“Winning on Non-Analogous Art: One Doctrine, Two Outcomes”

A storage device for high-end beauty capsules and a 1965 tool designed to clear waxy buildup from oil wells might both involve capsules, but that does not necessarily make them analogous art for patent purposes. In an article for Managing IP, Marshall Gerstein Partner Kate Nuehring Su examines a successful Patent Trial and Appeal Board appeal involving an application filed by ELC Management, a subsidiary of The Estée Lauder Companies, and contrasts it with a Federal Circuit decision issued just two weeks later. The two matters reached opposite conclusions on non-analogous art, offering useful guidance on when the often difficult argument can succeed.

As Kate explains, the distinction came down to functionality. In the ELC matter, the cited prior art involved capsules designed to dissolve in water and generate heat, while ELC’s invention was intended to preserve and protect personal care capsules. By contrast, in Nielsen v. TVision, the Federal Circuit found that the prior art shared the broader image-processing function described by the patent.

“In both cases, what controlled was the functionality disclosed across the whole specification, and the outcome turned on whether the reference shared that function or contradicted it,” Kate writes.

The comparison also offers practical lessons for patent prosecutors about the role of functional language and the potential implications of detailed background sections. While Kate cautions that the decisions do not mean non-analogous art has suddenly become a stronger argument, she notes that the particular facts can make all the difference: “The statistics are against the argument. The facts, occasionally, are not.”

Read Kate’s full article in Managing IP.