A prior art reference need not be directed to the claimed point of novelty in order to be analogous. Here, for example, prior art directed to the ordering of menu items was found to be analogous to the claimed prioritization of location-based search results because both were more broadly directed to interface design. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” This would be a good case to consult before arguing that a prior art reference is non-analogous.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to providing wireless network subscribers (e.g., cell phone users) with prioritized search results based on the location of their mobile device (e.g., the nearest gas station). The prior art deals generally with graphical user interface design and includes a chapter devoted to menu design with specific suggestions for how to order menu items.
Issue(s): Whether the prior art is analogous to the claimed invention.
Holding(s): Yes. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field. Here, both [the prior art] and the [] patent are in the field of interface design, with [the prior art] focusing on graphical user interfaces and the [] patent focusing on interfaces for location-based services. These two areas of focus overlap within the broader field of interface design because the teachings in graphical user interface design, including design principles for displaying text and ordering menus, have relevance in interfaces for location-based applications. Likewise, a skilled artisan seeking to apply interface design principles to display addresses—one of the particular problems dealt with by the inventor of the [] patent—would reasonably look to [this prior art], which teaches solutions to this same problem.”