Prior art is not demonstrated to be analogous to the claimed subject matter by simply being within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Here, for example, three disputed references—rock carvings, engraved signage, and a machining technique known as Prussian Blue—were found to not constitute analogous prior art because an inventor would not have considered these references when trying to improve the claimed circuit board tester alignment markings. “Although familiar items may have obvious uses beyond their primary purposes, a reference is only reasonably pertinent when it logically would have commended itself to an inventor’s attention in considering his problem.” This would be a good case to consult and cite in response to a rejection predicated on prior art that is outside of the particular field of the claimed invention.
Background / Facts: The patents being asserted here are directed to circuit board testers for testing circuit boards before the boards are integrated into finished products. The claims recite systems and methods related to marking certain holes on interface plates in order to align circuit boards during testing. The accused infringer conceded that three stipulated prior art references do not disclose an interface plate comprising “a second removable indicia overlying said first predetermined indicia … wherein said second indicia is removed from areas of said plate adjacent each of said predetermined holes.”
Issue(s): Whether three additional references—rock carvings, engraved signage, and a machining technique known as Prussian Blue—constitute analogous prior art.
Holding(s): No. “The question is not whether simple concepts such as rock carvings, engraved signage, or Prussian Blue dye are within the knowledge of lay people or even within the knowledge of a person of ordinary skill in the art. Rather, the question is whether an inventor would look to this particular art to solve the particular problem at hand. Here, [the patentee] put forward evidence that an inventor would not have considered the disputed prior art when trying to improve marking. It is not hard to arrive at that conclusion. Even though an inventor may be aware of rock carvings, it is not surprising that the inventor would not have looked to rock carvings to improve the process of painting small dots on interface plates for expensive circuit board testers. And, even though an inventor may work in an office with engraved signage, the inventor would not necessarily have considered using the techniques disclosed in engraved signage to solve the problem of marking circuit board tester interface plates. Finally, even though an inventor in this case was aware of Prussian Blue, it is not surprising that one of skill in the art would not consider using a machining technique that employed removable dye on interface plates where such dye could fall into and interfere with the underlying electronics of the circuit board testers.”