Appeal No. 2005-0328
Application No. 09/723,655
Our reviewing court has said “[A] reference may be said to teach away
when a person of ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or would be lead in
a direction divergent from the path that was taken by the applicant. The degree
of teaching away will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of development flowing from
the reference’s disclosure is unlikely to be productive of the result sought by the
applicant.” In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir.
1994) (citing United States V. Adams, 383 U.S. 39, 52, 148 USPQ 479, 484
(1966)(“known disadvantages in old devices which would naturally discourage
the search for new inventions may be taken into account in determining
obviousness”). However, a reference that “teaches away” does not per se
preclude a prima facie case of obviousness, but rather the “teaching away” of
the reference is a factor to be considered in determining unobviousness. Id 27
F.3d at 552, 31 USPQ 2d at 1132. A reference that neither teaches a limitation
nor warns against using the limitation does not require a finding that the
reference “teaches away” rather the teaching of the reference must be
considered alongside the teachings of the secondary reference. ParaOrdnance
Manufacturing Inc. V. SGS Importers Int. Inc., 73 F.3d 1085, 1090, 37
USPQ2d 1237, 1241 (Fed. Cir. 1995).
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007