Fed. Circuit Cautions Against Narrow Application of Analogous Art Test, PTAB Litigation Blog

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One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1, 17 (1966).  The scope of the prior art includes all analogous art. See, e.g., Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332, 1339 (Fed. Cir. 2005). In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004) identifies the inquiries of the analogous art test for determining whether a reference can be considered against claims of a patent: “(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.” If either of those are true, then the reference counts as prior art.

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