Analogous Art May Come From Any Area Describing Similar Mechanisms
Analogous art appropriate for use in an obviousness rejection may come from any area describing similar mechanisms, and it is impermissible to ignore modifications one skilled in the art would make to a device borrowed from the prior art, a Federal Circuit panel concludes in In re Icon Health and Fitness, Inc. (No. 2006-1573, August 1, 2007).
Icon’s patent claims a treadmill with a folding base, allowing the base to swivel into an upright storage position. Following reexamination and a subsequent Board of Patent Appeals and Interferences affirmation of the patent examiner’s rejection, Icon appealed, challenging both the use of Teague as analogous art and the ultimate conclusion of obviousness. The sole independent claim on appeal requires, inter alia, a gas spring connected between the tread base and the upright structure to assist in stably retaining the tread base in the second position. The examiner had rejected Icon’s claims as obvious based on the combination of an advertisement for a folding treadmill by Damark International, Inc. and a patent to Teague, Jr., which describes a bed that folds up into a cabinet or recess, and purports to improve on prior art counterbalancing mechanisms by using a dual-action spring.
Finding no error in the Board’s factual findings or legal conclusions, the Federal Circuit panel affirms the decision holding Icon’s claims unpatentable. Relying on the KSR International Co. v. Teleflex, Inc. Supreme Court decision, the panel notes that familiar items may have obvious uses beyond their primary purposes, dismisses Icon’s argument that Teague falls outside the “treadmill art” and addresses a different problem than the Icon application, and concludes that the Teague patent disclosure is reasonably pertinent to the problem addressed by Icon. Analogous art to Icon’s application, when considering the folding mechanism and gas spring limitation, may come from any area describing hinges, springs, counterweights, or other similar mechanisms – such as the folding bed in Teague. Faced with broad claims encompassing anything that assists in stably retaining the tread base, and declining to ignore the modifications that one skilled in the art would make to a device borrowed from the prior art, moreover, the panel also rejects Icon’s inoperability arguments.
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