In re Arnold G. Klein (CAFC 2010-1411) Judges Newman, Schall (author), and Linn

Under the Patent Act, "[a] patent may not be obtained . . . if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." 35 U.S.C. § 103(a). Although the ultimate determination of obviousness under § 103 is a question of law, it is based on several underlying factual findings, including (1) the scope and content of the prior art; (2) the level of ordinary skill in the pertinent art; (3) the differences between the claimed invention and the prior art; and (4) evidence of secondary factors, such as commercial success, long-felt need, and the failure of others. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).

We review the Board's ultimate determination of obviousness de novo and the Board's factual findings underlying that determination for substantial evidence. In re Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). The Board's determination that a prior art reference is analogous art presents an issue of fact, reviewed for substantial evidence. In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1378 (Fed. Cir. 2007).

Mr. Klein's patent application was for a "a mixing device for use in preparation of sugar-water nectar for certain bird and butterfly feeders."

According to the specification, the device has a series of rails that, when engaged with a divider, allow for the creation of two compartments for separating sugar and water within the device. J.A. 27, 101. The rails are located to divide the device into proportionate volumes of one part sugar to four parts water (to make hummingbird nectar), one part sugar to six parts water (to make oriole nectar), and one part sugar to nine parts water (to make butterfly nectar). Id. Once the respective compartments have been filled to the same level with sugar and water, the divider is removed, allowing the sugar and water to mix and be stirred. J.A. 25, 27.

The examiner made 5 separate obviousness rejections, affirmed by the patent board.

Because "[t]he problem of keeping things separated is not unique to nectar mixing and storage devices," and "nothing about the prior art containers with adjustable, removable dividers is unique to their particular applications," the government contends that "[o]ne confronted with Klein's desire to keep two ingredients separated and also allow for them to be mixed together would have readily consulted these references to discover the broad solution therein employed, and applied it to his particular application with no more than ordinary skill required."

The appeal compartmentalized what the BPAI could not. Three of the five prior art rejections were for box dividers, having nothing to do with liquid containers. Two prior art containers separated liquids. The government considered all the objectionable prior art analogous, which it characterized as a "compartment separation problem."

Mr. Klein does not challenge the Board's factual finding of the problem he was addressing, namely "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals." Mr. Klein argues, however, that [the prior art:] Roberts, O'Connor, Kirkman, Greenspan, and De Santo are each directed to a wholly different problem than the one he faced.

A reference qualifies as prior art for an obviousness determination under § 103 only when it is analogous to the claimed invention. Innovention Toys, LLC, v. MGA Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed. Cir. Mar. 21, 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). "Two separate tests define the scope of analogous prior art: (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." Bigio, at 1325. Here, the Board focused exclusively on the "reasonably pertinent to the particular problem" test. "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." Clay, 966 F.2d at 659. "If a reference disclosure has the same purpose as the claimed invention, the reference relates to the same

With reference to the separated liquid containers, Greenspan and De Santo -

Greenspan and De Santo are not analogous, Mr. Klein argues, because they do not address multiple ratios or have a "movable divider." We agree. While Greenspan and De Santo are each directed to containers that facilitate the mixing of two separated substances together, an inventor considering the problem of "making a nectar feeder with a movable divider to prepare different ratios of sugar and water for different animals," would not have been motivated to consider either of these references since neither of the references shows a movable divider or the ability to prepare different ratios.2 Decision at 8 (emphasis added). In the Decision, the Board did not set forth any reasoning in support of its finding that Greenspan and De Santo are analogous, and thus, this finding is also not supported by substantial evidence.

Reversed and remanded.