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.