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Clarifying the Analogous Arts Test Brenda Simon 1
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Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Aug 17, 2021

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Page 1: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Clarifying the Analogous Arts Test

Brenda Simon

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Page 2: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

35 U.S.C. § 103(a)

A patent may not be obtained ...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 … to a person having ordinary skill in the art to which said subject matter pertains.

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Page 3: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts

(1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary), and

(2) if the reference is not in the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem to be solved.

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Page 4: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Is the Analogous Arts test necessary?

Anticipation

v.

Obviousness

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Page 5: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

PHOSITA (Person Having Ordinary Skill in the Art)

PHOSITA + KSR

Person Having Ordinary Skill and Creativity and Common Sense In The Art

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Page 6: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts

(1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary), and

(2) if the reference is not in the field of the inventor’s endeavor, whether the reference is still reasonably pertinent to the particular problem to be solved.

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Page 7: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Same Field?

Yes.

No. 7

Page 8: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts

(1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary), and

(2) if the reference is not in the field of the inventor’s endeavor, whether

the reference is still reasonably pertinent to the particular problem to be solved.

8

Page 9: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

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What is the Problem Solved?

Determine the problem solved by the invention as claimed in the patent.

Page 10: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts: Problem Solved: In re Klein

10 Figure from Klein patent Nonanalgous Prior Art

Page 11: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts

(1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary), and

(2) if the reference is not in the field of the inventor’s endeavor, whether

the reference is still reasonably pertinent to the particular problem to be solved.

11

Page 12: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts

What is reasonably pertinent?

Determine whether the PHOSITA actually would have considered the reference at the time in question.

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Page 13: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Analogous Arts: Innovention Toys vs. MGA

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Figure from patent Allegedly infringing product

Prior Art = Video Games (not shown)

Page 14: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

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Problem Solved?

Determine the problem solved by the invention as claimed in the patent.

Reasonably Pertinent?

Determine whether the PHOSITA actually would have considered the reference at the time in question.

Page 15: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Concerns

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Page 16: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

Determine analogous art by assessing whether PHOSITAs

actually would have considered a reference in addressing the

problem solved by the invention (as claimed in the patent).

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Page 17: Clarifying the Analogous Arts Test - Stanford University...Analogous Arts (1) whether the art is from the same field of endeavor, regardless of the problem addressed (unnecessary),

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Questions?