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Federal Circuit Provides Insight Into “Analogous” Art

A recent decision from the Federal Circuit, though nonprecedential, may help provide some boundaries to the scope of analogous art in the context of an obviousness rejection.

In Smith & Nephew Inc., v. Hologic, Inc.,1 the Federal Circuit determined that a prior art reference used to establish a prima facie case of obviousness by the USPTO Examiner, did not qualify as analogous art. The case concerned an inter partes reexamination brought by Hologic, Inc., against U.S. Patent No. 7,226,459 (“the ‘459 patent”), owned by Smith & Nephew.

The primary claim at issue in the ‘459 patent recited the following:

1. A surgical instrument, comprising: a cutting member including an implement for cutting tissue; and
a drive coupled to the cutting member to simultaneously rotate, translate, and reciprocate the cutting member in response to only a rotational force applied to the drive in a single direction and to cut tissue during simultaneous rotation and translation of the cutting member;
wherein the drive includes a drive member attached to the cutting member, the drive member including a helical groove, and the drive includes a translation piece disposed in the groove such that rotary driving of the drive member results in simultaneous reciprocation of the drive member relative to the translation piece.2

During the reexamination, claim 1 was rejected under 35 U.S.C. § 103, as being obvious over the combination of three cited references, Galloway, Middle and Kaplan. The Examiner asserted that Galloway, which related to the production of glass fibers, and in particular, to winding a glass fiber strand to form packages, disclosed a “reciprocating apparatus with a helical groove.”3 On appeal, the UPSTO Patent Trial and Appeal Board (“the Board”) found that Galloway was “relevant to solving the technical problem of converting rotational motion into simultaneous rotational, translational, and reciprocal motions,” and that because Middle teaches that the shape of a cam groove can be modified to vary the number of reciprocations per rotation, “a person of skill in the art would seek out teachings regarding relevant cam grooves.”4

In order for a prior art reference to be proper for use in an obviousness rejection under 35 U.S.C. § 103, the reference must be analogous art to the claimed invention. 5 To find that a prior art reference is in fact analogous art, it must be determined “(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.” 6 However, the Supreme Court’s decision in KSR Int’l. Co. v. Teleflex Inc., appeared to have broadened the understanding of “analogous art,” noting 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.”7 While the Supreme Court did not specifically use the term “analogous art,” it has long been felt by patent practitioners that arguing something was “non-analogous art” presented a significant uphill battle in view of the language in KSR.

In reviewing the Board’s decision, the Federal Circuit looked to the holding in In re Clay, which indicated “[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.”8 Turning to the subject matter of the ‘459 patent, the Federal Circuit found Smith & Nephew’s invention to be focused on “solving the difficulty in cutting large amounts of semi-rigid tissue.” 9 In contrast, Galloway was “directed to winding glass fiber.”10 Even though the Federal Circuit acknowledged that both references utilized similar mechanical solutions, it was not convinced that a person working to solve an arthroscopic surgical device problem would logically consider turning to the disclosure of Galloway, a completely distinct area of study, for assistance.11

As a result of this guidance from the Federal Circuit, it should be easier for patent practitioners to argue that a reference cited by an Examiner in an obviousness rejection is “non-analogous art.” While many Examiners have pointed to language in KSR that seemed to broaden the reach of prior art, it does appear that the scope of what can be considered “reasonably pertinent” from unrelated fields, does indeed have some boundaries.

1 Case No. 2017-1008 (Fed. Cir., January 30, 2018)
2 U.S. Patent No. 7,226,459, at col. 5, line 56, through col. 6, line 2 (emphasis added).
3 Smith & Nephew Inc., v. Hologic, Inc., Case No. 2017-1008, at page 9.
4 Id.
5 See M.P.E.P. § 2141.01(a); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
6 Smith & Nephew Inc., v. Hologic, Inc., Case No. 2017-1008, at page 9, citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
7 550 U.S. 398, 417 (2007).
8 Smith & Nephew Inc., v. Hologic, Inc., Case No. 2017-1008, at page 9, citing In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
9 Id. at page 10.
10 Id.
11 See Id.

See the opinion here.