Person Having Ordinary Skill in the Blogosphere

A common argument used by patent attorneys and agents during patent prosecution at the USPTO is that a reference teaches away from the claimed invention. This argument is used to traverse an obviousness rejection (side note – teaching away does not apply to anticipation rejections), which is the most common rejection from the USPTO.

For example, take a scenario where the claimed invention is a house with a specific plastic roof and a primary reference cited by the patent examiner discloses a house with a metal roof. The patent examiner could allege that it would have been obvious to replace the metal roof of the primary reference with the specific plastic roof, based on a disclosure in a secondary reference of a dog house with the specific plastic roof.

If the primary reference states that a plastic roof creates a serious risk of fire, then this would be considered to teach away from the claimed invention because it would have led a person having ordinary skill in the art (“PHOSITA”) in a direction divergent from the path that was taken by the applicant. After all, a PHOSITA would surely not want to create a house with a serious risk of fire. In this situation, the teaching away in the primary reference would have caused a PHOSITA to have not modified the house of the primary reference to have any type of plastic roof and the combination would not have been obvious. See In re Haruna, 249 F.3d 1327, 1335 (Fed. Cir. 2001) (“A reference may be said to teach away when a person of ordinary skill, upon reading the reference would be led in a direction divergent from the path that was taken by the applicant.”).

However, if the primary reference states that a metal roof is preferred to a plastic roof because it absorbs sound better, this is not considered teaching away because it is merely a suggestion of a less desirable alternative.  See Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)(A reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention does not teach away.).

Often, patent practitioners argue teaching away, but it is not convincing because what is disclosed in the reference does not reach the threshold of what is considered teaching away.

In the same manner as my last post, I used File Wrapper Search to word search PTAB decisions using the different possible outcome codes – Examiner Reversed (APDR), Examiner Affirmed (APDA), Examiner Affirmed in Part (APDP). As shown below, PTAB decisions mentioning “teach away” or “teaching away” almost always go against the patent applicant – with an extremely low 18.0% win rate, and an overall allowance rate of only 27.9%.

Patent examiners also know that this is a difficult argument to make, so they will try to characterize the applicant’s arguments as a teaching away argument. For example, if an applicant argues that a PHOSITA would not have been motivated to have combined the references based on teachings of the references as a whole, the patent examiner will respond that the teachings of the prior art do not amount to a teaching away. This happens even though the patent applicant did not use the words “teaches away.”

Thankfully, there is some good case law to rebut this type of erroneous examiner response.

“[T]the absence of a formal teaching away in one reference does not automatically establish a motivation to combine it with another reference in the same field.” Rembrandt Wireless Tech., LP v. Samsung Elecs. Co. Ltd., 853 F.3d 1370 1379-80 (Fed. Cir. 2017). “[E]ven if [the reference] does not teach away, its statements … are relevant to a finding regarding whether a skilled artisan would be motivated to combine….” Apple Inc. v. Samsung Elecs. Co., Ltd., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc); accord Arctic Cat v. Bombardier Recreational Products, 876 F.3d 1350, 1360 (Fed. Cir. 2017) (citing authorities) (“As our precedent reflects, prior art need not explicitly ‘teach away’ to be relevant to the obviousness determination”).

I have used this argument in two appeal briefs over the past couple of years, and both times the patent application was allowed by the examiner. The appeal did not reach the PTAB, saving the client the cost of a full appeal.

Additionally, a search on PatentAdvisor illustrated that this type of argument has been much more effective than arguing teaching away. Although the sample size was small, a search of “839 F.3d 1034” AND “does not teach away” found 11 PTAB decisions, with 6 of the 11 (54.5%) resulting in an allowance. Two of the decisions are here and here.

In summary, if you are considering arguing that a prior art reference teaches away from the claimed invention, make sure you have sufficiently strong language in the prior art. Otherwise, do not use the language “teaches away,” as it will hurt your chances of success. And if a patent examiner improperly characterizes your arguments as “teaching away,” push back with the language mentioned above.