PRE-AIA 35 U.S.C. 103(c) — EVIDENCE REQUIRED TO SHOW CONDITIONS OF PRE-AIA 35
 U.S.C. 103(c) APPLY**An applicant subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** who wants
 to avail himself or herself of the benefits of **[pre-AIA 35 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** has the
 burden of establishing that subject matter which only qualifies as prior art under
 subsection (e), (f) or (g) of **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** used in a
 rejection under **[pre-AIA 35 U.S.C. 103(a)](mpep-9015-appx-l.html#d0e302450)** and the claimed invention were, at
 the time the invention was made, owned by the same person or subject to an obligation
 of assignment to the same person. *Ex parte Yoshino,* 227 USPQ 52
 (Bd. Pat. App. & Inter. 1985). Likewise, an applicant who wants to avail himself
 or herself of the benefits of the joint research provisions of **[pre-AIA 35 U.S.C.
 103(c)](mpep-9015-appx-l.html#d0e302450)** (for applications pending on or after December 10, 2004)
 has the burden of establishing that:
 


* (A) the claimed invention was made by or on behalf of parties to a
 joint research agreement that was in effect on or before the date the claimed
 invention was made;
* (B) the claimed invention was made as a result of activities
 undertaken within the scope of the joint research agreement; and
* (C) the application for patent for the claimed invention discloses
 or is amended to disclose the names of the parties to the joint research
 agreement.


This prior art disqualification is only applicable for subject
 matter which only qualifies as prior art under subsection (e), (f) or (g) of
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)** used in a rejection under **[pre-AIA 35 U.S.C.
 103(a)](mpep-9015-appx-l.html#d0e302450)**.
 


Note that for applications filed prior to November 29, 1999, and
 granted as patents prior to December 10, 2004,
 **[pre-AIA 35
 U.S.C. 103(c)](mpep-9015-appx-l.html#d0e302450)** is limited on its face to subject matter
 developed by another person which qualifies as prior art only under subsection (f) or
 (g) of **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[MPEP §
 2146.01](s2146.html#ch2100_d2c184_126fa_f3)**. See also *In re Bartfeld,* 925
 F.2d 1450, 1453-54, 17 USPQ2d 1885, 1888 (Fed. Cir. 1991) (Applicant attempted to
 overcome a **[pre-AIA
 35 U.S.C. 102(e)](mpep-9015-appx-l.html#d0e302383)**/**[103](mpep-9015-appx-l.html#d0e302450)** rejection with a terminal
 disclaimer by alleging that the public policy intent of **[pre-AIA 35 U.S.C
 103(c)](mpep-9015-appx-l.html#d0e302450)** was to prohibit the use of "secret" prior art in
 obviousness determinations. The court rejected this argument, holding "We may not
 disregard the unambiguous exclusion of **[§ 102(e)](mpep-9015-appx-l.html#d0e302407)** from the statute’s
 purview.").
 


See **[MPEP § 2146.02](s2146.html#ch2100_d2c184_12765_27)** for the requirements
 which must be met to establish common ownership or a joint research agreement.
 



# 2141.01(a) Analogous and Nonanalogous Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of
 the "time of the invention," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR
 ART**In order for a reference to be proper for use in an obviousness
 rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** , the reference must be analogous art to the
 claimed invention. *In re Bigio,* 381 F.3d 1320, 1325, 72 USPQ2d
 1209, 1212 (Fed. Cir. 2004). The examiner must determine what is "analogous prior
 art" for the purpose of analyzing the obviousness of the subject matter at issue.
 "Under the correct analysis, any need or problem known in the field of endeavor at
 the time of the invention and addressed by the patent [or application at issue]
 can provide a reason for combining the elements in the manner claimed. "
 *KSR Int'l Co. v. Teleflex Inc.,* 550 U.S. 398, 420, 82 USPQ2d
 1385, 1397 (2007). This does not require that the reference be from the same field
 of endeavor as the claimed invention, in light of the Supreme Court's instruction
 that 
 "[w]hen a work is available in one field of endeavor,
 design incentives and other market forces can prompt variations of it, either
 in the same field or a different one."
 
 
 *Id.* at 417, 82 USPQ2d 1396. Rather, a reference is analogous
 art to the claimed invention if: (1) the reference is from the same field of
 endeavor as the claimed invention (even if it addresses a different problem); or
 (2) the reference is reasonably pertinent to the problem faced by the inventor
 (even if it is not in the same field of endeavor as the claimed invention). See
 *Bigio,* 381 F.3d at 1325, 72 USPQ2d at 1212.
 


In order for a reference to be "reasonably pertinent"
 to the problem, it must 
 "logically [] have commended itself to
 an inventor's attention in considering his problem. "
 
 
 *In re ICON Health and Fitness, Inc.,* 496 F.3d 1374, 1379-80
 (Fed. Cir. 2007) (quoting *In re Clay,* 966 F.2d 656,658, 23
 USPQ2d 1058, 1061 (Fed. Cir. 1992)). *In re Klein,* 647 F.3d
 1343, 98 USPQ2d 1991 (Fed. Cir. 2011) is instructive as to the "reasonably
 pertinent" prong for determining whether a reference is analogous art. In
 determining whether a reference is reasonably pertinent, an examiner should
 consider the problem faced by the inventor, as reflected - either explicitly or
 implicitly - in the specification. In order to support a determination that a
 reference is reasonably pertinent, it may be appropriate to include a statement of
 the examiner's understanding of the problem. The question of whether a reference
 is reasonably pertinent often turns on how the problem to be solved is perceived.
 If the problem to be solved is viewed in a narrow or constrained way, and such a
 view is not consistent with the specification, the scope of available prior art
 may be inappropriately limited. It may be necessary for the examiner to explain
 why an inventor seeking to solve the identified problem would have looked to the
 reference in an attempt to find a solution to the problem, i.e., factual reasons
 why the prior art is pertinent to the identified problem. 
 


Any argument by the applicant that the examiner has
 misconstrued the problem to be solved, and as a result has improperly relied on
 nonanalogous art, should be fully considered in light of the specification. In
 evaluating the applicant's argument, the examiner should look to the teachings of
 the specification and the inferences that would reasonably have been drawn from
 the specification by a person of ordinary skill in the art as a guide to
 understanding the problem to be solved. A prior art reference not in the same
 field of endeavor as the claimed invention must be reasonably pertinent to the
 problem to be solved in order to qualify as analogous art and be applied in an
 obviousness rejection.
 

**II.** **CONSIDER SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION** 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." *In re Ellis,* 476 F.2d 1370, 1372, 177 USPQ
 526, 527 (CCPA 1973) (The structural similarities and functional overlap between
 the structural gratings shown by one reference and the shoe scrapers of the type
 shown by another reference were readily apparent, and therefore the arts to which
 the reference patents belonged were reasonably pertinent to the art with which
 appellant’s invention dealt (pedestrian floor gratings).).
 

**III.** **ANALOGY IN THE CHEMICAL ARTS**Examples of analogous art in the chemical arts include:
 *Ex parte Bland,* 3 USPQ2d 1103 (Bd. Pat App. & Inter.
 1986) (Claims were drawn to a particulate composition useful as a preservative for
 an animal foodstuff (or a method of inhibiting fungus growth in an animal
 foodstuff therewith) comprising verxite having absorbed thereon propionic acid.
 All references were concerned with absorbing biologically active materials on
 carriers, and therefore the teachings in each of the various references would have
 been pertinent to the problems in the other references and the invention at
 hand.); *Stratoflex, Inc. v. Aeroquip Corp.,* 713 F.2d 1530, 218
 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing
 electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow while
 precluding leakage of fuel. Two prior art references relied upon were in the
 rubber hose art, both referencing the problem of electrostatic buildup caused by
 fuel flow. The court found that because PTFE and rubber are used by the same hose
 manufacturers and experience the same and similar problems, a solution found for a
 problem experienced with either PTFE or rubber hosing would be looked to when
 facing a problem with the other.); *In re Mlot-Fijalkowski,* 676
 F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by appellant was enhancement and
 immobilization of dye penetrant indications. References which taught the use of
 dyes and finely divided developer materials to produce colored images preferably
 in, but not limited to, the duplicating paper art were properly relied upon
 because the court found that appellant’s problem was one of dye chemistry, and a
 search for its solution would include the dye arts in general.).
 

**IV.** **ANALOGY IN THE MECHANICAL ARTS**Examples of analogous art in the mechanical arts include:
 *Stevenson v. Int'l Trade Comm.,* 612 F.2d 546, 550, 204 USPQ
 276, 280 (CCPA 1979) ("In a simple mechanical invention a broad spectrum of prior
 art must be explored and it is reasonable to permit inquiry into other areas where
 one of ordinary skill in the art would be aware that similar problems exist.").
 See also *In re Bigio,* 381 F.3d 1320, 1325-26, 72 USPQ2d 1209,
 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a
 specific bristle configuration. The Board affirmed the examiner’s rejection of the
 claims as being obvious in view of prior art patents disclosing toothbrushes.
 *Id.* at 1323, 72 USPQ2d at 1210. The applicant disputed that
 the patent references constituted analogous art. On appeal, the court upheld the
 Board’s interpretation of the claim term "hair brush" to encompass any brush that
 may be used for any bodily hair, including facial hair. *Id.* at
 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the
 "field of endeavor test" for analogous art and determined that the references were
 within the field of applicant’s endeavor and hence was analogous art because
 toothbrushes are structurally similar to small brushes for hair, and a toothbrush
 could be used to brush facial hair. *Id.* at 1326, 72 USPQ2d at
 1212.
 


Also see *In re Deminski,* 796 F.2d 436, 230
 USPQ 313 (Fed. Cir. 1986) (Applicant’s claims related to double-acting high
 pressure gas transmission line compressors in which the valves could be removed
 easily for replacement. The Board relied upon references which taught either a
 double-acting piston pump or a double-acting piston compressor. The court agreed
 that since the cited pumps and compressors have essentially the same function and
 structure, the field of endeavor includes both types of double-action piston
 devices for moving fluids.); *Pentec, Inc. v. Graphic Controls
 Corp.,* 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue
 were directed to an instrument marker pen body, the improvement comprising a pen
 arm holding means having an integrally molded hinged member for folding over
 against the pen body. Although the patent owners argued the hinge and fastener art
 was nonanalogous, the court held that the problem confronting the inventor was the
 need for a simple holding means to enable frequent, secure attachment and easy
 removal of a marker pen to and from a pen arm, and one skilled in the pen art
 trying to solve that problem would have looked to the fastener and hinge art.);
 and *Ex parte Goodyear Tire & Rubber Co.,* 230 USPQ 357 (Bd.
 Pat. App. & Inter. 1985) (A reference in the clutch art was held reasonably
 pertinent to the friction problem faced by applicant, whose claims were directed
 to a braking material, because brakes and clutches utilize interfacing materials
 to accomplish their respective purposes.).
 

**V.** **ANALOGY IN THE ELECTRICAL ARTS**See, for example, *Medtronic, Inc. v. Cardiac
 Pacemakers,* 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) (Patent
 claims were drawn to a cardiac pacemaker which comprised, among other components,
 a runaway inhibitor means for preventing a pacemaker malfunction from causing
 pulses to be applied at too high a frequency rate. Two references disclosed
 circuits used in high power, high frequency devices which inhibited the runaway of
 pulses from a pulse source. The court held that one of ordinary skill in the
 pacemaker designer art faced with a rate-limiting problem would look to the
 solutions of others faced with rate limiting problems, and therefore the
 references were in an analogous art.).
 

**VI.** **EXAMPLES OF ANALOGY IN THE DESIGN ARTS**See **[MPEP § 1504.03](s1504.html#d0e154792)** for a discussion
 of the relevant case law setting forth the general requirements for analogous art
 in design applications.
 


For examples of analogy in the design arts, see *In re
 Rosen,* 673 F.2d 388, 213 USPQ 347 (CCPA 1982) (The design at issue
 was a coffee table of contemporary styling. The court held designs of contemporary
 furniture other than coffee tables, such as the desk and circular glass table top
 designs of the references relied upon, would reasonably fall within the scope of
 the knowledge of the designer of ordinary skill.); *Ex parte
 Pappas,* 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) (At issue
 was an ornamental design for a feed bunk with an inclined corner configuration.
 Examiner relied upon references to a bunk lacking the inclined corners claimed by
 appellant and the *Architectural Precast Concrete Drafting
 Handbook.* The Board found the *Architectural Precast Concrete
 Drafting Handbook* was analogous art, noting that a bunk may be a wood
 or concrete trough, and that both references relied upon "disclose structures in
 which at least one upstanding leg is generally perpendicular to a base portion to
 define a corner configuration between the leg and base portion."); *In re
 Butera,* 1 F.3d 1252, 28 USPQ2d 1399, 1400 (Fed. Cir. 1993)
 (unpublished - not citable as precedent) (The claimed invention, a spherical
 design for a combined insect repellent and air freshener, was rejected by the
 Board as obvious over a single reference to a design for a metal ball anode. The
 court reversed, holding the reference design to be nonanalogous art. "A prior
 design is of the type claimed if it has the same general use as that claimed in
 the design patent application . . . . One designing a combined insect repellent
 and air freshener would therefore not have reason to know of or look to a design
 for a metal ball anode."). 
 



, 
# 2141.01(a) Analogous and Nonanalogous Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of
 the "time of the invention," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **TO RELY ON A REFERENCE UNDER 35 U.S.C. 103, IT MUST BE ANALOGOUS PRIOR
 ART**In order for a reference to be proper for use in an obviousness
 rejection under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** , the reference must be analogous art to the
 claimed invention. *In re Bigio,* 381 F.3d 1320, 1325, 72 USPQ2d
 1209, 1212 (Fed. Cir. 2004). The examiner must determine what is "analogous prior
 art" for the purpose of analyzing the obviousness of the subject matter at issue.
 "Under the correct analysis, any need or problem known in the field of endeavor at
 the time of the invention and addressed by the patent [or application at issue]
 can provide a reason for combining the elements in the manner claimed. "
 *KSR Int'l Co. v. Teleflex Inc.,* 550 U.S. 398, 420, 82 USPQ2d
 1385, 1397 (2007). This does not require that the reference be from the same field
 of endeavor as the claimed invention, in light of the Supreme Court's instruction
 that 
 "[w]hen a work is available in one field of endeavor,
 design incentives and other market forces can prompt variations of it, either
 in the same field or a different one."
 
 
 *Id.* at 417, 82 USPQ2d 1396. Rather, a reference is analogous
 art to the claimed invention if: (1) the reference is from the same field of
 endeavor as the claimed invention (even if it addresses a different problem); or
 (2) the reference is reasonably pertinent to the problem faced by the inventor
 (even if it is not in the same field of endeavor as the claimed invention). See
 *Bigio,* 381 F.3d at 1325, 72 USPQ2d at 1212.
 


In order for a reference to be "reasonably pertinent"
 to the problem, it must 
 "logically [] have commended itself to
 an inventor's attention in considering his problem. "
 
 
 *In re ICON Health and Fitness, Inc.,* 496 F.3d 1374, 1379-80
 (Fed. Cir. 2007) (quoting *In re Clay,* 966 F.2d 656,658, 23
 USPQ2d 1058, 1061 (Fed. Cir. 1992)). *In re Klein,* 647 F.3d
 1343, 98 USPQ2d 1991 (Fed. Cir. 2011) is instructive as to the "reasonably
 pertinent" prong for determining whether a reference is analogous art. In
 determining whether a reference is reasonably pertinent, an examiner should
 consider the problem faced by the inventor, as reflected - either explicitly or
 implicitly - in the specification. In order to support a determination that a
 reference is reasonably pertinent, it may be appropriate to include a statement of
 the examiner's understanding of the problem. The question of whether a reference
 is reasonably pertinent often turns on how the problem to be solved is perceived.
 If the problem to be solved is viewed in a narrow or constrained way, and such a
 view is not consistent with the specification, the scope of available prior art
 may be inappropriately limited. It may be necessary for the examiner to explain
 why an inventor seeking to solve the identified problem would have looked to the
 reference in an attempt to find a solution to the problem, i.e., factual reasons
 why the prior art is pertinent to the identified problem. 
 


Any argument by the applicant that the examiner has
 misconstrued the problem to be solved, and as a result has improperly relied on
 nonanalogous art, should be fully considered in light of the specification. In
 evaluating the applicant's argument, the examiner should look to the teachings of
 the specification and the inferences that would reasonably have been drawn from
 the specification by a person of ordinary skill in the art as a guide to
 understanding the problem to be solved. A prior art reference not in the same
 field of endeavor as the claimed invention must be reasonably pertinent to the
 problem to be solved in order to qualify as analogous art and be applied in an
 obviousness rejection.
 

**II.** **CONSIDER SIMILARITIES AND DIFFERENCES IN STRUCTURE AND FUNCTION** 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." *In re Ellis,* 476 F.2d 1370, 1372, 177 USPQ
 526, 527 (CCPA 1973) (The structural similarities and functional overlap between
 the structural gratings shown by one reference and the shoe scrapers of the type
 shown by another reference were readily apparent, and therefore the arts to which
 the reference patents belonged were reasonably pertinent to the art with which
 appellant’s invention dealt (pedestrian floor gratings).).
 

**III.** **ANALOGY IN THE CHEMICAL ARTS**Examples of analogous art in the chemical arts include:
 *Ex parte Bland,* 3 USPQ2d 1103 (Bd. Pat App. & Inter.
 1986) (Claims were drawn to a particulate composition useful as a preservative for
 an animal foodstuff (or a method of inhibiting fungus growth in an animal
 foodstuff therewith) comprising verxite having absorbed thereon propionic acid.
 All references were concerned with absorbing biologically active materials on
 carriers, and therefore the teachings in each of the various references would have
 been pertinent to the problems in the other references and the invention at
 hand.); *Stratoflex, Inc. v. Aeroquip Corp.,* 713 F.2d 1530, 218
 USPQ 871 (Fed. Cir. 1983) (Problem confronting inventor was preventing
 electrostatic buildup in PTFE tubing caused by hydrocarbon fuel flow while
 precluding leakage of fuel. Two prior art references relied upon were in the
 rubber hose art, both referencing the problem of electrostatic buildup caused by
 fuel flow. The court found that because PTFE and rubber are used by the same hose
 manufacturers and experience the same and similar problems, a solution found for a
 problem experienced with either PTFE or rubber hosing would be looked to when
 facing a problem with the other.); *In re Mlot-Fijalkowski,* 676
 F.2d 666, 213 USPQ 713 (CCPA 1982) (Problem faced by appellant was enhancement and
 immobilization of dye penetrant indications. References which taught the use of
 dyes and finely divided developer materials to produce colored images preferably
 in, but not limited to, the duplicating paper art were properly relied upon
 because the court found that appellant’s problem was one of dye chemistry, and a
 search for its solution would include the dye arts in general.).
 

**IV.** **ANALOGY IN THE MECHANICAL ARTS**Examples of analogous art in the mechanical arts include:
 *Stevenson v. Int'l Trade Comm.,* 612 F.2d 546, 550, 204 USPQ
 276, 280 (CCPA 1979) ("In a simple mechanical invention a broad spectrum of prior
 art must be explored and it is reasonable to permit inquiry into other areas where
 one of ordinary skill in the art would be aware that similar problems exist.").
 See also *In re Bigio,* 381 F.3d 1320, 1325-26, 72 USPQ2d 1209,
 1211-12 (Fed. Cir. 2004). The patent application claimed a "hair brush" having a
 specific bristle configuration. The Board affirmed the examiner’s rejection of the
 claims as being obvious in view of prior art patents disclosing toothbrushes.
 *Id.* at 1323, 72 USPQ2d at 1210. The applicant disputed that
 the patent references constituted analogous art. On appeal, the court upheld the
 Board’s interpretation of the claim term "hair brush" to encompass any brush that
 may be used for any bodily hair, including facial hair. *Id.* at
 1323-24, 72 USPQ2d at 1211. With this claim interpretation, the court applied the
 "field of endeavor test" for analogous art and determined that the references were
 within the field of applicant’s endeavor and hence was analogous art because
 toothbrushes are structurally similar to small brushes for hair, and a toothbrush
 could be used to brush facial hair. *Id.* at 1326, 72 USPQ2d at
 1212.
 


Also see *In re Deminski,* 796 F.2d 436, 230
 USPQ 313 (Fed. Cir. 1986) (Applicant’s claims related to double-acting high
 pressure gas transmission line compressors in which the valves could be removed
 easily for replacement. The Board relied upon references which taught either a
 double-acting piston pump or a double-acting piston compressor. The court agreed
 that since the cited pumps and compressors have essentially the same function and
 structure, the field of endeavor includes both types of double-action piston
 devices for moving fluids.); *Pentec, Inc. v. Graphic Controls
 Corp.,* 776 F.2d 309, 227 USPQ 766 (Fed. Cir. 1985) (Claims at issue
 were directed to an instrument marker pen body, the improvement comprising a pen
 arm holding means having an integrally molded hinged member for folding over
 against the pen body. Although the patent owners argued the hinge and fastener art
 was nonanalogous, the court held that the problem confronting the inventor was the
 need for a simple holding means to enable frequent, secure attachment and easy
 removal of a marker pen to and from a pen arm, and one skilled in the pen art
 trying to solve that problem would have looked to the fastener and hinge art.);
 and *Ex parte Goodyear Tire & Rubber Co.,* 230 USPQ 357 (Bd.
 Pat. App. & Inter. 1985) (A reference in the clutch art was held reasonably
 pertinent to the friction problem faced by applicant, whose claims were directed
 to a braking material, because brakes and clutches utilize interfacing materials
 to accomplish their respective purposes.).
 

**V.** **ANALOGY IN THE ELECTRICAL ARTS**See, for example, *Medtronic, Inc. v. Cardiac
 Pacemakers,* 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 1983) (Patent
 claims were drawn to a cardiac pacemaker which comprised, among other components,
 a runaway inhibitor means for preventing a pacemaker malfunction from causing
 pulses to be applied at too high a frequency rate. Two references disclosed
 circuits used in high power, high frequency devices which inhibited the runaway of
 pulses from a pulse source. The court held that one of ordinary skill in the
 pacemaker designer art faced with a rate-limiting problem would look to the
 solutions of others faced with rate limiting problems, and therefore the
 references were in an analogous art.).
 

**VI.** **EXAMPLES OF ANALOGY IN THE DESIGN ARTS**See **[MPEP § 1504.03](s1504.html#d0e154792)** for a discussion
 of the relevant case law setting forth the general requirements for analogous art
 in design applications.
 


For examples of analogy in the design arts, see *In re
 Rosen,* 673 F.2d 388, 213 USPQ 347 (CCPA 1982) (The design at issue
 was a coffee table of contemporary styling. The court held designs of contemporary
 furniture other than coffee tables, such as the desk and circular glass table top
 designs of the references relied upon, would reasonably fall within the scope of
 the knowledge of the designer of ordinary skill.); *Ex parte
 Pappas,* 23 USPQ2d 1636 (Bd. Pat. App. & Inter. 1992) (At issue
 was an ornamental design for a feed bunk with an inclined corner configuration.
 Examiner relied upon references to a bunk lacking the inclined corners claimed by
 appellant and the *Architectural Precast Concrete Drafting
 Handbook.* The Board found the *Architectural Precast Concrete
 Drafting Handbook* was analogous art, noting that a bunk may be a wood
 or concrete trough, and that both references relied upon "disclose structures in
 which at least one upstanding leg is generally perpendicular to a base portion to
 define a corner configuration between the leg and base portion."); *In re
 Butera,* 1 F.3d 1252, 28 USPQ2d 1399, 1400 (Fed. Cir. 1993)
 (unpublished - not citable as precedent) (The claimed invention, a spherical
 design for a combined insect repellent and air freshener, was rejected by the
 Board as obvious over a single reference to a design for a metal ball anode. The
 court reversed, holding the reference design to be nonanalogous art. "A prior
 design is of the type claimed if it has the same general use as that claimed in
 the design patent application . . . . One designing a combined insect repellent
 and air freshener would therefore not have reason to know of or look to a design
 for a metal ball anode."). 
 


, 
# 2141.02 Differences Between Prior Art and Claimed Invention [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time the invention was made," which is only applicable to applications subject to
 **[pre-AIA 35
 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See **[35 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and
 **[MPEP
 § 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*


Ascertaining the differences between the prior art and the claims at
 issue requires interpreting the claim language, and considering both the invention and
 the prior art references as a whole. See **[MPEP § 2111](s2111.html#d0e200352)** - **[§ 2116.01](s2116.html#d0e201660)** for case
 law pertaining to claim interpretation. See also **[MPEP § 2143.03](s2143.html#d0e210501)** for examples of types of
 claim language that may raise a question as to its limiting effect.
 

**I.** **THE CLAIMED INVENTION AS A WHOLE MUST BE CONSIDERED**In determining the differences between the prior art and the claims,
 the question under **[35 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)** is not whether the differences
 themselves would have been obvious, but whether the claimed
 invention as a whole would have been obvious.
 *Stratoflex, Inc. v. Aeroquip Corp.,* 713 F.2d 1530, 218 USPQ 871
 (Fed. Cir. 1983); *Schenck v. Nortron Corp.,* 713 F.2d 782, 218 USPQ
 698 (Fed. Cir. 1983) (Claims were directed to a vibratory testing machine (a
 hard-bearing wheel balancer) comprising a holding structure, a base structure, and a
 supporting means which form "a single integral and gaplessly continuous piece."
 *Nortron* argued the invention is just making integral what had
 been made in four bolted pieces, improperly limiting the focus to a structural
 difference from the prior art and failing to consider the invention as a whole. The
 prior art perceived a need for mechanisms to dampen resonance, whereas the inventor
 eliminated the need for dampening via the one-piece gapless support structure.
 "Because that insight was contrary to the understandings and expectations of the art,
 the structure effectuating it would not have been obvious to those skilled in the
 art." 713 F.2d at 785, 218 USPQ at 700 (citations omitted).).
 


See also *In re Hirao,* 535 F.2d 67, 190 USPQ 15
 (CCPA 1976) (Claims were directed to a three step process for preparing sweetened
 foods and drinks. The first two steps were directed to a process of producing high
 purity maltose (the sweetener), and the third was directed to adding the maltose to
 foods and drinks. The parties agreed that the first two steps were nonobvious but
 formed a known product and the third step was obvious. The Solicitor argued the
 preamble was directed to a process for preparing foods and drinks sweetened mildly
 and thus the specific method of making the high purity maltose (the first two steps
 in the claimed process) should not be given weight, analogizing with
 product-by-process claims. The court disagreed and held "due to the admitted
 unobviousness of the first two steps of the claimed combination of steps, the subject
 matter as a whole would not have been obvious to one of
 ordinary skill in the art at the time the invention was made." 535 F.2d at 69, 190
 USPQ at 17 (emphasis in original). The preamble only recited the purpose of the
 process and did not limit the body of the claim. Therefore, the claimed process was a
 three step process, not the product formed by two steps of the process or the third
 step of using that product.). 
 

**II.** **DISTILLING THE INVENTION DOWN TO A "GIST" OR "THRUST" OF AN INVENTION
 DISREGARDS "AS A WHOLE" REQUIREMENT**Distilling an invention down to the "gist" or "thrust" of an
 invention disregards the requirement of analyzing the subject matter "as a whole."
 *W.L. Gore & Assoc., Inc. v. Garlock, Inc.,* 721 F.2d 1540,
 220 USPQ 303 (Fed. Cir. 1983), *cert. denied,* 469 U.S. 851 (1984)
 (restricting consideration of the claims to a 10% per second rate of stretching of
 unsintered PTFE and disregarding other limitations resulted in treating claims as
 though they read differently than allowed); *Bausch & Lomb v.**Barnes-Hind/Hydrocurve, Inc.,* 796 F.2d 443, 447-49, 230 USPQ 416,
 419-20 (Fed. Cir. 1986), *cert. denied,* 484 U.S. 823 (1987)
 (District court focused on the "concept of forming ridgeless depressions having
 smooth rounded edges using a laser beam to vaporize the material," but "disregarded
 express limitations that the product be an ophthalmic lens formed of a transparent
 cross-linked polymer and that the laser marks be surrounded by a smooth surface of
 unsublimated polymer."). See also *Jones v. Hardy,* 727 F.2d 1524,
 1530, 220 USPQ 1021, 1026 (Fed. Cir. 1984) ("treating the advantage as the invention
 disregards statutory requirement that the invention be viewed ‘as a whole’");
 *Panduit Corp. v. Dennison Mfg. Co.,* 810 F.2d 1561, 1 USPQ2d
 1593 (Fed. Cir. 1987), *cert. denied,* 481 U.S. 1052 (1987)
 (district court improperly distilled claims down to a one word solution to a
 problem).
 

**III.** **DISCOVERING SOURCE/CAUSE OF A PROBLEM IS PART OF "AS A WHOLE" INQUIRY**"[A] patentable invention may lie in the discovery of the source of
 a problem even though the remedy may be obvious once the source of the problem is
 identified. This is part of the ‘subject matter as a whole’
 which should always be considered in determining the obviousness of an invention
 under **[35 U.S.C. §
 103](mpep-9015-appx-l.html#d0e302450)**." *In re Sponnoble,* 405 F.2d 578, 585,
 160 USPQ 237, 243 (CCPA 1969). However, "discovery of the cause of a problem . . does
 not always result in a patentable invention. . . . [A] different situation exists
 where the solution is obvious from prior art which contains the same
 solution for a similar problem." *In re Wiseman,* 596
 F.2d 1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (emphasis in original). 
 


In *In re Sponnoble,* the claim was directed to a
 plural compartment mixing vial wherein a center seal plug was placed between two
 compartments for temporarily isolating a liquid-containing compartment from a
 solids-containing compartment. The claim differed from the prior art in the selection
 of butyl rubber with a silicone coating as the plug material instead of natural
 rubber. The prior art recognized that leakage from the liquid to the solids
 compartment was a problem, and considered the problem to be a result of moisture
 passing around the center plug because of microscopic fissures
 inherently present in molded or blown glass. The court found the inventor discovered
 the cause of moisture transmission was through the center
 plug, and there was no teaching in the prior art which would suggest the necessity of
 selecting applicant's plug material which was more impervious to liquids than the
 natural rubber plug of the prior art.
 


In *In re Wiseman,* 596 F.2d at 1022, 201 USPQ at
 661, claims directed to grooved carbon disc brakes wherein the grooves were provided
 to vent steam or vapor during a braking action to minimize fading of the brakes were
 rejected as obvious over a reference showing carbon disc brakes without grooves in
 combination with a reference showing grooves in noncarbon disc brakes for the purpose
 of cooling the faces of the braking members and eliminating dust, thereby reducing
 fading of the brakes. The court affirmed the rejection, holding that even if the
 inventor discovered the cause of a problem, the solution would have been obvious from
 the prior art which contained the same solution (inserting grooves in disc brakes)
 for a similar problem.
 

**IV.** **APPLICANTS ALLEGING DISCOVERY OF A SOURCE OF A PROBLEM MUST PROVIDE
 SUBSTANTIATING EVIDENCE**Applicants who allege the inventor discovered the source of a
 problem must provide evidence substantiating the allegation, either by way of
 affidavits or declarations, or by way of a clear and persuasive assertion in the
 specification. *In re Wiseman,* 596 F.2d 1019, 201 USPQ 658 (CCPA
 1979) (unsubstantiated statement of counsel was insufficient to show appellants
 discovered source of the problem); *In re Kaslow,* 707 F.2d 1366,
 217 USPQ 1089 (Fed. Cir. 1983) (Claims were directed to a method for redeeming
 merchandising coupons which contain a UPC "5-by-5" bar code wherein, among other
 steps, the memory at each supermarket would identify coupons by manufacturer and
 transmit the data to a central computer to provide an audit thereby eliminating the
 need for clearinghouses and preventing retailer fraud. In challenging the propriety
 of an obviousness rejection, appellant argued he discovered the source of a problem
 (retailer fraud and manual clearinghouse operations) and its solution. The court
 found appellant’s specification did not support the argument that he discovered the
 source of the problem with respect to retailer fraud, and that the claimed invention
 failed to solve the problem of manual clearinghouse operations.).
 

**V.** **DISCLOSED INHERENT PROPERTIES ARE PART OF "AS A WHOLE" INQUIRY**"In determining whether the invention as a whole would have been
 obvious under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**, we must first delineate the invention as a whole.
 In delineating the invention as a whole, we look not only to the subject matter which
 is literally recited in the claim in question... but also to those properties of the
 subject matter which are inherent in the subject matter *and* are
 disclosed in the specification. . . Just as we look to a chemical and its properties
 when we examine the obviousness of a composition of matter claim, it is this
 invention *as a whole,* and not some part of it, which must be
 obvious under **[35
 U.S.C. 103](mpep-9015-appx-l.html#d0e302450)**." *In re Antonie,* 559 F.2d 618,
 620, 195 USPQ 6,8 (CCPA 1977) (emphasis in original) (citations omitted) (The claimed
 wastewater treatment device had a tank volume to contactor area of 0.12 gal./sq. ft.
 The court found the invention as a whole was the ratio of 0.12 and its inherent
 property that the claimed devices maximized treatment capacity regardless of other
 variables in the devices. The prior art did not recognize that treatment capacity was
 a function of the tank volume to contactor ratio, and therefore the parameter
 optimized was not recognized in the art to be a result-effective variable.). See also
 *In re Papesch,* 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963)
 ("From the standpoint of patent law, a compound and all its properties are
 inseparable.").
 


Obviousness cannot be predicated on what is not known at the time an
 invention is made, even if the inherency of a certain feature is later established.
 *In re Rijckaert,* 9 F.3d 1531, 28 USPQ2d 1955 (Fed. Cir. 1993).
 See **[MPEP §
 2112](s2112.html#d0e201036)** for the requirements of rejections based on
 inherency.
 

**VI.** **PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH
 AWAY FROM THE CLAIMS**A prior art reference must be considered in its entirety, i.e., as a
 whole, including portions that would lead away from the
 claimed invention. *W.L. Gore & Assoc., Inc. v. Garlock, Inc.,*
 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), *cert. denied,* 469
 U.S. 851 (1984) (Claims were directed to a process of producing a porous article by
 expanding shaped, unsintered, highly crystalline poly(tetrafluoroethylene) (PTFE) by
 stretching said PTFE at a 10% per second rate to more than five times the original
 length. The prior art teachings with regard to unsintered PTFE indicated the material
 does not respond to conventional plastics processing, and the material should be
 stretched slowly. A reference teaching rapid stretching of conventional plastic
 polypropylene with reduced crystallinity combined with a reference teaching
 stretching unsintered PTFE would not suggest rapid stretching of highly crystalline
 PTFE, in light of the disclosures in the art that teach away from the invention,
 i.e., that the conventional polypropylene should have reduced crystallinity before
 stretching, and that PTFE should be stretched slowly). *Allied Erecting v.
 Genesis Attachments,* 825 F.3d 1373, 1381, 119 USPQ2d 1132, 1138 (Fed.
 Cir. 2016) ("Although modification of the movable blades may impede the quick change
 functionality disclosed by Caterpillar, ‘[a] given course of action often has
 simultaneous advantages and disadvantages, and this does not necessarily obviate
 motivation to combine.’" (quoting *Medichem, S.A. v. Rolabo, S.L.,*
 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (citation omitted))).
 


However, "the prior art’s mere disclosure of more than one
 alternative does not constitute a teaching away from any of these alternatives
 because such disclosure does not criticize, discredit, or otherwise discourage the
 solution claimed…." *In re Fulton,* 391 F.3d 1195, 1201, 73 USPQ2d
 1141, 1146 (Fed. Cir. 2004). See also **[MPEP § 2123](s2123.html#d0e202024)**.
 


, 
# 2141.03 Level of Ordinary Skill in the Art [R-10.2019]


*[Editor Note: This MPEP section is **applicable** to applications
 subject to the first inventor to file (FITF) provisions of the AIA except that the
 relevant date is the "effective filing date" of the claimed invention instead of the
 "time of the invention" or "time the invention was made," which are only applicable
 to applications subject to **[pre-AIA 35 U.S.C. 102](mpep-9015-appx-l.html#d0e302383)**. See
 **[35
 U.S.C. 100 (note)](mpep-9015-appx-l.html#al_d1d917_1bef1_2b)** and **[MPEP §
 2150](s2150.html#ch2100_d2002f_22805_16e)** et seq.]*

**I.** **FACTORS TO CONSIDER IN DETERMINING LEVEL OF ORDINARY SKILL**The person of ordinary skill in the art is a hypothetical person who
 is presumed to have known the relevant art at the time of the invention. Factors that
 may be considered in determining the level of ordinary skill in the art may include:
 (A) "type of problems encountered in the art;" (B) "prior art solutions to those
 problems;" (C) "rapidity with which innovations are made;" (D) "sophistication of the
 technology; and" (E) "educational level of active workers in the field. In a given
 case, every factor may not be present, and one or more factors may predominate."
 *In re GPAC,* 57 F.3d 1573, 1579, 35 USPQ2d 1116, 1121 (Fed. Cir.
 1995); *Custom Accessories, Inc. v. Jeffrey-Allan Indus., Inc.,* 807
 F.2d 955, 962, 1 USPQ2d 1196, 1201 (Fed. Cir. 1986 ); *Environmental Designs,
 Ltd. V. Union Oil Co.,* 713 F.2d 693, 696, 218 USPQ 865, 868 (Fed. Cir.
 1983). 
 


 "A person of ordinary skill in the art is also a person of ordinary
 creativity, not an automaton." *KSR Int'l Co. v. Teleflex Inc.,* 550
 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary
 skill will be able to fit the teachings of multiple patents together like pieces of a
 puzzle."  *Id.* at 420, 82 USPQ2d 1397. Office personnel may also
 take into account "the inferences and creative steps that a person of ordinary skill
 in the art would employ." *Id.* at 418, 82 USPQ2d at 1396. 
 


The "hypothetical ‘person having ordinary skill in the art’ to which
 the claimed subject matter pertains would, of necessity have the capability of
 understanding the scientific and engineering principles applicable to the pertinent
 art." *Ex parte Hiyamizu,* 10 USPQ2d 1393, 1394 (Bd. Pat. App. &
 Inter. 1988) (The Board disagreed with the examiner’s definition of one of ordinary
 skill in the art (a doctorate level engineer or scientist working at least 40 hours
 per week in semiconductor research or development), finding that the hypothetical
 person is not definable by way of credentials, and that the evidence in the
 application did not support the conclusion that such a person would require a
 doctorate or equivalent knowledge in science or engineering.). 
 


References which do not qualify as prior art because they postdate
 the claimed invention may be relied upon to show the level of ordinary skill in the
 art at or around the time the invention was made. *Ex parte Erlich,*
 22 USPQ 1463, 1465 (Bd. Pat. App. & Inter. 1992). See also *Thomas &
 Betts Corp. v. Litton Sys., Inc.,* 720 F.2d 1572, 1581, 220 USPQ 1, 7
 (Fed. Cir. 1983) ("Thus, the [unpublished internal materials], though not technically
 prior art, were, in effect, properly used as indicators of the level of ordinary
 skill in the art to which the invention pertained."). Moreover, documents not
 available as prior art because the documents were not widely disseminated may be used
 to demonstrate the level of ordinary skill in the art. For example, the document may
 be relevant to establishing "a motivation to combine which is implicit in the
 knowledge of one of ordinary skill in the art." *Nat'l Steel Car, Ltd. v.
 Can. Pac. Ry., Ltd.,* 357 F.3d 1319, 1338, 69 USPQ2d 1641, 1656 (Fed.
 Cir. 2004) (holding that a drawing made by an engineer that was not prior art can,
 nonetheless, "... be used to demonstrate a motivation to combine implicit in the
 knowledge of one of ordinary skill in the art").
 

**II.** **SPECIFYING A PARTICULAR LEVEL OF SKILL IS NOT NECESSARY WHERE THE PRIOR ART
 ITSELF REFLECTS AN APPROPRIATE LEVEL**If the only facts of record pertaining to the level of skill in the
 art are found within the prior art of record, the court has held that an invention
 may be held to have been obvious without a specific finding of a particular level of
 skill where the prior art itself reflects an appropriate level. *Chore-Time
 Equipment, Inc. v. Cumberland Corp.,* 713 F.2d 774, 218 USPQ 673 (Fed.
 Cir. 1983). See also *Okajima v. Bourdeau,* 261 F.3d 1350, 1355, 59
 USPQ2d 1795, 1797 (Fed. Cir. 2001).
 

**III.** **ASCERTAINING LEVEL OF ORDINARY SKILL IS NECESSARY TO MAINTAIN
 OBJECTIVITY**"The importance of resolving the level of ordinary skill in the art
 lies in the necessity of maintaining objectivity in the obviousness inquiry."
 *Ryko Mfg. Co. v. Nu-Star, Inc.,* 950 F.2d 714, 718, 21 USPQ2d
 1053, 1057 (Fed. Cir. 1991). The examiner must ascertain what would have been obvious
 to one of ordinary skill in the art at the time the invention was made, and not to
 the inventor, a judge, a layman, those skilled in remote arts, or to geniuses in the
 art at hand. *Environmental Designs, Ltd. v. Union Oil Co.,* 713
 F.2d 693, 218 USPQ 865 (Fed. Cir. 1983), *cert. denied,* 464 U.S.
 1043 (1984). 
 


]