When arguing that a reference teaches away from the proposed combination or would render the prior art reference being modified inoperable for its intended purpose, try to cover all of your bases. While it is natural to define the purpose of a prior art invention narrowly in order to argue that this specific functionality will be lost, the more narrowly you define that purpose the easier your arguments will be to ignore. It only takes de minimus operation to be operable, and only general operation is required. Try to show that the functionality being lost is fundamental to the prior art invention, not merely an ancillary benefit.
Background / Facts: The patent at issue is effectively directed to the “fridge pack” beverage container made popular by Coca Cola and others, where a perforated top corner allows easy access to stored beverage cans while keeping them in place after opening the container. There was no dispute that the claimed limitations in every group of claims already existed in the combination of prior art that the Board relied on to invalidate the claims. Aside from a few minor claim construction issues that were easily dispatched, the only challenge to the Board’s determination of obviousness was that one of ordinary skill in the art would not have been motivated to combine the prior art to arrive at the claimed invention.
Issue(s): Whether a “staggered” can arrangement that is specifically intended to enable dispensing cans in a predetermined order teaches away from being combined with a “row and column” arrangement that would defeat this purpose.
Holding(s): No. The claims at issue do not aim to dispense cans in a predetermined order, and hence, whatever the prior art does to dispense cans in a predetermined order cannot teach away from the claims at issue: “A traffic sign that signals the direction to Times Square should not affect a driver who is not going to New York.” Further, dispensing in a predetermined order is not the sole purpose of the prior art container, which would still be operative for the broader purpose of containing and dispensing cans from the carton. Thus, the court found substantial evidence to support the Board’s determination that one of ordinary skill in the art, especially one who is not interested in dispensing cans in a predetermined order, would simply do away with the staggered arrangement.