IP Court's Opinion on Teaching Away
published on 13 Apr 2015
IP Court in a recent administrative judgment expressed a new definition regarding "Teaching Away."
Plaintiff is the patent owner of TWI313310 entitled "Process and Entangling Nozzles for the Production of Knotted Yarn," (hereinafter referred to as the disputed patent). Plaintiff appealed to IP Court for the invalidation decision the Taiwan Intellectual Property Office (TIPO) made. However, the IP Court dismissed the appeal.
The dispute in the invention at issue is whether the prior art that teaches away from the claimed invention render the combination of prior art non-obvious.
Plaintiff's Argument
Regarding the inventive step of Claim 1 of the patent at issue, the plaintiff argued that the numeral value 22.22% disclosed by Exhibit 3 is merely a single value which does not fall within the range of numeral values 10%～20% of Claim 1. Further, the range of numeral values 50%～200% disclosed by the prior art cited by the examiner during patent prosecution does not overlap the range of numeral values 10%～20% of Claim 1, either. Thus the prior art "teaches away" from the claimed invention.
The IP Court's Ruling on the case
The IP Court found the plaintiff's argument not persuasive based on the following rationale:
1. Stemming from the US patent practice, the concept of teaching away is established based on the principle that a prior art reference may teach away from the invention that is applied for a patent, when, for sake of technique or safety, the prior art reference discourages a person of ordinary skill in the art from, advises against or negates following the path set out in the prior art reference. A prior art reference may also teach away from the invention when the prior art reference guides a person of ordinary skill in the art in an opposite direction to the invention. In other words, "teaching way" means that a person of ordinary skill is deterred or discouraged from achieving the claimed invention, thus the claimed invention has no causal relationship with the teachings of the prior art reference. As a result, "teaching away" is advantageous to find the inventive step from the claimed invention.
2. WWhere there are differences in features, such as structure, condition and range between the prior art and the claimed invention in consideration of the scientific principle or application of the pertained technical field, such differences are advances in science and technology resulting from continued and cumulated experiments, as well as “trial and error.” The prior art "teaching way" from the claimed invention is established if the minority disclosed in the prior art pertains to the extreme error discarded by the scientists so as to discourage a person of ordinary skill in the art from following the path set out in the prior art, or if it guides him/her in a direction opposite to the path that was taken by the prior art. Otherwise, the technical differences between the prior art (or the cumulated experiments or “trial and error” according to the minority in the prior art) and the claimed invention merely reflect different teaching, opinion, or knowledge. One cannot straightforwardly come to a conclusion that, as a result of the different teachings, the prior art reference teaches away from the invention at issue, and thereby infer that the claimed invention is inventive.
3./span> The technical means for solving the technical problem in the cited prior art and the disputed patent is that the blown air in the inlet area to the yarn treatment channel creates two strong contradirectional stationary swirl flows virtually undisturbed by the filament bundle in the air swirl chamber. The disputed patent and prior art employ the same scientific principle and apply it in the same technical field. Although the technical feature "the air swirl chamber being formed as a blast-air supply channel widening of 10%~20% of the yarn channel width" defined in disputed Claim 1 is distinct from the prior art, it fails to constitute a rebuttal argument based on "teaching away”as the prior art never excludes, negates, or discourages the values 10%～220% defined in the disputed Claim 1.
IP Court's opinion regarding "Teaching Away" in the above decision is considered a clear definition compared with the Court's other two judgments on the same theory:
Previous IP Court Opinions on "Teaching Away"
1. /span> Civil Judgment in 2009
In a 2009 civil judgment the court had provided a definition to the so-called "teaching away." The Court expressed that "teaching away" means that the prior art explicitly excludes the combination of certain known elements; that the prior art teaches that the combination of certain known elements is incompatible in nature; or that, while solving the technical problem of the claimed invention, a person of ordinary skill in the art would adopt a technical means in an opposite direction to the claimed invention based on the disclosure of the prior art When the prior art provides a different technical means to solve the same technical problem or the prior art merely discloses some embodiments, the "teaching away" is not necessarily established because the prior art does not hinder a person of ordinary skill from utilizing the claimed technical means tto thereby obscure the motive for combining the known elements.
2. /span> AAdministrative Judgment in 2013
In this judgment the definition of "teaching away" given by the Court is the same to the one opined in the 2009 administrative judgment. In the rationale the Court also elaborates that, the "teaching away" is not necessarily established because the prior art does not hinder a person of ordinary skill from utilizing the claimed technical means, even though the prior art provides a different technical means to solve the same technical problem or the technical problem to be solved is slightly different between the prior art and the disputed patent.
The concept of teaching away in determining inventive step of an invention was not yet prescribed in the Patent Examination Guidelines at the time the disputed patent was granted. The limited and relevant concept found in the updated Guidelines is that, "combining two references is non-obvious when the technical means of the two references are incompatible in nature, and an invention is non-obvious when an abandoned technical means (due to deep-rooted prejudice) is adopted to solve a technical problem," which is insufficient.span style="mso-spacerun: yes"> Thus, it is welcomed to see that the IP Court clarifies the meaning of "teaching away." IIt is expected that TIPO will follow the IP Court ruling on "teaching away" by incorporating the definition into the Guidelines in the near future if an increasing number of judgments are rendered on the same meaning of "teaching away."
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