- Hailey R. Bureau, Ph.D.
Under U.S. patent law, a reference used in an obviousness rejection under 35 U.S.C. 103 must be analogous art to the claimed invention. If a reference is not analogous art to the claimed invention, it may not be used in an obviousness rejection or challenge. This presentation reviews the two-part test for determining whether a prior art reference is analogous art, and discusses the Federal Circuit’s recent precedential decision in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 21-1981 (Fed. Cir. May 9, 2023), in which the Court discussed the requirements of the analogous art test, and reversed a Patent Trial and Appeal Board decision finding all of Sanofi’s challenged claims unpatentable as obvious because the art applied was non-analogous to the claimed invention.