Ex parte Talkowski

Informative decision only: persuasive authority, not binding precedent. In deciding whether a reference is analogous art under § 103, the Board applies the two-step In re Wood test (Step 1: is the reference within the field of the inventor's endeavor; Step 2, if not: is it reasonably pertinent to the particular problem the inventor was trying to solve). But a "no" answer to both steps does not always compel a finding of non-analogous art, because § 103 focuses on the objective reach of the claim rather than the inventor's motivation, and the Wood analysis may be made from the standpoint of combining the references (here, Chen's field of endeavor). No prior Board precedent is named as directly addressed; the Board states the Wood two-step test and cautions that Wood approached analogous art from the inventor's perspective, and that a "no" to both steps does not always make a reference non-analogous. It also expressly leaves open whether a Step 3 will develop. For the examiner, a reference solving a different problem from the applicant's can still be combined if it is related to the field of endeavor of the primary reference or if the claim's objective reach covers an obvious modification. For the applicant, arguing that references address a different problem or field than the application no longer suffices, and unclaimed unexpected results must be shown commensurate in scope with the claims. The Board relied on In re Wood, In re Dillon (Fed. Cir. 1990) (en banc), In re Kemps, KSR Int'l Co. v. Teleflex Inc., and Graham v. John Deere Co. LEGAL TEST OR STANDARD: Two-step Wood test. Step 1: "Is the reference within the field of the inventor's endeavor?" If yes, the reference is analogous. If no, Step 2: "Is the reference reasonably pertinent to the particular problem the inventor was trying to solve?" If yes, it is analogous. The Board adds that a "no" to both steps does not always compel non-analogous status, and that the Wood analysis can be made from the viewpoint of combining the references; whether a Step 3 develops is left for another day. TRIGGERING FACTS: Applicant argued Chen (balloon material for medical dilatation catheters) and the Wakabayashi publications (magnesium acid/ionomer blends) were non-analogous art to its claim, a PTT or PTB polyester composition with an acid/ionomer modifier addressing melt viscosity. The Board found Chen and applicant addressed different problems, but the Wakabayashi blends were related to Chen's field of endeavor and usable as Chen's softening second polymer component, so the references could be combined. KEY QUOTE: "Wood and similar earlier precedent seems to have approached the "non analogous" art issue from a perspective of an inventor." (Paper N, p. 15) PRIOR PRECEDENT AFFECTED: No prior Board precedential or informative decision is directly affected. The Board follows In re Wood, 599 F.2d 1032 (CCPA 1979), and In re Antle, 444 F.2d 1168 (CCPA 1971), and relies on In re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (en banc), In re Kemps, 97 F.3d 1427 (Fed. Cir. 1996), and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), to refine how the test applies. PRACTICE TIP: Do not rest a non-analogous-art argument solely on the inventor's field and problem; also address whether the secondary reference is related to the field of endeavor of the primary reference and whether the claim's objective reach covers an obvious modification of it. For unexpected results, tie the evidence to the full claim scope, since unclaimed results face a harder commensurate-scope burden.