Appeal 2007-1972
Application 11/141,758
MPEP § 2141.02, under heading VI, relates to prior art references.
The section instructs the reader that a prior art reference must be considered
in its entirety, including portions that would lead away from the claimed
invention. Support for the reminder is identified in W.L. Gore & Associates,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 220 USPQ 303, 312 (Fed. Cir.
1983) (prior art plastics processing taught that unsintered
polytetrafluoroethylene (PTFE) should be stretched slowly, thus teaching
away from claimed rapid stretching).
“A reference may be said to teach away 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.” Para-Ordnance Mfg. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1090, 37 USPQ2d 1237, 1241 (Fed. Cir.
1995) (quoting In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131
(Fed. Cir. 1994)).
The “teaching away” that Appellant alleges with respect to the
references, however, is that Bambardekar teaches away from poke-thru
fittings that cannot be positioned in a floor opening more than four inches in
diameter. We can assume, for purposes of this appeal, that Bambardekar
“teaches away” in the manner alleged by Appellant. As the Examiner
indicates (Answer 6), instant claim 1 does not place a limitation on the
dimensions of the poke-thru fitting. Appellant has not identified anything in
the references that would warn the artisan against covering access paths to
signal connection devices in a poke-thru fitting, or more specifically placing
a cover comprising doors over access paths to at least five signal connection
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