A mere preference that conflicts with a proposed combination of prior art references does not rise to the requisite level of discrediting or disparaging remarks necessary to establish that the prior art teaches away from the proposed combination. Here, for example, the prior art’s stated preference for an electrical box arrangement that prevents direct access to the box was found not to teach away from a combination that would add keyholes to provide direct access because preventing direct access was only expressed as a preference. “[A] stated preference is insufficient to teach away from the claimed invention.” This would be a good case to consult before arguing that an obviousness rejection lacks merit due to teaching away.
Background / Facts: The patent on appeal here from reexamination proceedings at the PTO is directed to adaptable weatherproof covers for electrical outlets. The claims recite a base plate that may use keyholes—which permit adjustments after partial insertion—for attachment to the electrical outlet. The primary reference that the PTO proposes to modify in an assertion of obviousness states that its cover “preferably includes a pivotal wall plate … for preventing direct access to the box which contains the outlets.”
Issue(s): Whether this passage teaches away from adding holes in the adapter plate that would make the keyhole slot accessible after installation because such holes would not prevent direct access to the outlet box.
Holding(s): No. “The passage, which discusses a preferred embodiment, ‘does not teach away … [as] it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.’” In particular, the prior art does not “explicitly discredit[] or discourage[] direct access to the outlet box, and the cited statement does no more than articulate a preference for an adapter plate that prevents direct access. That stated preference is insufficient to teach away from the claimed invention.”