Appeal No. 2006-2247
Reexamination Nos. 90/006,554 and 90/006,894
1 hydrochloric acid at the end of the reaction to prepare the hydrochloride salt of the
2 N-oxide. (Appeal Brief at 9.)
3 This argument is unavailing. Our reviewing court in In re Gurley, 27 F.3d
4 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) provided guidance on “teaching
5 away” as follows:
6 Gurley's position appears to be that a reference that teaches
7 away "cannot" serve to create a prima facie case of obviousness. We
8 agree that this is a useful general rule. However, such a rule can not
9 be adopted in the abstract, for it may not be applicable in all factual
10 circumstances. Although a reference that teaches away is a significant
11 factor to be considered in determining unobviousness, the nature of
12 the teaching is highly relevant, and must be weighed in substance. A
13 known or obvious composition does not become patentable simply
14 because it has been described as somewhat inferior to some other
15 product for the same use.
16 The facts in Gurley's record are that this use of epoxy was
17 known, the structure of these circuit boards was known, and epoxy
18 had been used for Gurley's purpose. We share Gurley's view that a
19 person seeking to improve the art of flexible circuit boards, on
20 learning from Yamaguchi that epoxy was inferior to polyester-imide
21 resins, might well be led to search beyond epoxy for improved
22 products. However, Yamaguchi also teaches that epoxy is usable and
23 has been used for Gurley's purpose. The Board recognized
24 Yamaguchi's teaching of the deficiencies of epoxy-impregnated
25 material, but observed that Gurley did not distinguish his epoxy
26 product from the product described by Yamaguchi. On the facts of
27 this case, Gurley's teaching away argument was insufficient to
28 establish patentability. Gurley did not offer specific epoxies, or
29 improved properties, and we are not presented with the question of
30 whether any such products might meet the requirements of patent
31 ability. Even reading Yamaguchi's description as discouraging use of
32 epoxy for this purpose, Gurley asserted no discovery beyond what
33 was known to the art.
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