Oral argument of the day: In re Kollman

The In re Kollman oral argument from October is an interesting analogous arts appeal. There is an extensive discussion about the appropriate procedure for selecting a reference that is not from the inventor’s field of endeavor — i.e., prong 2 of the two prong test for analogous art. In the Federal Circuit case of In re Klein, 647 F.3d 1343 (Fed. Cir. 2011), the court stated that “[a] reference qualifies as prior art for an obviousness determination under §103 only when it is analogous to the claimed invention. . . . Two separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed; and (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved.”

The oral argument is also quite interesting for Judge O’Malley’s comments to the Solicitor’s Office that asking the court to rely upon a new rationale for rejecting a claim — when that rationale was not relied upon by the PTAB judges — presents a Chenery problem in view of the Administrative Procedure Act.

You can listen to the oral argument of In re Kollman below. After listening to the oral argument, I was quite surprised that the court issued a Rule 36 judgment.

The court’s Rule 36 Judgment is available [here].

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