In Re Jean-jacques Pourtau, 935 F.2d 281 (Fed. Cir. 1991)

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US Court of Appeals for the Federal Circuit - 935 F.2d 281 (Fed. Cir. 1991) May 21, 1991. Rehearing Denied June 17, 1991

Before PAULINE NEWMAN, MAYER and LOURIE, Circuit Judges.



The decision of the Board of Patent Appeals and Interferences in No. 89-0059, sustaining the examiner's rejection of Jean-Jacques Pourtau's application No. 843,777 for obviousness, is affirmed.


Hays is analogous prior art because it is reasonably pertinent to the problem Pourtau faced, how to make a handle on a device used to position panels removable. As Alachian shows, a non-removable handle was already known in the art. Hays adds to this knowledge disclosure of a device used to align wallboard having a removable protruding portion; in fact, Hays says that one object of the invention is to provide a device with a "portion which is severable from the remainder of the clip after the wallboard has been adhesively secured ... so that no portion of the clip remains visible." As all agree, prior art is analogous if it is either within the field of the inventor's endeavor or if it is reasonably pertinent to the particular problem faced by the inventor. See Union Carbide Corp. v. American Can Co., 724 F.2d 1567, 1572, 220 USPQ 584, 588 (Fed. Cir. 1984). We do not consider whether Hays falls within the field of Pourtau's work because it is analogous under the second prong of the test; both Hays and Pourtau address removal of a protruding portion once it is no longer needed.

Pourtau's approach to the issue of analogous prior art is deficient: he first looks at the problems Hays solved and then looks for differences between those problems and his. But the focus here is on Pourtau's problem and the pertinence of Hays to its solution. The board aptly characterized Pourtau's problem and properly concluded that Hays is analogous prior art. Simply because the protrusion in Hays solves problems beyond that addressed by Pourtau does not make it nonanalogous. The board properly combined Hays with Alachian and properly sustained the rejection of Pourtau's application.