When Examiners Rely on Non-analogous Art

If you enjoy the great outdoors, you have likely encountered a tick. These nasty little buggers are especially prominent in some Northeastern and upper Midwestern areas of the United States. Apparently they are also quite a problem in Australia, where an inventor was motivated to develop a new type of tick removal tool (shown below, left hand side). The corresponding US application (11/630,235) met with some difficult rejections, including both anticipation and obviousness rejections based on a crow bar design by Yeager (US Design Patent 211,755, shown below, right hand side), and so an appeal to the PTAB ensued.

The anticipation rejection was easily reversed by the PTAB because the claims required the bifurcated tip to be “substantially perpendicular” to the elongated grip, which can be clearly seen as distinct from the angles in Yeager (see images below).

In terms of the obviousness rejection, the problem for the examiner was that the crow bar had to be combined with other tick removal tools. While both related broadly to removing something by prying, anyone who has had a tick likely would be horrified to see someone coming at them with a crow bar to remove it. If anything, the crow bar might be used to knock out the patient to make digging out the tick more bearable. But that is not what the inventor had in mind and so the applicant argued that the crow bar was non-analogous art.

As discussed in previous posts (here and here), there is a clear test for determining whether art is analogous, which the PTAB summarizes in their decision:

Prior art is analogous if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” Circuit Checklnc. v. QXQInc., 795 F.3d 1331, 1335 (Fed. Cir. 2015). However, “[i]f [a reference] is directed to a different purpose, the inventor would accordingly have had less motivation or occasion to consider it. ” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).

In looking to whether art is pertinent, one must consider the full scope of the problem. Here, digging into the details, the inventor clearly had a different scope of the problem than the reference. The PTAB explains the issue and their conclusion:

While Heitz and Kirkegaard are both in the field of endeavor of tick removal devices (FF 6 — 7), Yeager is in a different field of endeavor of lift bars (FF 3). We therefore must determine whether Yeager is reasonably pertinent to the tick removal problem addressed by the inventor (see Spec. 4:4—9). When considering whether a reference is pertinent to the problem with which the inventor or prior art were concerned, the framing of the problem may well be determinative of the analogous art determination. If the problem is broadly framed as any desire to pry two things apart, then Yeager is generally relevant to any device from any endeavor involved in separating two items. However, this broad a framing is unreasonable, because under this logic any reference dealing with a general concern will always be pertinent. When the problem is framed at a more reasonable scale, whether narrowly as removing ticks as taught by Heitz and Kirkegaard (FF 6 — 7), or more broadly as medical devices designed to remove undesirable components, Yeager lacks any indicia of relevance to these fields of endeavor. We are not persuaded that the ordinary artisan, interested in removing ticks without the “body of the tick being squashed and host being covered in blood and saliva” (Spec. 1:18) and operating the device by “rotating or twisting the apparatus between the thumb and fore index finger until the tick loosens” (Spec. 3:29-30), would have reasonably looked to the lift bar of Yeager for designing a second bifurcated tip onto the device of Heitz.

 The applicant's tick removal tool on the left, and the non-analogous art crowbar on the right

The applicant's tick removal tool on the left, and the non-analogous art crowbar on the right

So, when you have art cited against your claims in an obviousness rejection, see if there is a way to frame the problem in a way supported by the specification that makes it clear the art is disqualified as non-analogous. Make sure to avoid overly-broad definitions of the problem solved by the claimed features, as that helps art to qualify. Once art is deemed non-analogous, it is discarded completely leaving the rejection fundamentally flawed, so this can be a powerful tool when applied correctly.

Here, unfortunately for the applicant, there was another prior art rejection based on another reference that did show all claimed features and thus the applicant was unsuccessful in the end, even after overcoming the anticipation and obviousness rejections based on Yeager.