In order for a prior art reference to teach away from the claimed invention, it must criticize or otherwise discourage use of the claimed invention rather than merely provide an alternative. Here, for example, a reference’s mere emphasis that the absence of due dates for online video or video game rental services is a benefit of its alternative subscription payment model was found to be insufficient to teach away from using the claimed “expiration dates” because it did not significantly “criticize[] or otherwise discourage[]” the use of expiration dates in a rental system using a subscription payment model. “The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the [claimed] solution.”
Background / Facts: The application on appeal here from rejection at the PTO is directed to a computer-implemented method for managing rented downloaded content. The claims recite a use limitation for the downloadable content that includes “an expiration date.” The prior art references being applied in an assertion of obviousness disclose online video or video game rental services, with the primary reference disclosing a business strategy in which members can rent their games for any length of time, with no preset expiration date, in favor of a monthly subscription plan. A secondary reference, however, discloses media that is encrypted and unlocked using an encryption key that expires once a specified period of time passes.
Issue(s): Whether, because the primary reference teaches that members can rent their games for any length of time and emphasizes the absence of due dates as a benefit of its subscription model, it teaches away from using expiration dates.
Holding(s): No. “The fact that the two references teach different payment models for how to rent videos does not mean that a person of ordinary skill in the art would have been discouraged from combining different features from the two disclosures, including the well-known aspect of using expiration dates on rental media. It is not necessary that the inventions of the references be physically combinable to render obvious the invention under review. … As the references teach old and well-known concepts for renting media, taking a well-established feature of one and incorporating it into the other would have been obvious. … [The applicant] is unable to point to any passage in [the primary reference] that criticizes or otherwise discourages the use of expiration dates in a rental system using a subscription payment model.”