## Facts

- Icon owned U.S. Patent No. 5,676,624 claiming a treadmill with a folding base that swivels upright for storage.
- The disputed claim limitation required “a gas spring” between the tread base and upright structure to assist in stably retaining the base in the upright position.
- In reexamination, the examiner rejected the claims as obvious under 35 U.S.C. § 103 based on:
  - a Damark advertisement depicting a folding treadmill; and
  - Teague (U.S. Patent No. 4,370,646), describing a fold-up bed using spring mechanisms to support and stabilize the structure in open and closed positions.
- The PTO found the Damark advertisement disclosed all limitations except the gas spring, and Teague supplied the missing teaching of using springs to stabilize a foldable structure.
- Icon argued Teague was non-analogous art because it involved a bed rather than exercise equipment.
- The Board of Patent Appeals and Interferences affirmed the obviousness rejection, treating Teague as analogous art.

## Issues

1. Whether the Board erred in treating Teague’s folding-bed patent as analogous prior art that could be combined with the Damark treadmill advertisement for a § 103 obviousness rejection of Icon’s treadmill claims.
2. Whether substantial evidence supported the PTO’s conclusion that adding a Teague-type gas spring mechanism to the Damark folding treadmill would have been obvious to a person of ordinary skill.

## Decision

- The Federal Circuit affirmed the Board’s decision holding the claims unpatentable as obvious under § 103.
- The court held Teague qualified as analogous art because it was reasonably pertinent to the problem of stabilizing a foldable structure in a stored/upright position.
- The court accepted the PTO’s finding that a skilled artisan would have been motivated to apply Teague’s stabilizing spring mechanism to the Damark folding treadmill to meet the gas-spring limitation.

## Legal Principles

- A reference is analogous prior art if (1) it is in the same field of endeavor as the invention, or (2) even if outside that field, it is reasonably pertinent to the problem the inventor faced.
- “Reasonably pertinent” turns on whether the reference logically would have commended itself to an inventor’s attention in addressing the problem, not whether the products are the same.
- For § 103, once a reference is deemed analogous, combining prior-art teachings to supply a missing claim limitation may be obvious where the combination represents a predictable use of known mechanical elements to achieve the claimed function.

## Conclusion

The Federal Circuit upheld the PTO’s obviousness rejection because the folding-bed spring reference was reasonably pertinent to the stability problem addressed by the folding treadmill claims, making it permissible to combine that spring teaching with a prior-art treadmill depiction to render the claims obvious under § 103.


In re Icon Health & Fitness, Inc., 496 F.3d 1374 (Fed. Cir. 2007)