Monday, October 22, 2012

Ex parte Althoff: teaching away requires discouragement

Appellant failed to persuade the BPAI in Ex parte Althoff.

Examiner’s rejection is based on the use of known, liquid (i.e., having a melting point below room temperature) mold release agents (taught by Roth) for their intended purpose (as release effective substances) in Harakal’s mold release composition. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.”). Although Appellants argue Harakal only exemplifies the use of solid release agents, Appellants have not persuasively shown that one of ordinary skill in the art would have been discouraged from trying a liquid release agent based on the known use thereof as taught by Roth. See In re Gurley 27 F.3d 551, 553 (Fed. Cir. 1994) (“A reference may be said to teach away when a person of ordinary skill, upon reading 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.”); cf. Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination.”).


Further, Appellants have not directed us to persuasive evidence of unexpected results in the use of a liquid polyester release agent as claimed. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371-72 (Fed. Cir. 2007) (explaining a superior property is not unexpected if it results from routine, verification testing to optimize selection of known ingredients because selection of the best ingredients proves nothing more than routine optimization that would have been obvious to one of ordinary skill in the art).


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