In Re Carl D. Clay
23 U.S.P.Q. 2d (BNA) 1058, 966 F.2d 656, 1992 U.S. App. LEXIS 13091 (1992)
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Rule of Law:
A prior art reference is considered analogous art for an obviousness determination only if it is from the same field of the inventor's endeavor or, if from a different field, is reasonably pertinent to the particular problem with which the inventor was concerned.
Facts:
- Carl D. Clay developed a process for storing refined liquid hydrocarbon products in a storage tank.
- The process addresses the problem of product being trapped in the 'dead volume' at the bottom of the tank, below the outlet port.
- Clay's process involves filling this dead volume with a specialized gel that is inert to the hydrocarbon product, effectively displacing the product so it can be removed.
- The gel is created from a solution that solidifies in place and can later be degraded by a chemical agent for easy removal.
- A prior art reference, the Hetherington patent, disclosed a method for displacing dead space liquid in tanks using large, impervious bladders.
- Another prior art reference, the Sydansk patent, disclosed a process for improving crude oil extraction by injecting a similar gel into natural, underground rock formations.
- The purpose of the Sydansk gel was to plug high-permeability anomalies in subterranean rock, thereby redirecting fluid flow to recover bypassed oil from the rock matrix.
- The Sydansk process operates under high temperatures and pressures deep underground, unlike Clay's process which operates at ambient conditions in a man-made tank.
Procedural Posture:
- Carl D. Clay filed a patent application with the U.S. Patent and Trademark Office (PTO).
- The patent examiner rejected all remaining claims as obvious under 35 U.S.C. § 103, by combining the Hetherington and Sydansk patents.
- Clay appealed the rejection to the PTO's Board of Patent Appeals and Interferences (the Board), which is an administrative appellate body.
- The Board affirmed the examiner's decision, holding that the claims were unpatentable for obviousness.
- Clay (appellant) then appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.
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Issue:
Is a prior art reference concerning the extraction of crude oil from subterranean formations analogous art to an invention for storing refined hydrocarbons in a man-made tank for the purposes of an obviousness determination under 35 U.S.C. § 103?
Opinions:
Majority - Lourie, Circuit Judge.
No. A prior art reference is not analogous art if it is not in the same field of endeavor and is not reasonably pertinent to the problem the inventor seeks to solve. The Sydansk reference, which deals with crude oil extraction from natural subterranean formations, is not analogous art to Clay's invention for storing refined hydrocarbons. First, Sydansk is not within the same field of endeavor as Clay's invention; the former concerns crude oil extraction, while the latter concerns refined product storage. The court rejected the PTO's overly broad definition of the field as the 'petroleum industry,' noting the significant differences in purpose, environment, temperature, and pressure. Second, Sydansk is not reasonably pertinent to the particular problem Clay was solving. Clay's problem was preventing product loss in the dead volume of a storage tank, whereas Sydansk's problem was redirecting fluid flow in a porous underground rock matrix to improve oil recovery. An inventor seeking to solve Clay's problem would not have been motivated to consider a reference dealing with plugging underground formation anomalies. Therefore, Sydansk is non-analogous art and cannot be combined with Hetherington to render Clay's invention obvious.
Analysis:
This case refines the two-part test for determining analogous art in patent law, emphasizing the need for specificity when defining the 'field of endeavor' and the 'problem' being solved. It serves as a precedent against combining prior art references from fields that are only related by a broad industry classification, such as the 'petroleum industry.' The decision narrows the scope of prior art that can be used for an obviousness rejection, thereby offering greater protection to inventors whose solutions adapt technology from a different technical context to solve a new and unrelated problem. Future obviousness analyses must more carefully consider whether an inventor would have been genuinely motivated to look to a particular piece of prior art to solve their specific problem.
