March 7, 2017

Prior Art Preference for an Alternative is Not Enough to Teach Away

By Bryan K. Wheelock, Principal

In Meiresonne v. Google, Inc., [2016-1755] (March 7, 2017), the Federal Circuit affirmed the PTAB determination that claims 16, 17, 19 and 20 of U.S. Patent No. 8,156,096 on a system whereby a user can identify a supplier of goods or services over the Internet, were invalid for obviousness.

The Federal Circuit began with the observation that a combination of known elements is likely to be obvious when it yields predictable results.  The Federal Circuit observed that obviousness may be defeated if the prior art indicates that the invention would not have worked for its intended purpose or otherwise teaches away from the invention.  The Federal Circuit explained that a reference teaches away “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.  A reference that “merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into” the claimed invention, however, does not teach away.

Although Meiresonne argued that the references taught away from the combination of descriptive text and a rollover viewing area because both prior art references disparage and criticize the use of descriptive text, the Federal Circuit concluded upon reviewing the references that substantial evidence supported the Board’s fact finding that the prior art does not teach away from the claimed combination, and therefore affirmed.  The Federal Circuit distinguished cases like Depuy Spine, where the prior art taught that the combination would be inoperative for its intended purpose.