How does the “teaching away” concept affect obviousness rejections?
How does the “teaching away” concept affect obviousness rejections?
The concept of “teaching away” can significantly impact obviousness rejections in patent examination. According to MPEP 2143.01:
“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.'”
This means that if a reference criticizes, discredits, or otherwise discourages the solution claimed, it may be less likely to render the claimed invention obvious. However, the examiner must carefully consider the context and substance of the teaching. Mere disclosure of alternative options does not constitute teaching away unless the reference explicitly states that the claimed option should not be pursued.
When evaluating a potential “teaching away,” consider:
- The strength and clarity of the discouragement
- Whether the reference presents the claimed solution as inferior
- If the reference suggests the claimed solution would not work
- The overall context of the disclosure
Examiners should provide a detailed explanation if they determine that a reference teaches away from the claimed invention, as this can be a powerful argument against obviousness.
To learn more: