How does the disclosure of alternatives affect a prior art suggestion?
The disclosure of desirable alternatives in prior art does not necessarily negate a suggestion for modifying the prior art to arrive at the claimed invention. As stated in MPEP 2143.01, “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.” This principle was established in the case of In re Fulton, where the court affirmed that the prior art as a whole can suggest the desirability of a combination, even if it’s not the most preferred or desirable option.
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Topics:
MPEP 2100 - Patentability,
MPEP 2143.01 - Suggestion Or Motivation To Modify The References,
Patent Law,
Patent Procedure