Editing MPEP 2141

<noinclude>{{MPEP Section|2138|2100|2142}}</noinclude>

==[[MPEP 2141|2141 35 U.S.C. 103; the Graham Factual Inquiries]]==

<noinclude>__TOC__</noinclude>

35 U.S.C. 103. Conditions for patentability; non-obvious subject matter.

(a)A patent may not be obtained though the invention is not 
identically disclosed or described as set forth in section 102 of this 
title, if the differences between the subject matter sought to be patented 
and the prior art are such that the subject matter as a whole 
would have been obvious at the time the invention was made to a 
person having ordinary skill in the art to which said subject matter 
pertains. Patentability shall not be negatived by the manner in 
which the invention was made.

(b)(1)Notwithstanding subsection (a), and upon timely election 
by the applicant for patent to proceed under this subsection, a 
biotechnological process using or resulting in a composition of 
matter that is novel under section 102 and nonobvious under subsection 
(a) of this section shall be considered nonobvious if-

(A)claims to the process and the composition of matter 
are contained in either the same application for patent or in separate 
applications having the same effective filing date; and

(B)the composition of matter, and the process at the time 
it was invented, were owned by the same person or subject to an 
obligation of assignment to the same person.

(2)A patent issued on a process under paragraph (1)-

(A)shall also contain the claims to the composition of 
matter used in or made by that process, or

(B)shall, if such composition of matter is claimed in 
another patent, be set to expire on the same date as such other 
patent, notwithstanding section 154.

(3)For purposes of paragraph (1), the term “biotechnological 
process” means-




 

(A)a process of genetically altering or otherwise 
inducing a single- or multi-celled organism to-

(i)express an exogenous nucleotide sequence,

(ii)inhibit, eliminate, augment, or alter expression 
of an endogenous nucleotide sequence, or

(iii)express a specific physiological characteristic 
not naturally associated with said organism;

(B)cell fusion procedures yielding a cell line that 
expresses a specific protein, such as a monoclonal antibody; and

(C)a method of using a product produced by a process 
defined by subparagraph (A) or (B), or a combination of subparagraphs 
(A) and (B).



(c)(1) Subject matter developed by another person, which 
qualifies as prior art only under one or more of subsections (e), (f), 
and (g) of section 102 of this title, shall not preclude patentability 
under this section where the subject matter and the claimed invention 
were, at the time the claimed invention was made, owned by 
the same person or subject to an obligation of assignment to the 
same person.

(2)For purposes of this subsection, subject matter developed 
by another person and a claimed invention shall be deemed 
to have been owned by the same person or subject to an obligation 
of assignment to the same person if — 

(A)the claimed invention was made by or on behalf of 
parties to a joint research agreement that was in effect on or before 
the date the claimed invention was made;

(B)the claimed invention was made as a result of 
activities undertaken within the scope of the joint research agreement; 
and 

(C)the application for patent for the claimed invention 
discloses or is amended to disclose the names of the parties to the 
joint research agreement. 

(3)For purposes of paragraph (2), the term “joint 
research agreement” means a written contract, grant, or cooperative 
agreement entered into by two or more persons or entities for 
the performance of experimental, developmental, or research 
work in the field of the claimed invention.



I. STANDARD OF PATENTABILITY TO 
BE APPLIED IN OBVIOUSNESS REJECTIONS


Patent examiners carry the responsibility of making 
sure that the standard of patentability enunciated by 
the Supreme Court and by the Congress is applied in 
each and every case. The Supreme Court in Graham v. 
John Deere, 383 U.S. 1, 148 USPQ 459 (1966), 
stated:

Under § 103, the scope and content of the prior art are 
to be determined; differences between the prior art and the 
claims at issue are to be ascertained; and the level of ordinary 
skill in the pertinent art resolved. Against this background, 
the obviousness or nonobviousness of the subject 
matter is determined. Such secondary considerations as 
commercial success, long felt but unsolved needs, failure 
of others, etc., might be utilized to give light to the circumstances 
surrounding the origin of the subject matter 
sought to be patented. As indicia of obviousness or nonobviousness, 
these inquires may have relevancy. . . 

 

This in not to say, however, that there will not be difficulties 
in applying the nonobviousness test. What is obvious 
is not a question upon which there is likely to be 
uniformity of thought in every given factual context. The 
difficulties, however, are comparable to those encountered 
daily by the courts in such frames of reference as negligence 
and scienter, and should be amenable to a case-by-
case development. We believe that strict observance of the 
requirements laid down here will result in that uniformity 
and definitiveness which Congress called for in the 1952 
Act.

Office policy is to follow Graham v. John Deere 
Co. in the consideration and determination of obviousness 
under 35 U.S.C. 103. As quoted above, the 
four factual inquires enunciated therein as a background 
for determining obviousness are as follows:

(A)Determining the scope and contents of the 
prior art;

(B)Ascertaining the differences between the 
prior art and the claims in issue; 

(C)Resolving the level of ordinary skill in the 
pertinent art; and 

(D)Evaluating evidence of secondary considerations.


The Supreme Court reaffirmed and relied upon the 
Graham three pronged test in its consideration and 
determination of obviousness in the fact situations 
presented in Sakraida v. Ag Pro, Inc., 425 
U.S. 273, 
189 USPQ 449, reh’g denied, 426 U.S. 955 (1976) 
and Anderson’s-Black Rock, Inc. v. Pavement Salvage 
Co., 396 U.S. 57, 163 USPQ 673 (1969). In each case, 
the Court discussed whether the claimed combinations 
produced a “new or different function” and a 
“synergistic result,” but it clearly decided whether the 
claimed inventions were nonobviousness on the basis 
of the three-way test in Graham. Nowhere in its decisions 
in these cases does the Court state that the “new 
or different function” and “synergistic result” tests 
supersede a finding of nonobvious or obviousness 
under the Graham test.

Accordingly, examiners should apply the test for 
patentability under 35 U.S.C. 103 set forth in Graham. 
See below for a detailed discussion of each of 




 

the Graham factual inquiries. It should be noted that 
the Supreme Court’s application of the Graham test to 
the fact circumstances in Ag Pro was somewhat stringent, 
as it was in Black Rock. Note Republic Industries, 
Inc. v. Schlage Lock Co., 592 F.2d 963, 200 
USPQ 769 (7th Cir. 1979). The Court of Appeals for 
the Federal Circuit stated in Stratoflex, Inc. v. Aeroquip 
Corp., 713 F.2d 1530, 1540, 218 USPQ 871, 880 
(Fed. Cir. 1983) that

A requirement for “synergism” or a “synergistic effect” 
is nowhere found in the statute, 35 U.S.C. When present, 
for example in a chemical case, synergism may point 
toward nonobviousness, but its absence has no place in 
evaluating the evidence on obviousness. The more objective 
findings suggested in Graham, supra, are drawn from 
the language of the statute and are fully adequate guides 
for evaluating the evidence relating to compliance with 35 
U.S.C. § 103. Bowser Inc. v. United States, 388 F. 2d 346, 
156 USPQ 406 (Ct. Cl. 1967).



II. BASIC CONSIDERATIONS WHICH 
APPLY TO OBVIOUSNESS REJECTIONS 

When applying 35 U.S.C. 103, the following tenets 
of patent law must be adhered to:

(A)The claimed invention must be considered as 
a whole; 

(B)The references must be considered as a whole 
and must suggest the desirability and thus the obviousness 
of making the combination; 

(C)The references must be viewed without the 
benefit of impermissible hindsight vision afforded by 
the claimed invention; and 

(D)Reasonable expectation of success is the standard 
with which obviousness is determined.

Hodosh v. Block Drug Co., Inc., 786 F.2d 1136, 
1143 n.5, 229 USPQ 182, 187 n.5 (Fed. Cir. 1986).



III. OBJECTIVE EVIDENCE MUST BE 
CONSIDERED

Objective evidence or secondary considerations 
such as unexpected results, commercial success, long-
felt need, failure of others, copying by others, licensing, 
and skepticism of experts are relevant to the issue 
of obviousness and must be considered in every case 
in which they are present. When evidence of any of 
these secondary considerations is submitted, the 
examiner must evaluate the evidence. The weight to 
be accorded to the evidence depends on the individual 
factual circumstances of each case. Stratoflex, Inc. v. 
Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. 
Cir. 1983); Hybritech, Inc. v. Monoclonal Antibodies, 
Inc., 802 F.2d 1367, 231 USPQ 81 (Fed. Cir. 
1986), cert. denied, 480 U.S. 947 (1987). The ultimate 
determination on patentability is made on the 
entire record. In re Oetiker, 977 F.2d 1443, 1446, 
24 
USPQ2d 1443, 1445 (Fed. Cir. 1992). However, 
evidence developed after the patent grant in response 
to challenge to the patent validity’s should not be 
excluded from consideration since “understanding the 
full range of the invention is not always achieved at 
the time of filing the patent application.” Knoll 
Pharms. Co., Inc. v. Teva Pharms. USA Inc., 367 F.3d 
1381, 1385, 70 USPQ2d 1957, 1960 (Fed. Cir. 2004). 
(reversing the lower court’s grant of summary judgement 
of invalidity for failure to consider ‘unexpected 
results’ evidence obtained from post-filing that could 
be relevant to the patent validity inquiry).

See MPEP § 716 - § 716.06 for a discussion of 
objective evidence and its role in the final legal determination 
of whether a claimed invention would have 
been obvious under 35 U.S.C. 103.

2141.01Scope and Content of the Prior 
Art [R-3]

I.PRIOR ART AVAILABLE UNDER 35 U.S.C. 
102 IS AVAILABLE UNDER 35 
U.S.C. 103

“Before answering Graham’s ‘content’ inquiry, it 
must be known whether a patent or publication is in 
the prior art under 35 U.S.C. § 102.” Panduit Corp. v. 
Dennison Mfg. Co., 810 F.2d 1561, 1568, 1 USPQ2d 
1593, 1597 (Fed. Cir.), cert. denied, 481 U.S. 1052 
(1987). Subject matter that is prior art under 
35 
U.S.C. 102 can be used to support a rejection 
under section 103. Ex parte Andresen, 212 USPQ 100, 
102 (Bd. Pat. App. & Inter. 1981) (“it appears to us 
that the commentator [of 35 U.S.C.A.] and the [congressional] 
committee viewed section 103 as including 
all of the various bars to a patent as set forth in 
section 102.”).

A 35 U.S.C. 103 rejection is based on 35 U.S.C. 
102(a), 102(b), 102(e), etc. depending on the type of 
prior art reference used and its publication or issue 




 

date. For instance, an obviousness rejection over a 
U.S. patent which was issued more than 1 year before 
the filing date of the application is said to be a statutory 
bar just as if it anticipated the claims under 35 
U.S.C. 102(b). Analogously, an obviousness rejection 
based on a publication which would be applied under 
102(a) if it anticipated the claims can be overcome by 
swearing behind the publication date of the reference 
by filing an affidavit or declaration under 37 CFR 
1.131.

For an overview of what constitutes prior art under 
35 
U.S.C. 102, see MPEP § 901 - § 901.06(d) and 
§
 
2121 - § 2129.

II.SUBSTANTIVE CONTENT OF THE PRIOR 
ART

See MPEP § 2121 - § 2129 for case law relating to 
the substantive content of the prior art (e.g., availability 
of inoperative devices, extent to which prior art 
must be enabling, broad disclosure rather than preferred 
embodiments, admissions, etc.).

III.CONTENT OF THE PRIOR ART IS DETERMINED 
AT THE TIME THE INVENTION 
WAS MADE TO AVOID HINDSIGHT

The requirement “at the time the invention was 
made” is to avoid impermissible hindsight. See MPEP 
§ 2145, paragraph X.A. for a discussion of rebutting 
applicants’ arguments that a rejection is based on 
hindsight.

“It is difficult but necessary that the decisionmaker 
forget what he or she has been taught . . . about the 
claimed invention and cast the mind back to the time 
the invention was made (often as here many years), to 
occupy the mind of one skilled in the art who is presented 
only with the references, and who is normally 
guided by the then-accepted wisdom in the art.” W.L. 
Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 
1540, 220 USPQ 303, 313 (Fed. Cir. 1983), cert. 
denied, 469 U.S. 851 (1984). 

IV.35 U.S.C. 103(c) — EVIDENCE REQUIRED 
TO SHOW CONDITIONS OF 35 U.S.C. 103 
(c) APPLY

An applicant who wants to avail himself or herself 
of the benefits of 35 U.S.C. 103(c) has the burden of 
establishing that subject matter which only qualifies 
as prior art under subsection (e), (f) or (g) of section 
102 used in a rejection under 35 U.S.C. 103(a)
and the claimed invention were, at the time the invention 
was made, owned by the same person or subject 
to an obligation of assignment to the same person. Ex 
parte Yoshino, 227 USPQ 52 (Bd. Pat. App. & Inter. 
1985). Likewise, an applicant who wants to avail 
himself or herself of the benefits of the joint research 
provisions of 35 U.S.C. 103(c) (for applications pending 
on or after December 10, 2004) has the burden of 
establishing that:

(A)the claimed invention was made by or on 
behalf of parties to a joint research agreement that 
was in effect on or before the date the claimed invention 
was made;

(B)the claimed invention was made as a result of 
activities undertaken within the scope of the joint 
research agreement; and

(C)the application for patent for the claimed 
invention discloses or is amended to disclose the 
names of the parties to the joint research agreement. 

This prior art disqualification is only applicable for 
subject matter which only qualifies as prior art under 
subsection (e), (f) or (g) of 35 U.S.C. 102 used in a 
rejection under 35 U.S.C. 103(a).

Note that for applications filed prior to November 
29, 1999, and granted as patents prior to December 
10, 2004, 35 U.S.C. 103(c) is limited on its face to 
subject matter developed by another person which 
qualifies as prior art only under subsection (f) or (g) 
of section 102. See MPEP § 706.02(l)(1). See also In 
re Bartfeld, 925 F.2d 1450, 1453-54, 17 
USPQ2d 
1885, 1888 (Fed. Cir. 1991) (Applicant attempted to 
overcome a 35 U.S.C. 102(e)/103 rejection with a terminal 
disclaimer by alleging that the public policy 
intent of 35 U.S.C 103(c) was to prohibit the use of 
“secret” prior art in obviousness determinations. The 
court rejected this argument, holding “We may not 
disregard the unambiguous exclusion of §
 
102(e) 
from the statute’s purview.”).

See MPEP § 706.02(l)(2) for the requirements 
which must be met to establish common ownership 
or a joint research agreement.




 

2141.01(a)Analogous and Nonanalogous 
Art [R-3]



I. TO RELY ON A REFERENCE UNDER 
35 U.S.C. 103, IT MUST BE ANALOGOUS 
PRIOR ART

The examiner must determine what is “analogous 
prior art” for the purpose of analyzing the obviousness 
of the subject matter at issue. “In order to rely on 
a reference as a basis for rejection of an applicant’s 
invention, the reference must either be in the field of 
applicant's endeavor or, if not, then be reasonably pertinent 
to the particular problem with which the inventor 
was concerned.” In re Oetiker, 977 F.2d 1443, 
1446, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). See 
also In re Deminski, 796 F.2d 436, 230 USPQ 313 
(Fed. Cir. 1986); In re Clay, 966 F.2d 656, 659, 23 
USPQ2d 1058, 1060-61 (Fed. Cir. 1992) (“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.”); Wang Laboratories Inc. v. Toshiba Corp., 
993 F.2d 858, 26 USPQ2d 1767 (Fed. Cir. 1993); and 
State Contracting & Eng’g Corp. v. Condotte America, 
Inc., 346 F.3d 1057, 1069, 68 USPQ2d 1481, 
1490 (Fed. Cir. 2003) (where the general scope of a 
reference is outside the pertinent field of endeavor, the 
reference may be considered analogous art if subject 
matter disclosed therein is relevant to the particular 
problem with which the inventor is involved). 



II. PTO CLASSIFICATION IS SOME EVIDENCE 
OF ANALOGY, BUT SIMILARITIES 
AND DIFFERENCES IN STRUC-
TURE AND FUNCTION CARRY MORE 
WEIGHT

While Patent Office classification of references and 
the cross-references in the official search notes of the 
class definitions are some evidence of “nonanalogy” 
or “analogy” respectively, the court has found “the 
similarities and differences in structure and function 
of the inventions to carry far greater weight.” In re 
Ellis, 476 F.2d 1370, 1372, 177 USPQ 526, 527 
(CCPA 1973) (The structural similarities and functional 
overlap between the structural gratings shown 
by one reference and the shoe scrapers of the type 
shown by another reference were readily apparent, 
and therefore the arts to which the reference patents 
belonged were reasonably pertinent to the art with 
which appellant’s invention dealt (pedestrian floor 
gratings).); In re Clay, 966 F.2d 656, 23 USPQ2d 
1058 (Fed. Cir. 1992) (Claims were directed to a process 
for storing a refined liquid hydrocarbon product 
in a storage tank having a dead volume between the 
tank bottom and its outlet port wherein a gelled solution 
filled the tank’s dead volume to prevent loss of 
stored product while preventing contamination. One 
of the references relied upon disclosed a process for 
reducing the permeability of natural underground 
hydrocarbon bearing formations using a gel similar to 
that of applicant to improve oil production. The court 
disagreed with the PTO’s argument that the reference 
and claimed inventions were part of the same 
endeavor, “maximizing withdrawal of petroleum 
stored in petroleum reserves,” and found that the 
inventions involved different fields of endeavor since 
the reference taught the use of the gel in a different 
structure for a different purpose under different temperature 
and pressure conditions, and since the application 
related to storage of liquid hydrocarbons rather 
than extraction of crude petroleum. The court also 
found the reference was not reasonably pertinent to 
the problem with which the 
inventor was concerned 
because a person having ordinary skill in the art 
would not reasonably have expected to solve the 
problem of dead volume in tanks for refined petroleum 
by considering a reference dealing with plugging 
underground formation anomalies.).



III. ANALOGY IN THE CHEMICAL ARTS

See, for example, Ex parte Bland, 3 USPQ2d 1103 
(Bd. Pat App. & Inter. 1986) (Claims were drawn to a 
particulate composition useful as a preservative for an 
animal foodstuff (or a method of inhibiting fungus 
growth in an animal foodstuff therewith) 
comprising 
verxite having absorbed thereon propionic 
acid. All references were concerned with absorbing 
biologically active materials on carriers, and therefore 
the teachings in each of the various references 
would 
have been pertinent to the problems in the 




 

other references and the invention at hand.); Stratoflex, 
Inc. v. Aeroquip Corp., 713 F.2d 1530, 218 USPQ 
871 (Fed. Cir. 1983) (Problem confronting inventor 
was preventing electrostatic buildup in PTFE tubing 
caused by hydrocarbon fuel flow while precluding 
leakage of fuel. Two prior art references relied upon 
were in the rubber hose art, both referencing the problem 
of electrostatic buildup caused by fuel flow. The 
court found that because PTFE and rubber are used by 
the same hose manufacturers and experience the same 
and similar problems, a solution found for a problem 
experienced with either PTFE or rubber hosing would 
be looked to when facing a problem with the other.); 
In re Mlot-Fijalkowski, 676 F.2d 666, 213 USPQ 713 
(CCPA 1982) (Problem faced by appellant was 
enhancement and immobilization of dye penetrant 
indications. References which taught the use of dyes 
and finely divided developer materials to produce colored 
images preferably in, but not limited to, the 
duplicating paper art were properly relied upon 
because the court found that appellant’s problem was 
one of dye chemistry, and a search for its solution 
would include the dye arts in general.).



IV. ANALOGY IN THE MECHANICAL 
ARTS

See, for example, In re Oetiker, 977 F.2d 1443, 
24 
USPQ2d 1443 (Fed. Cir. 1992) (Applicant claimed 
an 
improvement in a hose clamp which differed from 
the prior art in the presence of a preassembly “hook” 
which maintained the preassembly condition of the 
clamp and disengaged automatically when the clamp 
was tightened. The Board relied upon a reference 
which disclosed a hook and 
eye fastener for use in 
garments, reasoning that all hooking problems are 
analogous. The court held the reference was not 
within the field of applicant’s endeavor, and was not 
reasonably pertinent to the particular problem with 
which the inventor was concerned because it had not 
been shown that a person of ordinary skill, seeking to 
solve a problem of fastening a hose clamp, would reasonably 
be expected or 
motivated to look to fasteners 
for garments. The Commissioner further argued in the 
brief on appeal that a disengageable catch is a common 
everyday mechanical concept, however the court 
held that the Commissioner did not explain why a 
“catch” of unstated structure is such a concept, and 
why it would have made the claimed invention obvious.). 
Compare Stevenson v. International Trade 
Comm., 612 F.2d 546, 550, 204 USPQ 276, 280 
(CCPA 1979) (“In a simple mechanical invention a 
broad spectrum of prior art must be explored and it is 
reasonable to permit inquiry into other areas where 
one of ordinary skill in the art would be aware that 
similar problems exist.”). See also In re Bigio, 
381 
F.3d 1320, 1325-26, 72 USPQ2d 1209, 1211-12 
(Fed. Cir. 2004). The patent application claimed a 
“hair brush” having a specific bristle configuration. 
The Board affirmed the examiner’s rejection of the 
claims as being obvious in view of prior art patents 
disclosing toothbrushes. 381 F.3d at 1323, 
72 
USPQ2d at 1210. The applicant disputed that the 
patent references constituted analogous art. On 
appeal, the court upheld the Board’s interpretation of 
the claim term “hair brush” to encompass any brush 
that may be used for any bodily hair, including facial 
hair. 381 F.3d at 1323-24, 72 USPQ2d at 1211. With 
this claim interpretation, the court applied the “field 
of endeavor test” for analogous art and determined 
that the references were within the field of applicant’s 
endeavor and hence was analogous art because toothbrushes 
are structurally similar to small brushes for 
hair, and a toothbrush could be used to brush facial 
hair. 381 F.3d at 1326, 72 USPQ2d at 1212.

Also see In re Deminski, 796 F.2d 436, 230 USPQ 
313 (Fed. Cir. 1986) (Applicant’s claims related to 
double-acting high pressure gas transmission line 
compressors in which the valves could be removed 
easily for replacement. The Board relied upon references 
which taught either a double-acting piston 
pump or a double-acting piston compressor. The court 
agreed that since the cited pumps and compressors 
have essentially the same function and structure, the 
field of endeavor includes both types of double-action 
piston devices for moving fluids.); Pentec, Inc. v. 
Graphic Controls Corp., 776 F.2d 309, 227 USPQ 
766 (Fed. Cir. 1985) (Claims at issue were directed to 
an instrument marker pen body, the improvement 
comprising a pen arm holding means having an integrally 
molded hinged member for folding over against 
the pen body. Although the patent owners argued the 
hinge and fastener art was nonanalogous, the court 
held that the problem confronting the inventor was the 
need for a simple holding means to enable frequent, 
secure attachment and easy removal of a marker pen 




 

to and from a pen arm, and one skilled in the pen art 
trying to solve that problem would have looked to the 
fastener and hinge art.); and Ex parte Goodyear Tire 
& Rubber Co., 230 USPQ 357 (Bd. Pat. App. & Inter. 
1985) (A reference in the clutch art was held reasonably 
pertinent to the friction problem faced by applicant, 
whose claims were directed to a braking 
material, because brakes and clutches utilize interfacing 
materials to accomplish their respective purposes.).




V. ANALOGY IN THE ELECTRICAL 
ARTS

See, for example, Wang Laboratories, Inc. v. 
Toshiba Corp., 993 F.2d 858, 26 USPQ2d 1767 (Fed. 
Cir. 1993) (Patent claims were directed to single in-
line memory modules (SIMMs) for installation on a 
printed circuit motherboard for use in personal computers. 
Reference to a SIMM for an industrial controller 
was not necessarily in the same field of endeavor 
as the claimed subject matter merely because it 
related to memories. Reference was found to be in a 
different field of endeavor because it involved memory 
circuits in which modules of varying sizes may be 
added or replaced, whereas the claimed invention 
involved compact modular memories. Furthermore, 
since memory modules of the claims at issue were 
intended for personal computers and used dynamic 
random-access-memories, whereas reference SIMM 
was developed for use in large industrial machine 
controllers and only taught the use of static random- 
access-memories or read-only-memories, the finding 
that the reference was nonanalogous was supported by 
substantial evidence.); Medtronic, Inc. v. Cardiac 
Pacemakers, 721 F.2d 1563, 220 USPQ 97 (Fed. Cir. 
1983) (Patent claims were drawn to a cardiac pacemaker 
which comprised, among other components, a 
runaway inhibitor means for preventing a pacemaker 
malfunction from causing pulses to be applied at too 
high a frequency rate. Two references disclosed circuits 
used in high power, high frequency devices 
which inhibited the runaway of pulses from a pulse 
source. The court held that one of ordinary skill in the 
pacemaker designer art faced with a rate-limiting 
problem would look to the solutions of others faced 
with rate limiting problems, and therefore the references 
were in an analogous art.).



VI. EXAMPLES OF ANALOGY IN THE 
DESIGN ARTS

See MPEP § 1504.03 for a discussion of the relevant 
case law setting forth the general requirements 
for analogous art in design applications.

For examples of analogy in the design arts, see In re 
Rosen, 673 F.2d 388, 213 USPQ 347 (CCPA 1982) 
(The design at issue was a coffee table of contemporary 
styling. The court held designs of contemporary 
furniture other than coffee tables, such as the desk and 
circular glass table top designs of the references relied 
upon, would reasonably fall within the scope of the 
knowledge of the designer of 
ordinary skill.); Ex 
parte Pappas, 23 USPQ2d 1636 (Bd. Pat. App. & 
Inter. 1992) (At issue was an ornamental design for a 
feed bunk with an inclined corner configuration. 
Examiner relied upon references to a bunk lacking 
the 
inclined corners claimed by appellant and the 
Architectural Precast Concrete Drafting Handbook. 
The Board found the Architectural Precast Concrete 
Drafting Handbook was analogous art, noting that a 
bunk may be a wood or concrete trough, and that both 
references relied upon “disclose structures in which at 
least one upstanding leg is generally perpendicular to 
a base portion to define a corner configuration 
between the leg and base portion.”); In re Butera, 1 
F.3d 1252, 28 USPQ2d 1399 (Fed. Cir. 1993) (unpublished 
- not citable as precedent) (The claimed invention, 
a spherical design for a combined insect 
repellent and air freshener, was rejected by the Board 
as obvious over a single reference to a design for a 
metal ball anode. The court reversed, holding the reference 
design to be nonanalogous art. “A prior design 
is of the type claimed if it has the same general use as 
that claimed in the design patent application . . . . One 
designing a combined insect repellent and air freshener 
would therefore not have reason to know of or 
look to a design for a metal ball anode.” 28 USPQ2d 
at 1400.). 

2141.02Differences Between Prior Art 
and Claimed Invention [R-5]

Ascertaining the differences between the prior art 
and the claims at issue requires interpreting the claim 
language, and considering both the invention and the 
prior art references as a whole. See MPEP § 2111 - 




 

§
 
2116.01 for case law pertaining to claim interpretation.


I.THE CLAIMED INVENTION AS A 
WHOLE MUST BE CONSIDERED

In determining the differences between the prior art 
and the claims, the question under 35 U.S.C. 103 is 
not whether the differences themselves would have 
been obvious, but whether the claimed invention as a 
whole would have been obvious. Stratoflex, Inc. v. 
Aeroquip Corp., 713 F.2d 1530, 218 USPQ 871 (Fed. 
Cir. 1983); Schenck v. Nortron Corp., 713 F.2d 782, 
218 USPQ 698 (Fed. Cir. 1983) (Claims were directed 
to a vibratory testing machine (a hard-bearing wheel 
balancer) comprising a holding structure, a base structure, 
and a supporting means which form “a single 
integral and gaplessly continuous piece.” Nortronargued the invention is just making integral what had 
been made in four bolted pieces, improperly limiting 
the focus to a structural difference from the prior art 
and failing to consider the invention as a whole. The 
prior art perceived a need for mechanisms to dampen 
resonance, whereas the inventor eliminated the need 
for dampening via the one-piece gapless support 
structure. “Because that insight was contrary to the 
understandings and expectations of the art, the structure 
effectuating it would not have been obvious to 
those skilled in the art.” 713 F.2d at 785, 218 USPQ at 
700 (citations omitted).).

See also In re Hirao, 535 F.2d 67, 190 USPQ 15 
(CCPA 1976) (Claims were directed to a three step 
process for preparing sweetened foods and drinks. 
The first two steps were directed to a process of producing 
high purity maltose (the sweetener), and the 
third was directed to adding the maltose to foods and 
drinks. The parties agreed that the first two steps were 
unobvious but formed a known product and the third 
step was obvious. The Solicitor argued the preamble 
was directed to a process for preparing foods and 
drinks sweetened mildly and thus the specific method 
of making the high purity maltose (the first two steps 
in the claimed process) should not be given weight, 
analogizing with product-by-process claims. The 
court held “due to the admitted unobviousness of the 
first two steps of the claimed combination of steps, 
the subject matter as a whole would not have been 
obvious to one of ordinary skill in the art at the time 
the invention was made.” 535 F.2d at 69, 190 USPQ 
at 17 (emphasis in original). The preamble only 
recited the purpose of the process and did not limit the 
body of the claim. Therefore, the claimed process was 
a three step process, not the product formed by two 
steps of the process or the third step of using that 
product.). 

II.DISTILLING THE INVENTION DOWN 
TO A “GIST” OR “THRUST” OF AN INVENTION 
DISREGARDS “AS A WHOLE” 
REQUIREMENT

Distilling an invention down to the “gist” or 
“thrust” of an invention disregards the requirement of 
analyzing the subject matter “as a whole.” W.L. Gore 
& Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 
220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 
U.S. 851 (1984) (restricting consideration of the 
claims to a 10% per second rate of stretching of unsintered 
PTFE and disregarding other limitations resulted 
in treating claims as though they read differently than 
allowed); Bausch & Lomb v. Barnes-Hind/
Hydrocurve, Inc., 796 F.2d 443, 447-49, 230 USPQ 
416, 419-20 (Fed. Cir. 1986), cert. denied, 484 U.S. 
823 (1987) (District court focused on the “concept of 
forming ridgeless depressions having smooth rounded 
edges using a laser beam to vaporize the material,” 
but “disregarded express limitations that the product 
be an ophthalmic lens formed of a transparent cross-
linked polymer and that the laser marks be surrounded 
by a smooth surface of unsublimated polymer.”). See 
also Jones v. Hardy, 727 F.2d 1524, 1530, 220 USPQ 
1021, 1026 (Fed. Cir. 1984) (“treating the advantage 
as the invention disregards statutory requirement that 
the invention be viewed ‘as a whole’”); Panduit Corp. 
v. Dennison Mfg. Co., 810 F.2d 1561, 1 
USPQ2d 1593 
(Fed. Cir.), cert. denied, 481 U.S. 1052 (1987) (district 
court improperly distilled claims down to a one 
word solution to a problem).

III.DISCOVERING SOURCE/CAUSE OF A 
PROBLEM IS PART OF “AS A WHOLE” 
INQUIRY

“[A] patentable invention may lie in the discovery 
of the source of a problem even though the remedy 
may be obvious once the source of the problem is 
identified. This is part of the ‘subject matter as a 
whole’ which should always be considered in determining 
the obviousness of an invention under 35 




 

U.S.C. § 103.” In re Sponnoble, 405 F.2d 578, 585, 
160 USPQ 237, 243 (CCPA 1969). However, “discovery 
of the cause of a problem . . does not always result 
in a patentable invention. . . . [A] different situation 
exists where the solution is obvious from prior art 
which contains the same solution for a similar problem.” 
In re Wiseman, 596 F.2d 1019, 1022, 201 USPQ 
658, 661 (CCPA 1979) (emphasis in original). 

In In re Sponnoble, the claim was directed to a plural 
compartment mixing vial wherein a center seal 
plug was placed between two compartments for temporarily 
isolating a liquid-containing compartment 
from a solids-containing compartment. The claim differed 
from the prior art in the selection of butyl rubber 
with a silicone coating as the plug material instead of 
natural rubber. The prior art recognized that leakage 
from the liquid to the solids compartment was a problem, 
and considered the problem to be a result of 
moisture passing around the center plug because of 
microscopic fissures inherently present in molded or 
blown glass. The court found the inventor discovered 
the cause of moisture transmission was through the 
center plug, and there was no teaching in the prior art 
which would suggest the necessity of selecting applicant's 
plug material which was more impervious to 
liquids than the natural rubber plug of the prior art.

In In re Wiseman, 596 F.2d at 1022, 201 USPQ at 
661, claims directed to grooved carbon disc brakes 
wherein the grooves were provided to vent steam or 
vapor during a braking action to minimize fading of 
the brakes were rejected as obvious over a reference 
showing carbon disc brakes without grooves in combination 
with a reference showing grooves in noncarbon 
disc brakes for the purpose of cooling the faces of 
the braking members and eliminating dust, thereby 
reducing fading of the brakes. The court affirmed the 
rejection, holding that even if applicants discovered 
the cause of a problem, the solution would have been 
obvious from the prior art which contained the same 
solution (inserting grooves in disc brakes) for a similar 
problem.

IV.APPLICANTS ALLEGING DISCOVERY 
OF A SOURCE OF A PROBLEM MUST 
PROVIDE SUBSTANTIATING EVI-
DENCE

Applicants who allege they discovered the source 
of a problem must provide evidence substantiating the 
allegation, either by way of affidavits or declarations, 
or by way of a clear and persuasive assertion in the 
specification. In re Wiseman, 596 F.2d 1019, 201 
USPQ 658 (CCPA 1979) (unsubstantiated statement 
of counsel was insufficient to show appellants discovered 
source of the problem); In re Kaslow, 707 F.2d 
1366, 217 USPQ 1089 (Fed. Cir. 1983) (Claims were 
directed to a method for redeeming merchandising 
coupons which contain a UPC “5-by-5” bar code 
wherein, among other steps, the memory at each 
supermarket would identify coupons by manufacturer 
and transmit the data to a central computer to provide 
an audit thereby eliminating the need for clearinghouses 
and preventing retailer fraud. In challenging 
the propriety of an obviousness rejection, appellant 
argued he discovered the source of a problem (retailer 
fraud and manual clearinghouse operations) and its 
solution. The court found appellant’s specification did 
not support the argument that he discovered the 
source of the problem with respect to retailer fraud, 
and that the claimed invention failed to solve the 
problem of manual clearinghouse operations.).

V.DISCLOSED INHERENT PROPERTIES 
ARE PART OF “AS A WHOLE” INQUIRY

“In determining whether the invention as a whole 
would have been obvious under 35 U.S.C. 103, we 
must first delineate the invention as a whole. In delineating 
the invention as a whole, we look not only to 
the subject matter which is literally recited in the 
claim in question... but also to those properties of the 
subject matter which are inherent in the subject matter 
and are disclosed in the specification. . . Just as we 
look to a chemical and its properties when we examine 
the obviousness of a composition of matter claim, 
it is this invention as a whole, and not some part of it, 
which must be obvious under 35 U.S.C. 103.” In re 
Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 
1977) (emphasis in original) (citations omitted) (The 
claimed wastewater treatment device had a tank volume 
to contractor area of 0.12 gal./sq. ft. The court 
found the invention as a whole was the ratio of 0.12 
and its inherent property that the claimed devices 
maximized treatment capacity regardless of other 
variables in the devices. The prior art did not recognize 
that treatment capacity was a function of the tank 
volume to contractor ratio, and therefore the parameter 
optimized was not recognized in the art to be a 




 

result-effective variable.). See also In re Papesch, 315 
F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963) 
(“From the standpoint of patent law, a compound and 
all its properties are inseparable.”).

Obviousness cannot be predicated on what is not 
known at the time an invention is made, even if the 
inherency of a certain feature is later established. In re 
Rijckaert, 9 F.2d 1531, 28 USPQ2d 1955 (Fed. Cir. 
1993). See MPEP § 2112 for the requirements of 
rejections based on inherency.

VI.PRIOR ART MUST BE CONSIDERED IN 
ITS ENTIRETY, INCLUDING DISCLOSURES 
THAT TEACH AWAY FROM THE 
CLAIMS

A prior art reference must be considered in its 
entirety, i.e., as a whole, including portions that would 
lead away from the claimed invention. W.L. Gore & 
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 
USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 
851 (1984) (Claims were directed to a process of producing 
a porous article by expanding shaped, unsintered, 
highly crystalline poly(tetrafluoroethylene) 
(PTFE) by stretching said PTFE at a 10% per second 
rate to more than five times the original length. The 
prior art teachings with regard to unsintered PTFE 
indicated the material does not respond to conventional 
plastics processing, and the material should be 
stretched slowly. A reference teaching rapid stretching 
of conventional plastic polypropylene with 
reduced crystallinity combined with a reference teaching 
stretching unsintered PTFE would not suggest 
rapid stretching of highly crystalline PTFE, in light of 
the disclosures in the art that teach away from the 
invention, i.e., that the conventional polypropylene 
should have reduced crystallinity before stretching, 
and that PTFE should be stretched slowly.).

However, “the prior art’s mere disclosure of more 
than one alternative does not constitute a teaching 
away from any of these alternatives because such disclosure 
does not criticize, discredit, or otherwise discourage 
the solution claimed….” In re Fulton, 
391 
F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. 
Cir. 2004). See also MPEP § 2123.

2141.03Level of Ordinary Skill in the 
Art [R-2]

FACTORS TO CONSIDER IN DETERMINING 
LEVEL OF ORDINARY SKILL 

“Factors that may be considered in determining 
level of ordinary skill in the art include (1) the educational 
level of the inventor; (2) type of problems 
encountered in the art; (3) prior art solutions to those 
problems; (4) rapidity with which innovations are 
made; (5) sophistication of the technology; and (6) 
educational level of active workers in the field.” Environmental 
Designs, Ltd. v. Union Oil Co., 713 F.2d 
693, 696, 218 USPQ 865, 868 (Fed. Cir. 1983), cert. 
denied, 464 U.S. 1043 (1984). 

The “hypothetical ‘person having ordinary skill in 
the art’ to which the claimed subject matter pertains 
would, of necessity have the capability of understanding 
the scientific and engineering principles applicable 
to the pertinent art.” Ex parte Hiyamizu, 
10 
USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988) 
(The Board disagreed with the examiner’s definition 
of one of ordinary skill in the art (a doctorate level 
engineer or scientist working at least 40 hours per 
week in semiconductor research or development), 
finding that the hypothetical person is not definable 
by way of credentials, and that the evidence in the 
application did not support the conclusion that such a 
person would require a doctorate or equivalent knowledge 
in science or engineering.). 

References which do not qualify as prior art 
because they postdate the claimed invention may be 
relied upon to show the level of ordinary skill in the 
art at or around the time the invention was made. Ex 
parte Erlich, 22 USPQ 1463 (Bd. Pat. App. & Inter. 
1992). Moreover, documents not available as prior 
art because the documents were not widely disseminated 
may be used to demonstrate the level of ordinary 
skill in the art. For example, the document may 
be relevant to establishing “a motivation to combine 
which is implicit in the knowledge of one of ordinary 
skill in the art.” National Steel Car Ltd. v. Canadian 
Pacific Railway Ltd., 357 F.3d 1319, 1338, 69 
USPQ2d 1641, 1656 (Fed. Cir. 2004)(holding that a 
drawing made by an engineer that was not prior art 
may nonetheless “be used to demonstrate a motivation 
to combine implicit in the knowledge of one of 
ordinary skill in the art”).




 

SPECIFYING A PARTICULAR LEVEL OF 
SKILL IS NOT NECESSARY WHERE THE PRIOR 
ART ITSELF REFLECTS AN APPROPRIATE 
LEVEL

If the only facts of record pertaining to the level of 
skill in the art are found within the prior art of record, 
the court has held that an invention may be held to 
have been obvious without a specific finding of a particular 
level of skill where the prior art itself reflects 
an appropriate level. Chore-Time Equipment, Inc. v. 
Cumberland Corp., 713 F.2d 774, 218 USPQ 673 
(Fed. Cir. 1983). See also Okajima v. Bourdeau, 261 
F.3d 1350, 1355, 59 USPQ2d 1795, 1797 (Fed. Cir. 
2001).

ASCERTAINING LEVEL OF ORDINARY SKILL 
IS NECESSARY TO MAINTAIN OBJECTIVITY

“The importance of resolving the level of ordinary 
skill in the art lies in the necessity of maintaining 
objectivity in the obviousness inquiry.” Ryko Mfg. Co. 
v. Nu-Star, Inc., 950 F.2d 714, 718, 21 USPQ2d 1053, 
1057 (Fed. Cir. 1991). The examiner must ascertain 
what would have been obvious to one of ordinary skill 
in the art at the time the invention was made, and not 
to the inventor, a judge, a layman, those skilled in 
remote arts, or to geniuses in the art at hand. Environmental 
Designs, Ltd. v. Union Oil Co., 713 F.2d 693, 
218 USPQ 865 (Fed. Cir. 1983), cert. denied, 464 
U.S. 1043 (1984).