A Prior Art Preference Pointing to a Feature Different from a Claimed Limitation is Relevant to an Obviousness Analysis

February 21, 2018 – Article

Consider a claim directed to an all-terrain vehicle (ATV) with several limitations including a fuel tank located under the driver seat.  A prior art reference discloses all the claimed limitations, except for the location of the fuel tank.  The reference does not teach where to place the fuel tank, but discloses a general preference for a low center of gravity.

Applicants or patent owners often try to argue that a reference “teaches away” from the claimed invention because a “teaching away” is generally strong evidence of non-obviousness.  The difficulty with this argument, however, is that the case law defines “teaching away” narrowly, such that the argument does not apply in many situations.  The standard for a reference to teach away is that it must “criticize, discredit, or otherwise discourage’ the claimed invention. Whether or not the reference in our example “teaches away” from placing the fuel tank under the seat is debatable.  On the one hand, the reference does not explicitly “criticize, discredit, or otherwise discourage” placing the fuel tank under the seat.  On the other hand, it could be shown that placing the fuel tank under the seat would require raising the occupancy area, which would result in an overall higher center of gravity.  And the reference teaches away from raising the center of gravity.

What happens if the USPTO determines that the reference does not teach away from the claimed invention?  Typically, the USPTO ignores mere “preferences” taught by the reference.  The Court of Appeals for the Federal Circuit (CAFC) recently reminded the USPTO that such a treatment of a prior art “preference” was error.  In Artic v. Polaris (Fed. Cir. Feb. 2018), an appeal from two Inter Partes Reviews (IPR), the Court remanded the case to the PTAB and stated: “even if a reference is not found to teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would be motivated to combine that reference with another reference.”  The Court rejected the PTAB’s characterization of the reference’s “preference” for a lower center of gravity as being “of limited value in evaluating obviousness.”  The Court thus instructed the PTAB to first consider if the “preference” for a lower center of gravity teaches away from placing the fuel tank under the seat, and further stated that “even if the Board determines that [the prior art reference] does not teach away because it merely expresses a general preference, the statements in [the reference] are still relevant to determining whether a skilled artisan would be motivated to” modify the reference by placing the fuel tank under the seat.

Personally, I would prefer not to sit on top of a fuel tank.  But, that’s just me.