Stay Away From The Non-Analogous Art Argument

MARK TERRY, ESQ.

A Board decision involving a telecommunications-network claim demonstrates how quickly a non-analogous-art argument can fail. The applicant argued that several references should not be combined in an obviousness rejection.

The Board rejected the argument in a single sentence, finding that the references concerned the same field of endeavor—middleboxes operating across multiple address realms on a network—and were therefore properly combinable.

Prior art is analogous when it comes from the same field of endeavor, regardless of the specific problem addressed, or when it is reasonably pertinent to the problem facing the inventor. Those tests are broad enough that many cited references qualify.

The lesson is that applicants should use this argument cautiously. A stronger response will often focus on missing claim limitations, weak motivation to combine, technical incompatibility, or objective evidence of non-obviousness rather than relying primarily on non-analogous art.