US Federal Circuit Addresses Citability of Prior Art in Patent Examination

The US Federal Circuit Court of Appeals rejected five separate findings of obviousness by the US Patent and Trademark Office (USPTO) Board of Patent Appeals and Interferences (Board) regarding the patent application of Arnold Klein. Klein’s application disclosed and narrowly claimed a simple device to combine sugar and water in three different proportions using a movable divider in a cup. The divider creates two compartments, one of which is to be filled with water and the other with sugar, and then the divider is to be removed and the water and sugar mixed. Three positions for the divider were selected based on previously known ratios consistent with natural nectar food sources of hummingbirds, orioles and butterflies, which were specifically recited in the broadest claims. A USPTO examiner, as affirmed by the Board, cited five publications and asserted that each publication, in combination with the admitted prior art in the application, rendered Klein’s invention obvious. Three of the publications described containers with movable dividers to keep solid objects (such as nuts and bolts) separated. The other two described liquid containers with a removable divider to allow two liquids separated by the divider to be mixed, neither of which disclosed the concept of a movable divider to handle different ratios of the two liquids. The Court applied the test from In re Bigio (Fed Cir 2004), which was also recently applied in Innovention Toys v MGA Entertainment (Fed Cir, Mar 21 2011), for citability of prior art. The test requires that a publication either be from the same field of endeavour or otherwise be reasonably pertinent to the particular problem with which the inventor is involved. In this case, the Court found that the three publications dealing with solid objects were not pertinent since the containers were not adapted to receive water, and the two involving liquids were not pertinent since they were addressing a different problem and did not show a movable divider. Summary by: Tom Feather