How does the KSR decision affect the determination of analogous art?
The Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), did not fundamentally change the test for analogous art as stated in In re Bigio. According to MPEP 2141.01(a):
“The Supreme Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007), did not change the test for analogous art as stated in Bigio. Under Bigio, a reference need not be from the same field of endeavor as the claimed invention in order to be analogous art.”
The MPEP further explains that this is consistent with the Supreme Court’s instruction in KSR that “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one.”
This interpretation allows for a broader consideration of prior art, encouraging examiners to consider references from different fields that may still be relevant to the problem being solved by the invention.
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