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A reference that teaches away from X isn’t “capable of” X December 11, 2014

Posted by Brian Schar in Patent prosecution, USPTO.
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One of the more frustrating rejections to receive from the USPTO is one in which the Examiner waves his or her hands around and states, “the disclosure of this reference is capable of X, so, 103.”  There is usually very little technical reasoning that accompanies such a rejection.  Instead, there are quotes of random sections of the disclosure strung together, with no analysis accompanying that.  While these rejections are frustrating, at least they tell you the end is in sight, because if that’s the best the Examiner can do, you can just win on appeal and go to issue.

That is exactly what happened in Ex parte Henry.  Henry claimed a blood flow monitor that included, among other elements, a display configured to show a visual indication of blood flow rate between a threshold frequency down to a zero flow rate.  (Probably it’s important to know when a patient has a zero blood flow rate!)  The claims were rejected under 103 based on modifications to a US patent to Moehring.  The problem was that, as the PTAB pointed, out, “Moehring expressly excludes displaying low- and zero-frequency data.”  This didn’t stop the Examiner, who whipped up a word salad to justify the rejection: “one of ordinary skill in the art would have found it obvious to try a method of visually displaying data from a threshold frequency down to zero while ‘refining efforts to reduce the negative effects of tissue/probe motion and noise not indicative of blood flow’ that are described in Moehring, thus providing a ‘display of raw/unfiltered data from zero frequency to a defined upper threshold frequency.’”  Further, the Examiner found that “the low-frequency data deemed to be noise by Moehring are ‘not representative of blood flow but instead tissue motion, and therefore, the signal present fully represents blood flow.’”

The PTAB made short work of this.  “Moehring’s system…excludes all low-frequency signals, regardless of source,” and thus teaches away from displaying such signals.  The PTAB did not expressly hold that the Examiner provided insufficient technical reasoning, but it didn’t have to; the teaching away argument was sufficient.  Nevertheless, the PTAB did point out that the Examiner provided no support for certain aspects of the argument.

The rejected claims included functional language.  The PTAB pointed out that the “presence of functional language in an apparatus claim does not excuse the absence of a prima facie case of obviousness.”  Rather, “the prior art apparatus must be capable of performing the claimed function.”  Where the reference “teaches away from those very functions,” then there can be no valid rejection of the claim based on its inclusion of functional language.

To me, the first key takeaway of Ex parte Henry is that an solid “teaching away” argument demolishes a bad 103 rejection with poor or no technical reasoning.  It has to.  If the reference expressly says that the invention doesn’t include X, then no amount of technical reasoning can show that the reference taught an invention that required X.  The second key takeaway from Ex parte Henry is that a solid “teaching away” argument directed to a function in the reference obviates any “functional language” objection to the claims.

Carefully review the cited art when you receive a 103 rejection.  The “teaching away” argument is a powerful tool, when you can use it.

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