Statements in the specification describing the invention may nevertheless be used to more specifically define the particular problem with which the inventor is involved for analogous art purposes when those statements appear in the background section of the specification. Here, for example, a statement in the background section that it would “be a boon to tailgaters if unattractive and innocuous propane tanks could be decorated in a manner consistent with a tailgate party scheme” was found to define the problem not only in general terms of decorating innocuous propane tanks but also in specific terms of doing so with a tailgate party scheme, thereby making prior art references relevant to even the inventor’s solution (i.e., any reference that can be used to craft an obviousness analysis) available as analogous art. It may therefore be best to avoid any discussion whatsoever of the invention in the background section, including problem statements and the like.
Background / Facts: The application on appeal here from rejection at the PTO describes and claims a cover assembly, for a propane tank with certain structural features, designed to resemble a football helmet or other sports-related object. The prior-art references relied on by the PTO describe different general containers (e.g., propane tanks) and different sports-themed objects related to containers (e.g., beer koozies decorated to resemble a miniature football helmet).
Issue(s): Whether the cited references are “reasonably pertinent to the particular problem with which the inventor is involved” for purposes of applying them as analogous art.
Holding(s): Yes. “According to [the applicants’] patent application, their invention is meant to solve the problem of ‘unattractive and innocuous propane tanks’ by ‘decorat[ing them] in a manner consistent with a tailgate party scheme, … particularly [by] giv[ing] the appearance or likeness of a sports-related item.’ [] [The prior art references] are all reasonably pertinent to that particular problem—[two of them] because they teach how to design a vessel for containing fluids such as propane, [the other two] because they teach how to make containers more pleasing to the eye through sports-themed decoration. The Board could find that those references would commend themselves to the attention of an inventor set on encasing a propane tank in a structure shaped like a football helmet.”