Appeal No. 2002-2036
Application 09/486,558
We find that Clausen states that “4-aminophenol . . . has
been criticized for not being physiologically tolerated”. See
column 1, lines 43-49. However, we disagree with appellants that
such a teaching would dissuade one of ordinary skill in the art
from adding diaminopyrazole to a dye composition having p-
aminophenol. In this context, we compare the case of In re
Gurley, 27 F.3d 551, 553, 31 U.S.P.Q.2d 1130, 1132 (Fed. Cir.
1994). The Court in In re Gurley considered a “teaching away” as
representing one of several factors in ultimately affirming the
board’s decision on obviousness. Gurley claimed an epoxy-based
printed circuit board exhibiting bendable and shape retaining
qualities. The board sustained the examiner’s section 103
rejection of Gurley’s claims over prior art that disclosed
material for forming circuit boards similar to those of Gurley,
except that the material was a polyester imide-based resin rather
than the epoxy resin claimed by Gurley. The prior art did
acknowledge that epoxy was known for such use, but viewed epoxy-
containing boards as inferior to polyester-imide-containing
boards. On appeal to the Federal Circuit, Gurley argued that the
prior art taught away from his invention by describing epoxy-
containing boards as inferior. The court, however, rejected this
argument, stating that a “teaching away” represents only one of a
number of factors considered and weighed in determining
obviousness. Stressing the importance of considering the
“teaching away” in context, and according it appropriate weight,
the court held that a known or obvious material does not become
patentable simply because the art described it as somewhat
inferior. Id.
Here, we determine that the teaching in Clausen that 4-
aminophenyl has been criticized for not being physiologically
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