By: Roshni A. Sitapara

In a recent United States Court of Appeals for the Federal Circuit (Fed. Cir.) case (Gator Tail, LLC v. Mud Buddy LLC), the Federal Circuit held that if a reference describes a modification of a claimed invention as somewhat inferior, that reference does not necessarily teach away from the claimed invention. Additionally, if a reference merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the claimed invention, it does not teach away from the claimed invention.

Teaching Away in 35 U.S.C. 103 Obviousness Rejections

If a reference teaches away from a claimed invention, the claimed invention is more likely to be non-obvious. A reference teaches away from a claimed invention “when a person of ordinary skill in the art, 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 by the applicant.” (In re Gurley, Fed. Cir. 1994).—click here to read more—