Wednesday, November 07, 2012

The Board discusses "teaching away" in Ex parte Disange

As to "teaching away," the Board noted in Ex parte DISANGE :

Further, regarding Appellants’ teaching away argument, we note that it has been held that “[w]hat the prior art teaches and whether it teaches toward or away from the claimed invention ... is a determination of fact.” Para-Ordnance Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). “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.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Teaching an alternative or equivalent method, however, does not teach away from the use of a claimed method. See In re Dunn, 349 F.2d 433, 438 (CCPA 1965).


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