Appellant Robinson loses at PTAB on teaching away, motivation to combine

Appellant, represented by MCDONNELL BOEHNEN HULBERT & BERGHOFF   , lost at PTAB in the case Ex parte Robinson 

As to the obviousness:

Appellants argue that the Examiner

has failed to establish a prima

facie case of obviousness because Gold

stein teaches away from the claimed

invention, one of ordinary skill would

not combine the cited references, and

the combination does not teach or suggest all claim limitations.

As to "teaching away":

Whether the prior art teaches away

from the claimed invention is a

question of fact.

Dystar Textilfarben GmbH v. C.H. Patrick Co

., 464 F.3d 1356, 1360 (Fed. Cir. 2006);

In re Harris, 409 F.3d 1339, 1341 (Fed. Cir.

2005). It is well established that a prior art reference
must be considered in

its entirety, i.e., as a whole, when determining

if it would lead one of

ordinary skill in the art away

from the claimed invention.

W.L. Gore &

Assoc, Inc. v. Garlock, Inc.

, 721 F.2d 1540, 1550 (Fed. Cir. 1983);

cf. Para–

Ordnance Manufacturing, Inc. v. SGS Importers International, Inc.,

73 F.3d 1085, 1090 (Fed. Cir. 1995) (to teach aw

ay, a reference must state that a

feature “should not” or “cannot” be used

in combination with other features

in the prior art.).

Of the concept of "no patentable significance":

Having considered the record before

us, we find no reversible error in

the Examiner’s determination that combining or
duplicating certain process

units has no patentable significance

unless a new and unexpected result is

produced. Final Action 4–5, 8; Ans.

3. We find Appellants have not

provided any evidence that there is

any new or unexpected result, only

attorney argument as to a

“system that is both commercially functional and

commercially feasible for the intended

purpose” (App. Br. 12) and this lacks

merit both because attorney argument is

not evidence and because the claims

are not so limited.