“Teaching away” is a topic frequently misunderstood at (almost?) all levels of patent review. It is not a surprise that non-US Applicants and Examiners make mistakes, when even judges have used the phrase improperly.
Let’s consider an example. An Applicant might claim an apparatus that solves a technical problem by an elegant solution. An Examiner’s obviousness rejection might be premised on a primary reference that describes a conventional apparatus that lacks the solution. The primary reference is often a patent-related publication, so there should be an inventive advantage to that apparatus. Let’s assume the inventive advantage is a lower manufacturing cost.
The secondary reference in the obviousness rejection might present a description similar to the Applicant’s solution, but in a different context. Therefore, the combination of references might require modifying the primary reference apparatus, which might increase manufacturing costs.
In this situation, an Applicant might present arguments that the primary reference “teaches away” from a combination with the secondary reference. The reason for the “teaching away” is that the primary reference is directed to lowering manufacturing costs. However, a combination with the secondary reference might increase manufacturing costs. No skilled artisan would modify a low-cost apparatus to have a higher cost, would they?
These arguments might have some (limited) merit in the US. In particular, these facts might support an argument that the combination would not have been obvious. However, these facts do not meet the high bar for “teaching away” from the combination.
In a future post, we’ll focus on what teaching away is, rather than what it is not. In the interim, if Modal can assist you in assessing your arguments, please contact us.