Ex parte Dart

Informative decision only: persuasive authority, not binding precedent. When prior art references address the same problem as the claimed invention (here, reclosure of a drink opening using a strap-connected plug, a mechanical closure problem for liquid containers), they are analogous because each is "reasonably pertinent to the problem with which Dart was concerned," even if the reference is for a different container such as a soda can. Combining known tab closures with a conventional lid, where each element performs no additional or different function in the combination, is a combination of familiar elements with a predictable result and is obvious. No prior precedent directly addressed this issue in the text; the Board applies KSR and the Supreme Court's and Federal Circuit's analogous-art cases to hold that the rigid teaching-suggestion-motivation test no longer controls. For the examiner, the decision shows that pertinence to the inventor's problem suffices, and that common sense and known elements doing what they always did can supply the reason to combine. For the applicant, arguing that a reference is non-analogous because it concerns a soda can rather than a cup, or because it addresses a supposedly different problem, will fail when the reference teaches the same reclosure problem, and demanding explicit motivation is foreclosed by KSR. The Board relied on KSR Int'l Co. v. Teleflex Inc., Graham v. John Deere Co., Dann v. Johnston, In re Oetiker, and In re Gorman. LEGAL TEST OR STANDARD: Prior art is analogous when a person having ordinary skill in the art would consider it relevant or related to the invention sought to be patented. Per In re Oetiker, art is analogous if it is in the field of applicant's endeavor or is reasonably pertinent to the particular problem with which the inventor is concerned. Obviousness rests on the Graham facts: (1) the scope and content of the prior art, (2) any differences between the claimed invention and the prior art, (3) the level of skill in the art and (4) any relevant objective evidence. A combination of known elements that perform no additional or different function than they do out of it is not patentable, and an explicit teaching, suggestion or motivation is not required under KSR. TRIGGERING FACTS: Dart claimed a disposable recloseable cup lid with a tab closure (a mounting plug and a drink plug joined by a strap). The prior art was Freek (a lid), plus Waterbury (a can closure tab), Mueller, Aichert (a plastic lid for a soda can), DeMars and Lane. Dart argued Waterbury was non-analogous because it concerned a soda can closure and a different problem (a discarded flip-top tab). The Board found that every reference addressed reclosing a drink opening with a hinge or strap, and that Dart's own stated problem was a closure that can open and close through multiple cycles. Dart showed no additional or different function of the elements in combination, and presented no evidence of commercial success. KEY QUOTE: "We consider Waterbury, Mueller, Aichert, De Mars and Lane all to be analogous art because each is reasonably pertinent to the problem with which Dart was concerned." (p. 28) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. The Board follows KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007); Graham v. John Deere Co., 383 U.S. 1 (1966); Dann v. Johnston, 425 U.S. 219 (1976); In re Oetiker, 977 F.2d 1443 (Fed. Cir. 1992); In re Gorman, 933 F.2d 982 (Fed. Cir. 1991); and Great Atlantic & Pacific Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147 (1950). PRACTICE TIP: Do not rest a non-analogous-art argument on differences in the type of container or product. Define the problem the inventor actually addresses, then show that the reference does not bear on that problem. Also show that the claimed combination performs a different or additional function than the elements perform separately. Do not argue that an explicit teaching, suggestion or motivation is missing, because the Board treated that as foreclosed by KSR.