United States Court of Appeals
for the Federal Circuit
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(Serial No. 10/200,747)
IN RE ARNOLD G. KLEIN
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2010-1411
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Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: June 6, 2011
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LOUIS W. TOMPROS, Wilmer, Cutler, Pickering, Hale
and Dorr, LLP, of Boston, Massachusetts, argued for
appellant. With him on the brief were LARISSA B. PARK
and KATHERINE B. DIRKS.
CHRISTINA J. HIEBER, Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for appellee. With her on the brief were
RAYMOND T. CHEN, Solicitor, and ROBERT J. MCMANUS,
Associate Solicitor.
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Before NEWMAN, SCHALL, and LINN, Circuit Judges.
SCHALL, Circuit Judge.
IN RE KLEIN 2
Arnold G. Klein appeals the final decision of the
Board of Patent Appeals and Interferences (“Board”)
affirming the rejection of certain claims of U.S. Patent
Application No. 10/200,747 (“'747 application”) as obvious
under 35 U.S.C. § 103. Ex Parte Arnold Gregory Klein,
No. 2009-005721 (B.P.A.I. Mar. 29, 2010) (“Decision”).
Because the Board’s finding that five references at issue
are analogous art is not supported by substantial evi-
dence, the obviousness rejections cannot be sustained and,
accordingly, we reverse.
BACKGROUND
I.
Mr. Klein filed the '747 application, titled “Conven-
ience Nectar Mixing and Storage Devices,” on July 24,
2002. The '747 application concerns a mixing device for
use in preparation of sugar-water nectar for certain bird
and butterfly feeders. J.A. 23. According to the specifica-
tion, the device has a series of rails that, when engaged
with a divider, allow for the creation of two compartments
for separating sugar and water within the device. J.A. 27,
101. The rails are located to divide the device into propor-
tionate volumes of one part sugar to four parts water (to
make hummingbird nectar), one part sugar to six parts
water (to make oriole nectar), and one part sugar to nine
parts water (to make butterfly nectar). Id. Once the
respective compartments have been filled to the same
level with sugar and water, the divider is removed, allow-
ing the sugar and water to mix and be stirred. J.A. 25,
27. The specification does not suggest that the sugar to
water ratios are novel, instead disclosing in the “Back-
ground of the Invention” that these ratios are “currently
recognized as being proportionally equivalent in sugar
content as the birds, and butterflies [sic] natural nectar
food sources.” J.A. 24.
3 IN RE KLEIN
Figures 1, 2A-2B, and 4 of the '747 application, shown
below, illustrate device 11, divider 21, and rails 15, 16,
and 17:
J.A. 112.
The sole independent claim at issue, claim 21, recites:
21. A convenience nectar mixing device for use
in preparation of sugar-water nectar for feeding
hummingbirds, orioles or butterflies, said device
comprising:
a container that is adapted to receive water,
receiving means fixed to said container, and
IN RE KLEIN 4
a divider movably held by said receiving
means for forming a compartment within said
container, wherein said compartment has a vol-
ume that is proportionately less than a volume of
said container, by a ratio established for the for-
mulation of sugar-water nectar for humming-
birds, orioles or butterflies, wherein said
compartment is adapted to receive sugar, and
wherein removal of said divider from said receiv-
ing means allows mixing of said sugar and water
to occur to provide said sugar-water nectar.
J.A. 403. The remaining claims at issue, claims 22-25, 29,
and 30, each depend from claim 21. J.A. 403-04.
In a final rejection dated September 24, 2007, the ex-
aminer made five separate rejections under 35 U.S.C.
§ 103(a): (1) a rejection of claims 21, 22, and 30 over U.S.
Patent No. 580,899 (“Roberts”) in view of the prior art
sugar to water ratios discussed in the Klein specification;
(2) a rejection of claims 21, 22, and 30 over U.S. Patent
No. 1,523,136 (“O’Connor”) in view of the prior art sugar
to water ratios discussed in the Klein specification; (3) a
rejection of claims 21, 22, and 30 over U.S. Patent No.
2,985,333 (“Kirkman”) in view of the prior art sugar to
water ratios discussed in the Klein specification; (4) a
rejection of claims 21-25 and 29 over U.S. Patent No.
2,787,268 (“Greenspan”) in view of the prior art sugar to
water ratios discussed in the Klein specification; and (5) a
rejection of claims 21 and 29 over U.S. Patent No.
3,221,917 (“De Santo”) in view of the prior art sugar to
water ratios discussed in the Klein specification. Mr.
Klein appealed the final rejection to the Board.
II.
The Board affirmed each of the five obviousness rejec-
tions. See Decision at 12-13. The Board described Rob-
5 IN RE KLEIN
erts, O’Connor, Kirkman, Greenspan, and De Santo as
each “teach[ing] a device with a container having a mov-
able divider held in place by a ‘receiving means,’ such as
slots, grooves, or threads, which could be used to divide
ingredients in specific ratios.” Decision at 6-7. In addi-
tion, the Board pointed to the Klein specification’s own
statement that the sugar-water ratios were known. Id. at
5-6. According to the Board, “[t]hose of skill in the art
would have had reason to use the known ratios with the
available containers having movable dividers to achieve
the correct proportions of water and sugar and to mix the
ingredients for different nectars.” Id. at 7. The Board
rejected Mr. Klein’s argument that the five cited refer-
ences are non-analogous art. In doing so, the Board found
that the prior art was properly relied upon by the exam-
iner because it is reasonably pertinent to the problem Mr.
Klein addresses, which the Board found to be “making a
nectar feeder with a movable divider to prepare different
ratios of sugar and water for different animals.” Id. at 8-
9.
Mr. Klein appealed. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4) and 35 U.S.C. § 141.
DISCUSSION
Under the Patent Act, “[a] patent may not be ob-
tained . . . 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.” 35
U.S.C. § 103(a). Although the ultimate determination of
obviousness under § 103 is a question of law, it is based
on several underlying factual findings, including (1) the
scope and content of the prior art; (2) the level of ordinary
skill in the pertinent art; (3) the differences between the
IN RE KLEIN 6
claimed invention and the prior art; and (4) evidence of
secondary factors, such as commercial success, long-felt
need, and the failure of others. Graham v. John Deere
Co., 383 U.S. 1, 17-18 (1966).
We review the Board’s ultimate determination of ob-
viousness de novo and the Board’s factual findings under-
lying that determination for substantial evidence. In re
Kotzab, 217 F.3d 1365, 1369 (Fed. Cir. 2000). The Board’s
determination that a prior art reference is analogous art
presents an issue of fact, reviewed for substantial evi-
dence. In re Icon Health & Fitness, Inc., 496 F.3d 1374,
1378 (Fed. Cir. 2007).
I.
On appeal, Mr. Klein argues that the Board erred
when it summarily concluded that the five cited refer-
ences are “reasonably pertinent to the problem addressed
by Klein.” Decision at 8-9. Although the Board made a
finding of fact as to the particular problem that Mr. Klein
was addressing, specifically, “making a nectar feeder with
a movable divider to prepare different ratios of sugar and
water for different animals,” Decision at 8, Mr. Klein
contends that the Board failed to make any finding that
any of the cited references are “reasonably pertinent” to
that problem. Further, Mr. Klein argues, the Board
identified no evidence that suggests that an inventor
seeking to solve the problem Mr. Klein was addressing,
which Mr. Klein characterizes as a “multiple ratio mixing
problem,” would look to any of the references to address
the problem of preparing different ratios. See Reply Br.
10-15.
The government responds that the Board correctly
found that the prior art references were directed toward
the same problem Mr. Klein sought to solve with his
device, which the government characterizes as a “com-
7 IN RE KLEIN
partment separation problem.” Appellee’s Br. 26. Be-
cause “[t]he problem of keeping things separated is not
unique to nectar mixing and storage devices,” and “noth-
ing about the prior art containers with adjustable, remov-
able dividers is unique to their particular applications,”
the government contends that “[o]ne confronted with
Klein’s desire to keep two ingredients separated and also
allow for them to be mixed together would have readily
consulted these references to discover the broad solution
therein employed, and applied it to his particular applica-
tion with no more than ordinary skill required.” Appel-
lee’s Br. 25-27.
II.
A reference qualifies as prior art for an obviousness
determination under § 103 only when it is analogous to
the claimed invention. Innovention Toys, LLC, v. MGA
Entertainment, Inc., No. 2010-1290, slip op. at 12 (Fed.
Cir. Mar. 21, 2011); In re Bigio, 381 F.3d 1320, 1325 (Fed.
Cir. 2004); In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
“Two separate tests define the scope of analogous prior
art: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed and, (2) if the refer-
ence is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.”
Bigio, at 1325. Here, the Board focused exclusively on the
“reasonably pertinent to the particular problem” test. “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.” Clay, 966 F.2d at
659. “If a reference disclosure has the same purpose as
the claimed invention, the reference relates to the same
IN RE KLEIN 8
problem, and that fact supports use of that reference in an
obviousness rejection.” Id.
Mr. Klein does not challenge the Board’s factual find-
ing of the problem he was addressing, namely “making a
nectar feeder with a movable divider to prepare different
ratios of sugar and water for different animals.” Mr.
Klein argues, however, that Roberts, O’Connor, Kirkman,
Greenspan, and De Santo are each directed to a wholly
different problem than the one he faced. We examine
each reference in turn.
Roberts is directed to an “Apparatus for Keeping Ac-
counts.” The apparatus of Roberts includes receptacles,
such as receptacles 1 and 2 (shown in dotted lines in
Figure 1 below), having a “series of vertical channels 11,
adapted to receive removable partitions 12, by means of
which the receptacle[s] may be subdivided into compart-
ments.” Roberts col.1 ll.41-46, col.2 ll.53-56. According to
Roberts, the receptacles are “designed to receive . . .
statement-cards,” and each includes a hand-hole 10 to
assist in removing the receptacle from a drawer. Roberts
col.1 ll.34-39, col.2 ll.53-56. Figure 1 of Roberts is shown
below:
9 IN RE KLEIN
O’Connor is directed to a tool tray having dividers
that are “readily movable” and that is “adapted to contain
comparatively small articles, for example, drills, reamers,
bits, etc., or hardware supplies such as bolts, nuts and the
like.” O’Connor col.1 ll.8-27. As shown in Figure 1 of
O’Connor, reproduced below, divider 8 is not positioned
flush with the bottom of the tray:
IN RE KLEIN 10
Kirkman is directed to a “Plastic Cabinet Drawer with
Removable Partitions.” Kirkman explains that it “relates
to drawers for relatively small cabinets for containing
various types of small articles, and more particularly to a
drawer of this type provided with removable partitions or
dividers, for dividing the drawer into two or more com-
partments of varying size, with means for frictionally
holding the partitions in adjusted position [sic] within the
drawer.” Kirkman col.1 ll.15-21. As shown in Figure 1 of
Kirkman below, the lower edge of partition 9 has a small
notch:
11 IN RE KLEIN
Mr. Klein argues that, consistent with the Board’s
own express findings, Roberts, O’Connor, and Kirkman
are each directed to a container designed to separate its
contents, as opposed to one designed to facilitate the
mixing of those contents. See Decision at 5 (“Roberts
teaches a container, in particular a drawer for keeping
accounts, which has removable partitions for forming
compartments for the purpose of keeping statement and
account cards separated.”) (emphasis added) (citing Rob-
erts col. 1 ll.7-13); id. (“O’Connor teaches a container, in
particular a tool tray, with removable dividers that may
be placed in the tray for forming compartments for the
purpose of keeping tools and other construction items (e.g.,
bolts, nuts) separated.”) (emphasis added) (citing O'Con-
nor col.1 ll.8-20); id. (“Kirkman teaches a container, in
particular a cabinet drawer, with removable dividers that
may be placed in the drawer for forming compartments
for the purpose of keeping small household articles (e.g.,
IN RE KLEIN 12
hardware, cosmetics, and paperclips) separated.”) (empha-
sis added) (citing Kirkman col.1 ll.20-30). Mr. Klein also
argues that, in view of (1) the hand-hole 10 of Roberts,
(2) how divider 8 of O’Connor is positioned to not be flush
with the bottom of the tray, and (3) the notch in the lower
edge of partition 9 of Kirkman, none of these three refer-
ences is “adapted to receive water,” as is required by
claim 21 of the '747 application.
We agree with Mr. Klein that the Board’s conclusory
finding that Roberts, O’Connor, and Kirkman are analo-
gous is not supported by substantial evidence. The pur-
pose of each of Roberts, O’Connor, or Kirkman is to
separate solid objects. An inventor considering the prob-
lem of “making a nectar feeder with a movable divider to
prepare different ratios of sugar and water for different
animals,” would not have been motivated to consider any
of these references when making his invention, particu-
larly since none of these three references shows a parti-
tioned container that is adapted to receive water or
contain it long enough to be able to prepare different
ratios in the different compartments. See Clay, 966 F.2d
at 659 (“If [a reference] is directed to a different purpose,
the inventor would accordingly have had less motivation
or occasion to consider it.”).1
Turning to the remaining two references, Greenspan
is directed to a “Blood Plasma Bottle” having a compart-
ment for dried plasma and a compartment for water,
1 We agree with Mr. Klein that, to the extent the
government attempts to do so, it cannot redefine the
problem Mr. Klein was addressing as a “compartment
separation problem” on appeal. See Sec. & Exch. Comm’n
v. Chenery Corp., 318 U.S. 80, 94 (1943) (“[A]n adminis-
trative order cannot be upheld unless the grounds upon
which the agency acted in exercising its powers were
those upon which its action can be sustained.”).
13 IN RE KLEIN
where the compartments are separated by a “wall which
is normally plugged during transportation of the bottle.”
Greenspan col.2 ll.12-17. When the plasma is going to be
used, the plasma compartment is unplugged, the plug
becomes the cap for the bottle, and the bottle is shaken to
dissolve the plasma. Id. col.2 ll.17-23. As shown in
Figure 2 of Greenspan, below, the wall 24 cannot be
moved to adjust the relative sizes of the lower (plasma)
compartment 30 or upper (water) compartment 28:
See Greenspan col.2 ll.37-39.
IN RE KLEIN 14
De Santo’s “Fluid Container” has two compartments
designed to hold two different types of fluid, which can be
“rapidly and thoroughly mixed together at the desired
time without opening the container externally” to make,
for example, hair rinses. De Santo col.1 ll.8-17, 23-28.
Compartments 24 and 26 are separated by partition 28,
which is “provided with a central opening 32 defining an
annular valve seat 34 which is engageable with a valve
member 36 to open and close the partition as desired.” Id.
col.2 ll.44-48, 55-58. As shown below in Figure 5, parti-
tion 28 is in a fixed location.
15 IN RE KLEIN
Greenspan and De Santo are not analogous, Mr. Klein
argues, because they do not address multiple ratios or
have a “movable divider.” We agree. While Greenspan
and De Santo are each directed to containers that facili-
tate the mixing of two separated substances together, an
inventor considering the problem of “making a nectar
feeder with a movable divider to prepare different ratios of
sugar and water for different animals,” would not have
been motivated to consider either of these references since
neither of the references shows a movable divider or the
IN RE KLEIN 16
ability to prepare different ratios. 2 Decision at 8 (empha-
sis added). In the Decision, the Board did not set forth
any reasoning in support of its finding that Greenspan
and De Santo are analogous, and thus, this finding is also
not supported by substantial evidence.
Mr. Klein also challenges the Board’s decision on two
additional grounds. Mr. Klein’s second and third argu-
ments on appeal are that the Board erred by finding the
rejected claims obvious, and that the Board improperly
failed to consider Mr. Klein’s evidence of long-felt need to
rebut the prima facie case of obviousness. However, since
we have determined that the Board’s finding that the five
references at issue are analogous art is not supported by
substantial evidence, the references do not qualify as
prior art under 35 U.S.C. § 103. See Clay, 966 F.2d at
658. Therefore, the rejections under 35 U.S.C. § 103
cannot be sustained, and we need not reach Mr. Klein’s
second or third argument. See id. at 660.
CONCLUSION
For the foregoing reasons, we reverse the decision of
the Board. The case is remanded to the Board for further
proceedings consistent with this opinion.
REVERSED AND REMANDED
2 As noted above, we agree with Mr. Klein that the
government cannot now redefine the problem Mr. Klein
was addressing as a “compartment separation problem.”