Non-Analogous Art Argument WINS!!!

Not once, not twice, but FIVE times at PTAB, Tech Center 1700, in November and December.

Full disclosure – four of the decisions were issued in related applications.

In Ex parte Hansen et al.,  US Patent Application Serial No. 12/345215, Appeal 2019-001796, decided November 14, 2019 Ex parte Hansen and Ex parte Hansen et al., US Patent Application Serial Nos. 12/345466, 12/479258 and 12/479317, (Appeal Nos., 2019-001797, 2019-001799 and 2019-001801, respectively) all decided November 22, 2019, laminated fabrics and methods of making the same were claimed.  The Examiner’s primary reference described a net. The Board cited In re Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) and In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992) for the proposition that “A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.”  Finding that not to be the case as between a net and the claimed laminated fabric, the Board reversed the Examiner in each of the four related applications.

In Ex parte Lee et al. Ex parte Lee, US Patent Application Serial No. 14/766616, Appeal 2019-002545, decided December 12, 2019, the claims at issue were directed to an electro-conductive paste, while the applied art described an automotive paint.  The Board held that not only had the Examiner failed to identify why one of ordinary skill would have considered a reference concerned with the look and feel of paint pertinent to an invention that seeks to improve printing characteristics, and thermal and electrical conductivity, but that the Examiner had failed to explain why the properties of the prior art’s paint would have been considered useful or desirable in an electrically conductive paste.  The Board concluded that even if they had found the prior art analogous, the Examiner’s rejection would have yet been reversed for failing to provide a rationale underpinning to support the combination/modification of the applied prior art.  The ‘616 Board relied upon Innovention Toys, LLC v. MGA Entertainment, Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011) for its description of the analysis for determining whether art is analogous and K-Tec, Inc. v. Vita-Mix Corp., 696 F.3d 1364, 1375 (Fed. Cir. 2012) for its description of determination of whether a reference is ‘reasonably pertinent’.