Posted by Susan Dierenfeldt-Troy, Esq.

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

Patent claims may be rejected on anticipatory grounds under 35 U.S.C § 102 and/or on obviousness grounds under 35 U.S.C. § 103.  This blog discusses the USPTO’s obligations when making rejections on obviousness grounds, an area of patent law that can be particularly confusing as a November 9, 2020 decision by the CAFC demonstrates.


In order for a reference to be proper for use in an obviousness rejection, the reference must be analogous art to the claimed invention.   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.”  KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 402 (2007).  Rather, a reference is analogous art to the claimed invention if:  (1) the reference is from the same field of endeavor (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).   However, 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 the problem.”  In re Icon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007).

The Case

These requirements were re-visited by the U.S. Court of Appeals (CAFC) in its Nov. 9, 2020 decision in Donner Technology, LLC v. Pro Stage Gear, LLC.  Donner had petitioned the Patent Trial & Appeal Board (PTAB) for an inter partes review (IPR) of U.S.  patent no. 6,459,023 (the ‘023 patent), asserting that the various claims of the ‘023 patent were obvious under 35 U.S.C. § 103 in view of U.S. Patent No. 3,504,311 (Mullen).  The ‘023 patent is directed to guitar effects pedals, electronic devices that affect the amplified sound of a guitar.  The specification explained that there was a need for “ ‘an improved pedals effect board which  allows easy positioning and changing of the individual guitar effects while providing a confined and secured area for cable routing and placement.’ ”

The Mullen reference related to electrical relays where an “ ‘object of the invention is to provide an improved support for supporting one or more relay structures and for providing wiring-channel space for receiving wires that would be connected to the relay structures to connect the relay structures in various controlled structures.’ ”  Donner contended that figures in the Muller patent depict a structure that is analogous to the structure claimed in the ‘023 patent which includes surfaces for mounting relays, cable connection openings, and areas for accommodating routing cables.

The PTAB found in favor of Pro Stage Gear, finding that Donner had not shown that Mullen falls within the scope of analogous art under either of the two tests.  On appeal to the CAFC, the parties did not dispute that the 023 patent and Mullen were not from the same field of endeavor.  The only issue on appeal was whether Mullen was “reasonably pertinent to one or more particular problems to which the ‘023 patent relates.”

The CAFC found that the PTAB had failed to establish whether it had meaningfully considered all of the evidence Donner had put forth, including expert testimony, to try and establish that Mullen was reasonably pertinent to the problems faced by the 023 patent’s inventor.   Additionally, the PTAB also failed to “properly identify and compare the purposes to which Mullen and the ’23 patent relate.”

Proper analysis requires that the “problems to which the claimed invention and reference relate must be identified and compared from the perspective of a person having ordinary skill in the art.”  Making conclusory statements without more is insufficient to determine whether a reference is analogous art.  Here, the PTAB merely asserted that the ordinary skilled person would have a “relatively low level of skill and would have had “a poor understanding of Mullen’s relay technology.”  Interestingly, the PTAB had acknowledged that there may be “ ‘pertinent similarities between Mullen and the ‘023 patent but concluded that those similarities, even if credited, did ‘not establish why a person of ordinary skill would have considered a reference from a different technology and time.’ ”  The CAFC disagreed, explaining that such a person may consult a reference.  The issue is not whether the person would have understood every last detail of a reference but “whether she understood portions of the reference relevant to solving the problem well enough to glean useful information.”

The CAFC concluded that the PTAB had applied the wrong analogous art standard.  It declined to hold that “no reasonable fact finder could conclude under the reasonably pertinent standard, that Mullen is not analogous art.”  Instead, it vacated the PTAB’s decision and remanded for consideration of the proper standard for analogous art.


Here is a simple example of analogous art.  An inventor files a patent application for a collapsible ski pole and the examining attorney cites analogous prior art for a collapsible tent pole patent. Here the tent pole patent would likely be reasonably pertinent to the problem the ski pole inventor was trying to solve: to provide less unwieldy, more readily transported poles.   Whether or not the ski pole will qualify for patent protection will depend on structural differences between the two poles and whether any ski pole structure would have been obvious over the prior art.

The patents at issue in the Donner matter of course involve more complex structures than the ski pole/tent example.  Whether or not Mullen, an invention from the 1970s, is reasonably pertinent to the problem the guitar pedal effects patent was trying to solve will now be assessed by the PTAB using evidence and expert testimony.   If yes, then the PTAB will evaluate whether the ‘023 patent is obvious over the Mullen patent.   Unfair in this situation? Is it likely that the ‘023 patent inventor found and “used” what was shown in the Mullen patent for a structure related to improving guitar effects pedals? The PTAB’s first decision suggested that it was not “pleased” with this particular IPR.  The 023 invention must have value in the market place for Donner to have spent the money involved so far on legal fees to try and invalidate the ‘023 patent.   Stay tuned for an update on the PTAB’s new decision.

Take Home Points

Whether dealing with the prosecution of a patent application or an IPR proceeding involving an existing patent, the USPTO must apply the appropriate standards in considering analogous prior art. Failure of the USPTO to do so during patent application prosecution can provide the patent applicant with the opportunity to try and overcome the USPTO’s reliance on the cited analogous prior art.  In an IPR proceeding, failure of the PTAB to properly apply the two analogous art tests may well result in an appeal of the matter to the CAFC as in the Donner Technology, LLC v. Pro Stage Gear, LLC matter by the losing party in the IPR proceeding.   



Call us at (305) 279-4740 for a complimentary consultation on matters related to obtaining patent protection or handling a legal dispute before the PTAB or the CAFC.  


May you and your loved ones stay safe & be well during these challenging times.

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Posted in Business Law, Intellectual Property Law, Patent Law - Current Issues on November 15,2020 11:11 PM
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