Appeal No. 2005-2313 6
Application No. 10/052,695
opts for an antenna configuration for transmitting unique identifiable signals that can be
received by a receiver associated with a particular user, the artisan would have been
dissuaded from employing Dietz, in combination with anything, for achieving the instant
claimed subject matter.
We disagree. Dietz does not “teach away” from the instant claimed subject matter.
A “teaching away” by a reference occurs when a person of ordinary skill, upon [examining]
the reference, would be discouraged from following the path set out in the reference or
would be led in a direction divergent from the path that was taken by the applicant. In re
Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994). Merely because Dietz
teaches two embodiments and prefers one as “superior” (column 5, lines 50), would not be
a suggestion that an artisan should never employ the other embodiment. The reference
does not discourage an artisan from following the path taken by appellants. It merely
teaches two embodiments, one of which is employed by appellants, and one which Dietz
considers “superior.” However, Dietz does not discourage taking the path taken by
appellants. In fact, Dietz discusses both embodiments and even states that his system
“can work in one of two ways” (column 5, lines 44-45). Thus, Dietz recognizes that either
one of the alternative embodiments is satisfactory (either a touch surface being a large
array of antennas transmitting uniquely identifiable signals to a small number of receivers
associated with particular users (the preferred embodiment) or a large array of antennas
receiving a small number of uniquely identifiable signals from transmitters associated with
particular users), even though Dietz prefers one over the other. It does not disclose that
the second embodiment is unworkable, only less preferred. Dietz’s disclosure still teaches
the artisan the embodiment employed by appellants.
Accordingly, we do not find a “teaching away” from the instant claimed subject
matter by Dietz.
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