Appeal 2007-1366
Application 90/005,090
1 at 1740. A prior art reference may be considered to teach away when “a
2 person of ordinary skill, upon reading the reference, would be discouraged
3 from following the path set out in the reference, or would be led in a
4 direction divergent from the path that was taken by the applicant.” In re
5 Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed.Cir. 1994). But, a
6 statement that a particular feature is not preferred does not teach away
7 absent clear discouragement of that combination. Syntex (USA) LLC v.
8 Apotex Inc., 407 F.3d 1371, 1380, 74 USPQ2d 1823, 1830 (Fed. Cir. 2005).
9 Secondary Considerations
10 “Such secondary considerations as commercial success, long felt but
11 unsolved needs, failure of others, etc., might be utilized to give light to the
12 circumstances surrounding the origin of the subject matter sought to be
13 patented. As indicia of obviousness or nonobviousness, these inquiries may
14 have relevancy.” Graham, 383 U.S. at 18. Secondary considerations such
15 as commercial success, long felt need, and copying by others must be proved
16 with clear and convincing evidence. In re Snow, 471 F.2d 1400, 1404,
17 176 USPQ 328, 331 (CCPA 1973); In re Miegel, 404 F2d 378, 381159
18 USPQ 716, 717 (CCPA 1968); In re Heyna, 360 F2d 222, 228, 149 USPQ
19 692, 697 (CCPA. 1966); In re Lohr, 317 F.2d 388, 137 USPQ 548, 550-551
20 (CCPA 1963). To show unexpected results, a comparison of the invention
21 with the prior art must be under identical conditions except for the novel
22 features of the invention. In re Brown, 459 F.2d 531, 535, 173 USPQ 685,
23 689 (CCPA 1972).
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