Like any experienced practitioner I encounter my fair share of rejections under 35 U.S.C. § 103. After a review of the office action and the cited prior art, I will discuss a response strategy with a Client and then respond to the office action in whatever manner is decided. In a typical situation I will not suggest mere argument against the Examiner’s rejection as the best path forward; instead, I look for a winning amendment: get over the prior art, limit my remarks as, and protect (as broadly as possible) the commercial embodiment.
But sometimes the cited art is so encompassing that an amendment would diminish the value any resultant patent. So what to do? The MPEP is replete with providing instruction and guidance as to how an Applicant might respond to an obviousness rejection.
Although I will do what I can to avoid a response limited to arguing against the formed rejection, an area of the MPEP that draws my interest is § 2145(X), which infers arguing the Examiner has an improper rationale for combining the cited references. One particular facet is the ‘Teach Away’ position, for which I had a recent encounter.
II. Teach Away
Although not made very clear in the MPEP, there are actually two ways of making a ‘teach away’ argument:
- The references teach away from the invention as claimed; and/or
- The references teach away from their combination;
The second bullet (references teach away from their combination) is the one I most often give consideration to because it is exclusive to discussion on the references, and does not result inadvertent estoppel.
The ‘teach away from combination’ law is rather murky, archaic, and frankly not all that interesting. Instead of reading through decade(s)-old opinions, I often find I can get a more modern and relevant explanation through recent PTAB decisions - an exercise I recently undertook for one of my Client’s.
As I began reading decision after decision (and in some instances, accompanying briefs), it was readily apparent to me that the PTAB understands ‘teach away’ to be an explicitly expressed teach away in the form of hash disparagement. In making their teach away argument, appellee after appellee relied only on a preference, partiality, or desire taught by one reference over what the teachings of other references might have been. Maybe it was part of a throw it against the wall and see what sticks mentality, but it was clear that this level of disagreement is not enough to say one reference teaches away from a combination with another.
I then came across Ex Parte Long, which I read as a very sound and credible explanation for a winning ‘teach away from combination’ argument. In that case, the PTAB reversed a § 103 rejection that related to a combination of two references where the secondary reference added into the primary reference that which the primary reference sought to leave out. In particular the PTAB considered a § 103 rejection made by the Examiner that combined the teachings of U.S. Patent Publication No. 2005/0070835 (“Joshi”) in view of U.S. Patent Publication No. 2004/0225208 (“Johnson”).
Joshi expressly disparaged against inclusion of bulky or costly power equipment, such as a vacuum pump, into its manually operated negative pressure wound device. In forming the rejection, the Examiner modified the device of Joshi with the teachings of Johnson pertaining to a reduced pressure source (vacuum pump).
The Board reversed the Examiner because the “proposed modification flies directly in the face of the stated object of the Joshi contribution to the art, and is directly contrary to the direction taken in the Joshi disclosure.”
Similarly, and in brief summary, in my case the primary reference included an expressly stated object of the invention as being a device devoid of an articulated section. The secondary reference taught a device with an articulated section.
III. The Wrap-up
It is not just enough for one reference to express a like or dislike over something another reference might teach; there needs to be something in the lines of harsh disparagement or a disavowal. And hopefully, just like in Ex Parte Long, the wording is part of the stated ‘object of the invention’.
© 2017 John M. DeBoer
John DeBoer is an attorney admitted with the Texas State Bar. He is a Partner with Rao DeBoer Osterrieder, a law firm in Houston, Texas specializing in intellectual property law. Contact John via Email.
The views expressed in this article are those of the author and do not reflect the views of Rao DeBoer Osterrieder, PLLC, or any of its clients. All rights reserved.
 Or pre-AIA § 103(a)
 MPEP § 2145
 PTAB Appeal No. 2014-006015, September 27, 2016