An examiner must determine what is “analogous prior art” in order to analyze the obviousness of the subject matter at issue. Notable legal principles in this area include:
- “In order to rely on a reference as a basis for rejection of an invention application, the reference must either be in the field of the applicant’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned.” (In re Oetiker, 977 F.2d 1443).
- The law of non-analogous art is generally straightforward. References under 35 USC §103’s terms qualify as prior art for an obviousness determination only when analogous to the claimed invention [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 the inventor’s endeavor, regardless of the problem addressed and, (2) if the reference is not within said field, whether the reference still is reasonably pertinent to the problem at issue. [In re Deminski, 796 F.2d 436, 442 (Fed. Cir. 1986); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979); and In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004)].