The U.S. Court of Appeals for the Federal Circuit affirmed the obviousness rejection of a patent application ruling that patent claims directed to a "hairbrush" would have been obvious in view of a prior art hairbrush reference considered in view of a toothbrush reference. In re Bigio, Case No. 03-1358 (Fed. Cir. Aug. 24, 2004) (Rader J.; Newman, J. dissenting).
In this case, both the examiner and the Board of Patent Appeals and Interferences (the Board) found that toothbrush art is analogous to Bigio’s hairbrush invention. Bigio contends that the "field of endeavor" test for analogous art lacks clear guidelines and leaves the issue to an examiner’s subjective judgment. The scope of analogous art, according to the majority, turns on whether the art is from the same "field of endeavor," regardless of the problem addressed, and, 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.
The Court rejected the contention that the test is unduly subjective. The test requires the U.S. Patent and Trademark Office to determine the appropriate field of endeavor based on the subject matter described in the patent application, including the disclosed embodiments, function and structure of the claimed invention. Thus, according to the majority, the assessment of the field of endeavor is not a wholly subjective call, since there must be a basis in the application for limiting or expanding it.
The Court noted that the Board referred to the structure and function of the claimed invention in the application, and it assessed the field that one of skill in this art would consider to be within the same endeavor as the claimed invention. "Thus, on this record, this court affirms the findings of the Board and upholds its traditional tests for determining the scope of prior art analogous to the claimed invention."
Judge Newman dissented, arguing that a brush for hair has no more relation to a brush for teeth than hair resembles teeth. Judge Newman failed to see any good reason why a person designing an improved hairbrush would look at toothbrush technology. Nor, in her opinion, was it relevant that the hairbrush claims are not limited to scalp hair.
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