Obviousness - Teach Away

[willi...@aol.com]

I am wondering about the scope of the term "Teach Away."

The literature seems to suggest that the prior art teaches away from
the claimed invention if it holds an opposing view of the claimed
invention. Does the prior art also "teaches away" if applying the
claimed invention to the invention in the prior art would deviate,
limit or prevent it from achieving its objective?

[David Kiewit]

"Teaching away" jargon shows up in arguments against an obviousnes rejection
in which an examiner has combined features from two dfferent references. If
one of those two references contains a statement (usually in a part of the
text that the examiner overlooked) to the effect that the proposed
combination wouldn't work, then that reference is 'teaching away' from the
combination. If the proposed combination wouldn't work, but there's no
statement in either reference saying that, then you've got an argument
against the rejection, but not a 'teaching away from' argument.

Dave Kiewit

I'm not sure what you mean by "appyling the claimed invention to the
invention in the prior art", but it sounds like you're heading the wrong way
on a one way street. It is only the claimed invention that is being
examined, so whether the prior art reference would be limited or not is
beside the point..
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