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In re Clay - 966 F.2d 656 (Fed. Cir. 1992)

Rule:

Two criteria determine whether prior art is analogous: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference 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.

Facts:

Carl D. Clay, an inventor, applied for a patent entitled "Storage of a Refined Liquid Hydrocarbon Product." Clay's invention, which was assigned to Marathon Oil Company, is a process for storing refined liquid hydrocarbon product in a storage tank having a dead volume between the tank bottom and its outlet port. The patent examiner applied two prior art references and rejected Clay's application as being unpatentable under 35 U.S.C.S. § 103 for obviousness. The United States Patent and Trademark Office, Board of Patent Appeals and Interferences, all affirmed the rejection of the claims, the decision from which Clay appealed.

Issue:

Was the rejection of inventor's claims for obviousness under patent law proper where the patent examiner had rejected the application based upon an application of non-analogous prior art?

Answer:

No

Conclusion:

The Court of Appeals for the Federal Circuit concluded that it was error to find that the claims in the patent were obvious based on the references to non-analogous prior art because the art was not within the inventor's field of endeavor or reasonably pertinent to the problem that Clay was attempting to solve with his invention. The Court reversed, finding that one having ordinary skill in the art would not reasonably have expected to solve the problem the inventor's process was directed at by considering a reference to non-analogous prior art.

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