Conflict with mere advantages or preferences identified in the prior art does not by itself constitute teaching away from a proposed combination. Here, for example, the prior art’s expressed preference for automated computer systems over trained clinicians was found not to teach away from a modification that used trained clinicians, particularly when the prior art recognized that trained clinicians were the gold standard. This would be a good case to consult before arguing that an obviousness rejection lacks merit due to teaching away.
Background / Facts: The application on appeal here from rejection at the PTO is directed to conducting a sleep analysis by a trained clinician. Although the prior art recognizes that “[t]he current ‘gold standard’ for the diagnosis of [sleep apnea] is an … overnight sleep study … administered and analyzed by a trained technician,” the described system instead uses computer automation to generate a report based on the sleep data.
Issue(s): Whether the prior art teaches away from a modification that employs a trained clinician because it disparages the use of any sleep-trained individuals.
Holding(s): No. “[The prior art] suggests that an overnight sleep study conducted by a sleep-trained clinician is expensive and that detection can vary by clinician because professional organizations have provided limited guidelines. At most, those suggestions indicate some advantages for computer analysis that may make such analysis preferable in many circumstances. That is not enough to teach skilled artisans away from the alternative that [the prior art] identifies and calls the ‘gold standard.’”