Patent Law FAQ

The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:

“A prior art reference that ‘teaches away’ from the claimed invention is a significant factor to be considered in determining obviousness; however, ‘the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’“

Key points about the ‘teaching away’ doctrine:

• It’s a factor in determining non-obviousness, but not necessarily conclusive
• The substance and nature of the teaching must be considered
• Mere disclosure of alternatives doesn’t constitute teaching away
• A reference must actively criticize, discredit, or discourage the claimed solution to teach away

Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.

To learn more:

• teaching away
• obviousness
• prior art
• patent examination

Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:

“Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.’ In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).“

Key points about hindsight arguments:

• Some degree of hindsight is inherent in obviousness analyses
• Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
• Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
• Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
• Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used

Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.

To learn more:

• hindsight
• obviousness
• patent examination
• prior art

The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:

“A prior art reference that ‘teaches away’ from the claimed invention is a significant factor to be considered in determining obviousness; however, ‘the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’“

Key points about the ‘teaching away’ doctrine:

• It’s a factor in determining non-obviousness, but not necessarily conclusive
• The substance and nature of the teaching must be considered
• Mere disclosure of alternatives doesn’t constitute teaching away
• A reference must actively criticize, discredit, or discourage the claimed solution to teach away

Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.

To learn more:

• teaching away
• obviousness
• prior art
• patent examination

Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:

“Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.’ In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).“

Key points about hindsight arguments:

• Some degree of hindsight is inherent in obviousness analyses
• Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
• Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
• Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
• Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used

Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.

To learn more:

• hindsight
• obviousness
• patent examination
• prior art

The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:

“A prior art reference that ‘teaches away’ from the claimed invention is a significant factor to be considered in determining obviousness; however, ‘the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’“

Key points about the ‘teaching away’ doctrine:

• It’s a factor in determining non-obviousness, but not necessarily conclusive
• The substance and nature of the teaching must be considered
• Mere disclosure of alternatives doesn’t constitute teaching away
• A reference must actively criticize, discredit, or discourage the claimed solution to teach away

Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.

To learn more:

• teaching away
• obviousness
• prior art
• patent examination

Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:

“Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.’ In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).“

Key points about hindsight arguments:

• Some degree of hindsight is inherent in obviousness analyses
• Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
• Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
• Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
• Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used

Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.

To learn more:

• hindsight
• obviousness
• patent examination
• prior art

The ‘teaching away’ doctrine is an important concept in patent law related to obviousness rejections. A prior art reference is said to ‘teach away’ from the claimed invention if it criticizes, discredits, or otherwise discourages the solution claimed. However, as MPEP 2145 explains:

“A prior art reference that ‘teaches away’ from the claimed invention is a significant factor to be considered in determining obviousness; however, ‘the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.’“

Key points about the ‘teaching away’ doctrine:

• It’s a factor in determining non-obviousness, but not necessarily conclusive
• The substance and nature of the teaching must be considered
• Mere disclosure of alternatives doesn’t constitute teaching away
• A reference must actively criticize, discredit, or discourage the claimed solution to teach away

Examiners and applicants should carefully evaluate the context and substance of prior art teachings when considering this doctrine.

To learn more:

• teaching away
• obviousness
• prior art
• patent examination

Applicants often argue that an examiner’s obviousness rejection is based on improper hindsight reasoning. MPEP 2145 addresses this issue:

“Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, ‘[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.’ In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).“

Key points about hindsight arguments:

• Some degree of hindsight is inherent in obviousness analyses
• Proper hindsight uses only knowledge available to a person of ordinary skill at the time of invention
• Improper hindsight relies on knowledge gleaned solely from the applicant’s disclosure
• Examiners should explain how their reasoning is based on prior art teachings, not applicant’s disclosure
• Lack of express motivation to combine in prior art doesn’t necessarily mean improper hindsight was used

Examiners should carefully articulate their reasoning to show they are not relying on improper hindsight.

To learn more:

• hindsight
• obviousness
• patent examination
• prior art