Thursday, March 22, 2012

"Teaching Away" in Patents

Not being a patent lawyer, but instead being what patent lawyers call a PHOSITA (person having ordinary skill in the art) [*], I always thought I was on safe ground if an existing publication (patent or technical literature) described certain inventions and suggested that certain trends would be observed by say, adding more of A or less of B. I've heard people refer to that as "teaching away", meaning "don't go in that direction". Of course, I've never been good at following directions and so I often would go in the "wrong direction" and then find that in fact there was something valuable there. Since the prior art had steered me away, I have always thought that my new invention was nonobvious.

Apparently that is not the case. The Court of Appeals of the Federal Circuit has decided otherwise (see paragraph 36).
"A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. Thus, the question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis."
("Anticipatory" is the legal term for being obvious based on the prior art). Worse yet, this dates back to 1998. I've been in the dark for a long time.

This is another example of how patents should be left to the lawyers. There is plenty of bad advice floating around from scientists and engineers, and obviousness is probably the biggest snakepit of all. Given that, my standard operating procedure has always been to assume that any invention is unobvious until someone with authority tells me otherwise.

Knowing this decision will not change how I approach a problem. When the suggestion is given to avoid a certain direction, I've found that quite often that advice is an opinion based on what the person thinks will happen, not something backed with evidence. I've seen it in my own "advice", where I say (with an appropriately boisterous voice) "Oh no, that'll never work". I've learned the hard way how much joy Mother Nature takes in showing my opinions about chemistry and engineering are wrong, so I'm glad to see she is an equal-opportunity destroyer-of-opinions and not just picking on me.

[*] What's with this "ordinary" description? In my mind, "extraordinary" would be better. (Ha ha!) Actually, the patent law talks about "obviousness" and other issues as being in the view of an ordinary practitioner, hence the term.

1 comment:

Travis said...

Hi John

Actually, you had it right to begin with before you saw the court decision: if you go against a teaching in a reference, and the result is useful and/or beneficial in some way, then the result is not obvious (and thus the resulting invention is not obvious). Let me try to explain.

Anticipation and obviousness are not the same thing. Anticipation is when your claimed invention is (typically) disclosed in a single reference, and the elements in the reference are arranged as in the claim (in other words, unrelated portions of the reference are not relied on for a disclosure of the claimed invention).

Obviousness is typically where two or more references are combined to result in the claimed invention. However, a single reference can render a claimed invention obvious (and not anticipated) when the elements of the reference are not arranged as in the claim (i.e., various unrelated elements must be "picked and chosen" from throughout the reference).

To explain the difference, consider a claim to a blue widget having three hooks. An anticipatory reference must disclose a blue widget having three hooks. A single reference that would render the claim obvious (instead of anticipated) might disclose a widget that can be a variety of colors (blue, green, yellow, etc.) that can have any number of hooks (one, two, three, etc.). Since there are many options for each feature, one would have to "pick and choose" a blue widget with three hooks to get to the claimed invention.

The case law you mention is talking about an anticipation rejection, not an obviousness rejection. Let's go back to our hypothetical claim to a blue widget with three hooks. Basically, the case law says if you have an anticipatory reference that teaches away from blue widgets with three hooks, e.g., because they smell worse than blue widgets with two hooks, such a teaching away does not matter in the context of an anticipation rejection. The fact that a blue widget with three hooks is disclosed in the reference, even though it is not a preferred embodiment, renders the claim anticipated and thus unpatentable.

However, if the claim is rejected as obvious over one or more references, and the one or more references teach away from blue widgets with three hooks, then the teaching away of the reference(s) can be used to argue against the obviousness rejection.