Clay invented an improvement
to the way oil was stored in giant storage tanks. He applied for a
Basically, he wanted to pour
a gel into a tank so that it would fill up the dead space at the bottom
and let you get all the oil out of the tank.
The USPTO denied the patent.
The USPTO found that
invention was not patentable because it failed the requirement for nonoviousness in 35 U.S.C. §103.
The USPTO looked at two
references (Hetherington and Sydansk) and found that when combined, they
anticipated Clay's invention.
Hetherington used an airbag
to fill up the bottom of an oil tank. Sydansk injected a gel
underground into oil wells to improve the flow of oil.
The USPTO Board of Patent
Appeals affirmed. Clay appealed.
The Appellate Court reversed.
The Appellate Court found
that the Sydansk reference was not analogous art. Therefore it could not be used.
Clay argued that someone
looking at oil tanks would never think to look at Sydansk's reference
because it had nothing to do with oil tanks.
The Court found that there
were two factors to determining if a reference was an analogous art:
Whether the art is from the
same field of endeavor, regardless of the problem addressed, or
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.
Basically, the Court said
that while a patent examiner can with hindsight, look at all the
references in the universe and find something that anticipates the invention,
the invention is still nonobvious
unless the references are things that someone in the inventor's field
would think to look at.
"A person having
ordinary skill in the art would not reasonably have expected to solve
the problem of dead volume in tanks for storing refined petroleum by
considering a reference dealing with plugging underground formation
Does it matter that Clay and
Sydansk both worked for the same company? The Court didn't seem concerned
with that fact.