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Federal Circuit: Analogous art test survives KSR, but obviousness affirmed
August 02, 2007
In a case decided yesterday, the Federal Circuit affirmed a decision by the BPAI finally rejecting all but one claim of a patent under reexamination as obvious. The patentee admitted that all elements of the claims save one were present in two relevant prior art references and that another reference disclosed the final element, but argued that the third reference was nonanalogous art, and therefore the finding of obviousness was in error.The Federal Circuit affirmed, holding there would have been a reason to combine the refernces. Notably, however, the court applied its pre-KSR analogous art test, namely that for prior art to be analogous (and available for use in an obviousness rejection), it must either be from the field of the invention or reasonably pertinent to the problem addressed by the invention. Here, court found the reference reasonably pertinent, and as a result affirmed the finding of obviousness.More detail of In re Icon Health & Fitness, Inc. after the jump.Icon Health and Fitness owns a patent claiming a treadmill with a handle for moving the treadmill, a folding base, and gas spring for assisting in stably retaining the folding base when in the upright position. The folding is illustrated by figures 1 and 2 of the patent below:
Figure 1 Figure 2
On reexamination, the examiner rejected all but one of Icon's claims as obvious based on the combination of an advertisement by Damark International and a patent to Teague. Icon did not dispute that the Damark ad disclosed all of its claim elements other than the gas spring. Rather, Icon argued that Teague was not analogous, because Teague addressed a different problem in a different field. The BPAI agreed with the examiner, and Icon appealed.The Federal Circuit also agreed that Teague was analogous art. Importantly however, the court described its pre-KSR analogous art test as fully consistent with KSR. Under the Federal Circuit's analogous art test, a reference is analogous art (and therefore available for obviousness purposes) if it is either in the same field of endeavor as the invention, or reasonably pertinent to the problem addressed by inventor. It was undisputed that Teague (which related to folding beds) was not in the same field of endeavor, so the focus was on whether it was reasonably pertinent to the problem addressed by the patent. As stated by the court:
"A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor's attention in considering his problem." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). In other words, "familiar items may have obvious uses beyond their primary purposes." KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1742 (2007).
In finding that Teague was analogous art, the court noted that while Teague's dual-action spring was for use in a Murphy bed, it did address a similar problem: supporting the weight of some mechanism and providing a stable resting position. The Court concluded that Icon's invention did not require any particular focus on treadmills:
Analogous art to Icon's application, when considering the folding mechanism and gas spring limitation, may come from any area describing hinges, springs, latches, counterweights, or other similar mechanisms—such as the folding bed in Teague.

In support of the BPAI's conclusion of obviousness, the court pointed out "[t]he striking similarity between Icon's application and Teague's application." Specifically, Teague provided an example of a mechanism clearly satisfying Icon's claim limitation. The court quickly concluded that by addressing a similar problem, Teague provided analogous art going "a long way towards demonstrating a reason to combine the two references." As a result, the court affirmed the finding of obviousness.

This is potentially good news for patent holders and applicants, as it may indicate that the Federal Circuit will rein the apparent eagerness of the USPTO to find inventions obvious post-KSR (as indicated by the three recent precedential BPAI decisions).To read the full decision in In re Icon Health & Fitness, Inc., click here.

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