Would Combining References Change the Outcome of In re Klein?

In the recent In re Klein decision, the Federal Circuit reversed the Board of Patent Appeals and Interferences’ decision because five separate obviousness rejections were not based on analogous art as compared to the claimed invention. In re Klein, 647 F.3d 1343, 1345 (Fed. Cir. 2011).

The claimed invention was a device for preparing sugar-water nectar for various species comprised of a vessel having a movable partition capable of separating water and sugar until it was desired to mix them. Id. at 1345-46. The partition could be inserted into the vessel at different tracks so that, when filled to a predetermined level, a nectar of the desired concentration of sugar would result from mixing the contents. Id. at 1350-51.

Three of the references (i.e., Roberts, Kirkman, and O’Connor) disclosed vessels, e.g. drawers, intended to retain dry objects each of which had the feature of movable partitions. Id. at 1348-51. The remaining two references (i.e., Greenspan and De Santo) disclosed vessels which would retain a liquid and mix it with a dry component or a second liquid to achieve a desired solution. These vessels contained barriers (also referred to as a “wall” or “partition” in the references) to prevent mixing of the contents until desired. Id. at 1351. The barriers were distinguished from the partitions of both Klein and the other groups of references (i.e., Roberts, Kirkman, and O’Connor) in that they were not movable. Id. at 1352.


Consider whether there might not be a different result if the Examiner in In re Klein had rejected the claims based on a reference, such as Greenspan, disclosing a vessel having a stationary, water-tight partition intended to separate water from a solid in combination of another reference, such as Roberts, teaching a vessel having movable partitions intended to separate material retained therein. The Examiner’s argument could be that it would be obvious to modify the vessel of the primary reference (e.g., Greenspan) to make the partition movable if it were desired to change the ratio of the two substances contained in the vessel prior to filling. This argument could possibly be compatible with the Supreme Court’s decision in KSR. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).

Non-analogous art? The Federal Circuit found the references non-analogous as discussed above. It is true that the vessel claimed by Mr. Klein is filled by a consumer who can change the ratio of sugar and water, where the vessel described, for example, in Greenspan is filled by a manufacturer. However, in both instances, the partition is moved prior to filling and neither vessel has the capacity to vary the concentration of the “ultimate” solution once it is filled. Thus, it is a close call whether the art is analogous.

The foregoing comments are intended as food for thought. Mr. Klein’s invention is certainly convenient for a user and he may well have other secondary considerations in his favor as were as noted by the Federal Circuit. Id. at 1352. Hence, he may well prevail at the end of the day.

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