Merely espousing the benefits of its own invention over the state of the art is not sufficient for a prior art reference to teach away from combination with certain aspects of the state of the art. Here, for example, a short-tail mud motor with a vertically mounted engine described as an improvement over a long-tail mud motor with a horizontally mounted engine was found not to teach away from a modification that would use the disclosed short-tail mud motor with the state of the art horizontally mounted engine as claimed. “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.” This would be a good case to consult before responding to an obviousness rejection in which the Examiner proposes modification of the prior art with components that the prior art purports to improve upon.
Background / Facts: The patents being asserted here are directed to a short-tail mud motor with a horizontally mounted engine. The prior art discloses a short-tail mud motor but with a vertically mounted engine, and hails this configuration as an improvement over state of the art long-tail mud motors with horizontally mounted engines.
Issue(s): Whether the prior art’s statements regarding improvement over horizontally mounted engines teach away from it being obvious to modify the disclosed vertically mounted engine to be horizontally mounted as claimed.
Holding(s): No. “The [prior art] does not teach away from the use of horizontal motors. Instead, it describes the shortcomings of long tail motors that use horizontal engines. … Nowhere does [the prior art] suggest that using a horizontal engine would render the motor inoperable. It merely describes the benefits of its vertical engine when compared to the dominant prior art—the long tail motor. These are not statements that would deter one of ordinary skill from combining features of the long-tail motor with the [prior art].”