How does the concept of “teaching away” apply in patent obviousness cases?
“Teaching away” is a concept in patent law that can be used to rebut a prima facie case of obviousness. According to MPEP 2144.05:
“A prima facie case of obviousness may also be rebutted by showing that the art, in any material respect, teaches away from the claimed invention.”
Teaching away occurs when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken in the claim.
However, the mere disclosure of alternative options does not constitute teaching away. As stated in the MPEP:
“[T]he 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.”
To establish that a reference teaches away, applicants need to show that the reference would discourage or criticize the claimed invention.
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