Finding a different solution is not teaching away
Appellant lost on double-patenting. The Federal Circuit stated the appropriate procedure for a double-patenting rejection as follows: “we start by examining the claims of the . . . patent, and by assessing the prior art references in order to ascertain whether the PTO made out a prima facie case of obviousness.” In re Longi, 759 F.2d 887, 895-96 (Fed. Cir. 1985); see also In re Aldrich, 398 F.2d 855, 863 (CCPA 1968) (examining a secondary reference for its teachings in a double patenting rejection).
Of different solutions: Prior art does not teach away from claimed subject matter merely by disclosing a different solution to a similar problem unless the prior art also criticizes, discredits, or otherwise discourages the solution claimed. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). We find that Doss and Horvitz propose different solutions to similar problems in the same field of predicting user availability.