IN RE ALBERTO LEE BIGIO, 381 F.3d 1320

Summary

The claims examiner rejected claim 1 of the application as obvious in view of both a British Patent and the U.S. design patent for the toothbrush. Under the interpretation of the claim term "hair brush," the Board determined that toothbrushes fell within the applicant's field of endeavor, and therefore constituted analogous art. The court affirmed, holding that the Board correctly declined the applicant's argument that it should import from the specification a limitation that would apply the term only to hairbrushes for the scalp. The Board correctly set the field of the invention by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art. The court also held that the field of endeavor test was neither ambiguous, wholly subjective, nor unworkable. The structural similarities between toothbrushes and small brushes for hair would lead one of ordinary skill in the art working in the specific field of hairbrushes to consider all ...