Teaching away and motivation to combine are defenses that may be used to help overcome an obviousness-type rejection of claims in a patent or patent application.
In General Electric Company v. Raytheon Technologies Corporation, General Electric (GE) appealed a decision by the Patent and Appeal Board (Board) that a patent for a two-stage turbine engine owned by Raytheon Technologies (Raytheon) was nonobvious.
GE argued to the Board that the patent was obvious over the combination of two references, Wendus and Moxon. Wendus teaches a one-stage high-pressure turbine. Moxon teaches that a transition from a two-stage design to a single-stage design is unlikely because of the increased performance demands required to improve a single-stage turbine engine’s fuel efficiency.
The Board held that Wendus taught away from a combination with Moxon and that the evidence presented as a whole did not demonstrate a motivation to combine the two references.
In its appeal before the Court of Appels (Court), GE challenged the Board’s legal standard for both teaching away and motivation to combine as applied in its nonobvious holding.
According to the Board, Wendus taught away from a combination with Moxon because it expressly considered at least some of the tradeoffs between one-stage and two-stage designs and specifically chose the one-stage design.
In reviewing the Board’s application of teaching away, the Court stated that “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.”
The Court explained that Wendus did not make a single negative statement about the use of a two-stage high-pressure turbine. Rather, Wendus teaches that a one-stage turbine might be lighter and cheaper to manufacture and maintain than a two-stage turbine. However, teaching that a specific design may be optimal or standard for a defined set of criteria does not criticize, discredit, or otherwise discourage investigation into other designs. A such, the Court held that Wendus did not teach away from a combination with Moxon.
According to the Board, because Wendus specifically chose a one-stage design, the evidence presented in the proceeding as a whole could not persuasively demonstrate a motivation to modify.
The Court noted that its precedent does not require that the motivation to combine be the best option but rather only a suitable option from which the prior art does not teach away. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.”
Also, a design preference might have simultaneous advantages and disadvantages which do not necessarily obviate a motivation to combine. As such, the Court held that the Board lacked substantial evidence for its conclusion that GE did not establish a motivation to combine the references.
The Court further held that it did not matter that GE did not explain why an artisan would be motivated to use each element disclosed in Wendus. That Wendus treats each of the disclosed elements as desirable was enough to motivate an artisan to combine them with a two-stage turbine, as long as the artisan believed there was a reasonable likelihood that the combination would succeed.
In prosecuting a patent application or enforcing an issued patent, it is important to understand how these defenses may be applied effectively against an obviousness-type rejection.
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