2100 Patentability

2141.01(a) Analogous and Nonanalogous Art

Why is the following quote from KSR included in this section about analogous art?:

“Under the correct analysis, any need or problem known in the field of endeavor at the time of the invention and addressed by the patent [or application at issue] can provide a reason for combining the elements in the manner claimed. ” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 420, 82 USPQ2d 1385, 1397 (2007).


The 'problem' being discussed in this portion of KSR has nothing to do with whether a particular reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. This portion of KSR relates to providing a reason for combining the elements of two or more references in the manner claimed by the Applicant. This generally has nothing to do with the problem the inventor was trying to solve in the application being examined. KSR did not address the issue of whether the references being cited in that case were analogous art. The word 'problem' is being used in completely different contexts.




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Idea No. 234