In Re Clay
966 F.2d 656 (Fed. Cir. 1992)

  • Clay invented an improvement to the way oil was stored in giant storage tanks. He applied for a patent.
    • 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. Clay appealed.
    • 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 anomalies."
  • Does it matter that Clay and Sydansk both worked for the same company? The Court didn't seem concerned with that fact.