Interference No. 104,693
Preputnick v. Provencher
Considering the entire technical disclosure of Hashiguchi
and not simply the innovation Hashiguchi is attempting to
protect, the prior art reference does not 'teach away" from
fastening two half-modules together as is required by
Provencher's claim 17, in the sense that the teachings of the
Kachlic patent is not combinable with that of Hashiguchi. The
point Provencher misses is that reasonable combinations of
teachings from two references does not necessarily preserve the
particular innovation of either reference. That is because a
reference is good for everything it discloses in technical
content and is not limited to the invention it seeks to protect.
For example, if a publication describes a fishing rod with a bell
that rings when a fish is hooked, its teachings about the
structure of the disclosed rod itself without the bell can also
be used as prior art in combination with other references. Note
also that an improvement invention is not a ýteaching away" from
the basic invention from which the improvement arose.
On pages 12 of its opposition, Provencher discusses the
benefits of modularity in the making of a product. Generally
speaking, it is true that modularity reduces manufacturing costs
by allowing production of the same parts in higher volumes.
Provencher notes that in Hashiguchi, týe structure of modules 1
and 2 are different, and argues on page 13 of its opposition:
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