Appeal 2007-0693
Application 10/188,519
1 A reference “teaches away” if a person of ordinary skill in the art
2 would have been discouraged or led to a divergent path from the one taken
3 by the inventors. In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132
4 (Fed. Cir. 1994)(“A reference may be said to teach away when a person of
5 ordinary skill, upon reading the reference, would be discouraged from
6 following the path set out in the reference, or would be led in a direction
7 divergent from the path that was taken by the applicant.”).
8 Here, rather than discourage, Boer’s teaching (col. 5:6-18) suggests to
9 one of ordinary skill in the art that the ethylene-propylene-acrylic acid or the
10 ethylene-propylene-acrylate terpolymer recited in appealed claim 1 would be
11 useful as a matrix (binder) polymer. In re Fulton, 391 F.3d 1195, 1201, 73
12 USPQ2d 1141, 1146 (Fed. Cir. 2004)(“[M]ere disclosure of alternative
13 designs does not teach away.”); In re Gurley, 27 F.3d at 553, 31 USPQ2d at
14 1132 (“Although a reference that teaches away is a significant factor to be
15 considered in determining unobviousness, the nature of the teaching is
16 highly relevant, and must be weighed in substance. A known or obvious
17 composition does not become patentable simply because it has been
18 described as somewhat inferior to some other product for the same use.”).
19 Turning to the ethylene-propylene content, Boer teaches that the
20 olefin monomers, which includes a mixture of ethylene and propylene, may
21 constitute “at least 80 percent...by weight” (col. 5:14-16) when
22 interpolymerized with the “other olefinic group containing monomer, such
23 as acrylic...acids or their esters” (col. 5:15-18). Hence, we share the
24 examiner’s view that Boer’s teachings would have led one of ordinary skill
25 in the art to arrive at the subject matter of appealed claim 1. The significant
16
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