What is Analogous Art?

Analogous art refers to a method of criteria that patent reviewers and courts use to determine whether an idea is too similar to another invention and therefore qualifies as prior art. When looking at a patent application, the reviewer will determine whether the idea is novel and non-obvious to a person of ordinary skill in the claimed field of endeavor.

Some ideas and inventions are so diverse or remote that a person of unordinary skill would be highly unlikely to understand them. If the idea or art is this unique and diverse, it is often referred to as non-analogous and doesn't qualify under the prior art requirement of patent review. However, analogous art that is too similar to another invention or idea will likely not qualify for patent protection.

The analogous art test is very specific. Art is considered analogous when:

  • It is reasonably similar to the problem that the inventor faced; or
  • It is from the same field as the previously claimed invention.

If art is non-analogous, a patent reviewer cannot reject the application solely based on the art, especially if the idea relates to a different field or industry. No inventor could feasibly know about every teaching and idea across all industries. If the idea has a different purpose than other analogous art, the inventor might not have heard of that idea. This cannot be qualified as analogous art in a legal setting or the patent review process.

In order to qualify for a patent, an idea must logically lead to the inventor solving a problem without being too obvious to the ordinary person in the related field.

In the chemical arts, one example of analogous art related to a particulate composition used to inhibit fungus growth in animal foodstuff. The references of this composition were concerned with absorbing biologically active materials on carriers, so the teachings in those references would be pertinent to the problems in other references of the invention.

In another example, an inventor was working to prevent electrostatic buildup in PFTE tubing, which was caused by hydrocarbon fuel flow. Prior art references in this invention showed rubber hose art, which referenced the electrostatic buildup problem. PFTE tubing and rubber are both used by hose manufacturers, causing them to experience similar problems. The solution for the PFTE tubing electrostatic buildup also solved a problem in rubber hosing.

Analogous art examples also exist in other industries. One of the most common industries is mechanical arts. In a simple mechanical invention, the inventor must explore a broad spectrum of prior art. In a court case from 2004, a patent application claimed specific bristle configurations on a hairbrush. When the USPTO Board reviewed the rejection of the claims, the original rejection was made on the basis of claims made on a patent held on a toothbrush. In this example, the court upheld the rejection because the USPTO Board claimed that the application for a hairbrush referred to any bodily hair. Technically, a toothbrush could be used to comb facial hair, so the court ruled that it was within the field of the applicant's endeavor.

Another mechanical example of analogous art occurred when a patent applicant claimed an invention of a double-acting high-pressure gas transmission line compressor could also be used as a double-acting piston pump. Pumps and compressors have essentially the same structure and function, so the field included both types for moving fluids.

In the electrical arts, one example includes a cardiac pacemaker that included a runaway inhibitor to prevent malfunction. In order to make this work, the pacemaker prevented pulses from emitting at too high of frequency rates. The references disclosed circuits that were used in high power, but the court determined that someone of ordinary skill in the art of pacemaker design would look to other solutions for rate-limiting problems. The outcome in this case was analogous art.

In a design case, an inventor of a contemporary coffee table fought that it had a unique design. The courts looked at designs of other contemporary furniture and found that these would reasonably fall within the scope of a designer with ordinary skill in the industry. Simple aspects of an invention, such as the shape or overall functionality, can be considered analogous art when someone of ordinary skill in the area could come to the same conclusion about its purpose.

Why is Analogous Art Important?

When applying for a patent, the process is long and expensive. Some applications take months or even years to be processed by the United States Patent and Trademark Office (USPTO). Filing an application, only to have it rejected because your idea qualifies as analogous art, can cause a lot of frustration. Understanding analogous art and how reviewers look for it can help inventors avoid wasting time and money to try to patent an idea that will not qualify for protection.

In a recent case that went to the Court of Appeals of the Federal Circuit, a company called Natural Alternatives, LLC received a patent for use of desugared beet molasses to remove ice from the roads. The Patent Trial and Appeal Boards (PTAB) invalidated the patent because the reviewers felt the process of using desugared beet molasses was too obvious. The court overturned the board's invalidation of the patent based on the analogous art rule as well as the fact that the PTAB couldn't provide any specific reasons why a person of ordinary skill would have used this method.

What Could Happen When You Use Analogous Art?

When considering whether an idea qualifies as analogous art, you must defend your invention by making sure the USPTO reviewers satisfy the requirements of the analogous art test. By doing so, you can protect your idea and avoid having the application for patent protection rejected based on the concept of analogous art.

Another legal example of this concept involved a case between QXQ and Circuit Check. Circuit Check held patents related to marking interface plates that were used for testing circuit boards. The company filed a suit against QXQ for infringement, but QXQ claimed that a previous company had already used similar methods, so Circuit Check's patents were invalid based on analogous art. Those methods, according to QXQ, were visible in rock carvings. The issue arose as to whether prior art qualifies as analogous art when applied to the obviousness clause of patent review.

In its ruling, the court stated that it was not surprising that the inventor didn't look to rock carvings to improve the process of painting dots on interface plates for the purpose of testing valuable circuit boards. The machining technique shown in the rock carvings was not in a similar industry; therefore it did not pass the analogous art test.

In another example, challenged claims of a patent on portable X-ray devices related to detection means that were not structurally attached to the device. In a prior art patent, an inventor described a portable X-ray device used in the field of dentistry, which had separate X-ray detectors and generators. In this case, the portable X-ray device in question was not obvious to someone of ordinary skill level because the prior art related to dentistry. It also showed that the patent application described a plastic shell packaging, which provided better image quality. This plastic shell differentiated the new invention from the previous application.

The petitioner, in this case, didn't articulate the problems well, leaving it up to the review board to make a decision.

What Could Happen When You Don't Use Analogous Art?

If you submit an application for a patent on an idea that is considered non-analogous art, you might be more likely to qualify for patent protection. When your idea passes the analogous art test, the application for a patent could be rejected based on this fact. Analogous art can be hard to prove or dispute since the decision is ultimately based on the perspective of the reviewer.

Cases relating to physics and chemicals can also have different requirements. A similar underlying principle in another field of endeavor might not be enough to qualify an invention or process as analogous art. Applying the same scientific principle in a different way could be unique enough to be seen as non-analogous art.

One example of this concept is seen in a case between Tissue Transplant Technology Ltd. & Human Biologics of Texas Ltd. and Mimedx Group, Inc. This case involved placental membrane tissue grafts and using an asymmetric label to help a surgeon determine the proper orientation of the tissue graft. Another company had used a mark on a lens implant to make sure that it was properly orientated when placed in the patient. The synthetic corneal lens implant was considered to be chemically and structurally distinct from the placental membrane tissue grafts, and therefore this was not a case of analogous art.

In July 2015, the PTAB issued a final decision on the Petition for Inter-Parties Review, submitted by SkyHawke Technologies, LLC. In this written decision, the PTAB covered the two cited references qualified as analogous art. If so, they should be combined to render certain claims obvious that were made within the application. This patent, referred to as 566, covered a handheld computerized unit for recording, advising, and reporting golf data, along with the method of operation. The claims in question relate to a computer with a display screen used for user interaction before, during, and after a game. A person of ordinary skill might be able to recognize both references as being in the same field: human-computer interaction, thus rendering this patent as analogous art.

The holder of patent 566 disagreed, claiming that the prior art referenced is not in the same field of endeavor. In fact, this patent covered a product that was only for recording and reporting sports information. In its final decision, the PTAB rejected both claims as being too broad or too restrictive and requested a more objective form of evidence from the holder of patent 566.

Frequently Asked Questions

  • My patent application was denied because the reviewer said it contains analogous art. What can I do now?

You can file an appeal with the USPTO to request an additional review. It's not easy to get a reviewer to change his or her previous ruling, so you will need to present new information that shows your position more clearly. If your case doesn't get overturned during the appeal process, you can also file a suit with the court in your state.

Steps to File

If you feel that your idea does not qualify as analogous art, you can submit an application for a utility, design, or plant patent. You must submit all required documentation with your application, including detailed drawings of your invention in a variety of views. Make sure to submit any required fees with your application, as well.

After you complete the submission process, your patent application will move into pending status. You can track the status through the USPTO website. If your reviewer believes that your invention falls under analogous art, you can also request an appeal.

If you need help with analogous art, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.