By: Daniel A. Geselowitz, Ph.D.
Applicants may be too quick to amend their claims when faced with an obviousness rejection (35 U.S.C. §103) based on a combination of references. Many times, claim amendments are truly necessary to combat obviousness assertions, but in those times where the prior art “teaches away” from an Examiner’s suggested modification or combination of references, the unnecessary narrowing of claim scope by amendment may altogether be avoided or at least minimized. The examples below summarize how the courts have articulated the applications of the teaching away arguments when weighing the teachings of the combined references.
- The modifications of the references render the result inoperable.
In In re Sponnable (CCPA 1969), the invention relates to a mixing vial with a plurality of compartments and “an improved center seal plug” placed between the compartments to temporarily seal the compartments from each other. Sponnable’s mixing vial includes a center seal plug of butyl rubber to prevent the passage of moisture through the center plug. The claims were rejected based on Bujan or Lockhart in view of Jensen and either Parsons or Umbdenstock under 35 U.S.C. §103. Bujan and Lockhart teach the use of plugs made of natural rubber, and do not mention any moisture transmission through the plug. Jensen teaches the impermeability of butyl rubber to steam, but there is no mention that “impermeability to liquid water is desired or necessary in a center seal plug.” Based on these teachings of the prior art, the court reasoned that: —click here to read more—