Wednesday, 08 June 2011 21:15


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As patent practioners well know, and Applicants are often, albeit begrudgingly, forced to accept, Patent Examiner's exhibit considerable latitude when it comes to rejecting patent claims as obvious under 35 U.S.C. §103.  A recent opinion of the U.S. Court of Appeals for the Federal Circuit, In re Klein, should provide greater leavarage for practitioners and Applicants faced with obviousness rejections in the future, particularly when there is a question as to whether a reference cited by an Examiner is analogous prior art.

Specifically, the Court found in favor of the Applicant, Arnold G. Klein, and reversed the final decision of the Board of Patent Appeals and Interferences in which a number of claims of Mr. Klein's pending patent application were rejected as obvious under Section 103.  More in particular, the Court stated that "[b]ecause the Board's finding that five references at issue are analogous art is not supported by substantial evidence", the obviousness rejection was reversed.

It is noteworthy that Mr. Klein's application was directed to a fairly simple device for measuring, and subsequently mixing, predetermined amounts of sugar and water to prepare nectar solutions for different types of birds and butterflies.  The following is an illustration of the Klein device:


Among the references relied upon by the PTO as a basis for its obviousness rejection of the Klein patent application was U.S. Patent No. 2,985,333 to Kirkman for a "Plastic Cabinet Drawer with Removable Partitions."  Figure 1 of the Kirkman patent is presented below:


As noted above, the Federal Circuit ultimately found that the Board's "conclusory findings" that Kirkman and the other references were analogous art were not supported by substantial evidence.  The Court further stated that an inventor would not have been motivated to consider the references because they fail to show a container adapted for the purpose of solving the problem being solved by the Klein device.

To read the complete Federal Circuit Opinion click here.

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John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.