Appeal No. 2001-0965
Application 08/751,035
The examiner argues, in reliance upon In re Gurley, 27 F.3d
551, 31 USPQ2d 1130 (Fed. Cir. 1994), that “even though a
reference may provide specific guidance to proceed in a direction
contrary to the claimed invention, in view of the general
guidance found within the four corners of the reference, those in
the art will be motivated to explore other avenues other than
those specifically cited” (answer, page 6).
Gurley does not support the examiner’s argument. In Gurley,
27 F.2d at 553, 31 USPQ2d at 1132, the court stated:
Although a reference that teaches away is a
significant factor to be considered in
determining unobviousness, the nature of the
teaching is highly relevant, and must be
weighed in substance. A known or obvious
composition does not become patentable simply
because it has been described as somewhat
inferior to some other product for the same
use.
Gurley’s invention was a printed circuit material which
included a substrate material made of a nonwoven web impregnated
with epoxy and which was bendable and shape retaining. See id.,
27 F.3d at 552, 31 USPQ2d at 1131. The Yamaguchi reference
disclosed a printed circuit material having a fibrous substrate
impregnated with a polyester-imide resin instead of epoxy.
See id. Yamaguchi taught that circuit boards having an epoxy-
impregnated fibrous substrate have “relatively acceptable
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