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Teaching Away


Examiners commonly reject claims as allegedly being obvious under 35 U.S.C. § 103 in view of a combination of technically related art. While such combinations are supposed to help illustrate the obviousness of the rejected claims, at times, one or more of the cited art documents may actually do the opposite by teaching away from the claimed features (i.e., where a cited art document provides explicit evidence of why one of ordinary skill in the art would not combine the cited art as suggested by the Office Action). In such scenarios, it may be useful to respond along the lines of the following.

Example Argument

On page [PAGE NUMBER], the Office Action alleged that claim [CLAIM NUMBER] is obvious under 35 U.S.C. § 103. In making the rejection, the Office Action alleged, in part, that it would have been obvious for one of ordinary skill in the art to arrive at [CLAIM FEATURE] by combining [FEATURE OF CITED ART DOCUMENT A] with [FEATURE OF CITED ART DOCUMENT B]. Applicant respectfully submits that [CITED ART DOCUMENT A] teaches away from [CLAIM FEATURE].

MPEP § 2143.03(VI) states that "[a] prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention." Accordingly, where cited art teaches away from a claimed feature, the cited art is not available for the purposes of an obviousness rejection. In the instant case, [CITED ART DOCUMENT A] not only fails to teach or suggest [CLAIM FEATURE], but further teaches away from the use thereof. For instance, [CITED ART DOCUMENT A] discusses that [FACT-SPECIFIC ARGUMENT OF WHY CITED ART DOCUMENT TEACHES AWAY FROM CLAIM FEATURE]. Therefore, [CITED ART DOCUMENT A] explicitly teaches away from [CLAIM FEATURE]. Because [CITED ART DOCUMENT A] teaches away from [CLAIM FEATURE], one of ordinary skill in the art would not modify [CITED ART DOCUMENT A] to incorporate certain features of [CITED ART DOCUMENT B] in an effort to arrive at the claimed invention. Accordingly, Applicant respectfully submits that the rejection is improper and respectfully requests that the rejection be withdrawn.

Important Note

When arguing that the cited art teaches away from one or more claim features, it is important that the cited art explicitly does so. Cited art will teach away when it suggests that the developments flowing from its disclosures are unlikely to produce the objective of Applicant's invention (see In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). However, the mere presence of alternatives is insufficient for the purposes of a teaching away argument. The CAFC stated that “the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed....” (see MPEP § 2143.03(VI), quoting In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)). Also, a statement that a particular combination is not a preferred embodiment does not teach away absent clear discouragement of that combination (see In re Fulton, 391 F.3d at 1199-1200).