Appeal No. 2004-2017
Application 09/501,559
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.
In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994).
On this record, it is undisputed that Rutenberg teaches that although “the use of
flattening (flaker) rolls gives a gum with higher viscosity-producing properties than gum
prepared without the flattening rolls, the use of an extruder under the same operational
conditions gives gums with much higher viscosity-producing properties.” Col. 7, ll. 15-
20. Accordingly, we determine that Rutenberg merely teaches somewhat inferior
results for the process when using a flaking step as compared to extrusion, although
also teaching that flaking produces better results than no flaking step. See Rutenberg,
col. 1, ll. 40-53; col. 5, ll. 4-13; col. 5, l. 65-col. 6, l. 2; and col. 7, ll. 1-14. Therefore we
determine that Rutenberg does not teach away from the claimed subject matter.
Appellants argue that In re Crockett is distinguishable since the facts in that case
are not sufficiently similar to those here (Brief, page 10). Appellants argue that in
Crockett distinct references effectively taught that two different processes would each
produce the same result so that these processes could be logically combined while
here Rutenberg alone teaches that two different processes each produce very different
results, with extruding producing a result far superior to flaking (id.). Appellants thus
submit that one of ordinary skill in the art would have had no logical motivation to
combine flaking with extruding (id.).
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