Teaching Toward “Teaching Away”

Last week, we considered what “teaching away” is not.  What is teaching away?

“Teaching away” requires criticizing, discrediting, or discouraging investigation into the claimed invention.  Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013) (citing DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009)).  In my view, informed by my experience with the USPTO, “teaching away” requires particular statements to be made in one of the references of the proposed rejection.

Let’s consider an example involving printers.  Two common types of printers are laser printers and inkjet printers.  Let’s assume the invention takes an aspect of laser printers and introduces it into inkjet printers.  So, the most relevant art is an inkjet printer, although the solution is known in a different art (namely, laser printers).

An Examiner might reject a claim as obvious over an inkjet printer reference in view of a laser printer reference.  Does one of these references teach away from the combination?  At this point, it is impossible to say.

Whether one reference teaches away from the combination is determined after a careful review of the references.  Why must the review be careful?  Because the Examiner would not make the combination, had he seen the criticism, discrediting, or discouragement.

Maybe the secondary reference says, “The teachings of this reference are applicable only to laser printers.  Because ink jet printers are fundamentally different, it would be foolish, if not impossible, to incorporate these teachings into an inkjet printer.”  Such a disclosure teaches away from a combination with an inkjet printer, because it criticizes or discourages the combination.

Such statements were more common (if still infrequent) in US patent applications decades ago.  However, patent attorneys realized these statements aided the competitors to their applicants.  Specifically, the competitors could rely on such statements to assert the inventiveness of their competing patents.  Thus, patent attorneys stopped making these statements.  Accordingly, because these statements became rare, “teaching away” arguments have become rare.

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Session 5 of ExaminIrks briefly touched on “teaching away.”  A former Examiner considered a hypothetical rejection of a claim directed to a red sports drink (e.g., Gatorade or Pocari Sweat).  In the hypothetical rejection, the primary reference is directed to a clear sports drink, and the secondary reference is directed to a red dye that is poisonous to humans.

The former Examiner suggested the primary reference “taught away” from a combination with the secondary reference.  I disagree.

The references are unlikely to make statements that criticize, discredit, or discourage the proposed combination.  For example, the primary reference is unlikely to say something as direct as, “Do not add poisonous substances to this sports drink.”  And the secondary reference is just as unlikely to say, “The disclosed dye should not be added to fluids containing a sodium concentration above X%” (assuming the sports drink has a sodium concentration above X%).

Of course, I am not suggesting the combination is valid.  There are very strong arguments that adding the poisonous red dye to the clear sports drink would render the sports drink unsuitable for its intended purpose. MPEP 2143.01 V.

However, in my view, “teaching away” arguments require special statements in the applied references themselves.  And the ExaminIrks example did not provide the special statements.