Teaching Away: Only Counts if the Reference Teaches Away from All Embodiments of the Claim

Owens Corning v. Fast Felt Corp (Fed. Cir. 2017)

After being sued for infringing Fast Felt’s U.S. Patent No. 8,137,757, Owens Corning retaliated with a petition for inter partes review.  Although the PTO instituted the IPR, the PTAB eventually determined that the claims were not obvious — i.e., that “Owens Corning had failed to show obviousness of any of the challenged claims.”  On appeal, the Federal Circuit has reversed — holding that under a proper BRI claim construction, that the claims are obvious.

Representative Claim 1 is directed to a method of making roofing materials with reinforced nail tabs.  Particularly, the claim requires:

depositing tab material onto the surface of said roofing or building cover material at a plurality of nail tabs from a lamination roll, said tab material bonding to the surface of said roofing or building cover material by pressure between said roll and said surface.

Basically, the reinforcement tab material comes from a laminate roll and is stuck onto the building material using pressure.

The closest prior art (Lassiter) taught creating reinforced tabs on roofing material by injecting a liquid that later solidifies. U.S. Patent No. 6,451,409.  Those were combined with other non-roofing references taught adding reinforcement material to a substrate from a lamination roll.

The PTAB rejected the combination of these references — finding that Lassiter appears to teach away from using pressure or heat to add the reinforcement because it destabilizes asphalt roofing materials – and thus is not easily modifiable.

On appeal, the Federal Circuit rejected the analysis – finding that the claims do not require “asphalt roofing materials” but rather extend to cover any “roofing or building cover material.”

It is true that the preferred embodiments in the ’757 patent focus on roofing materials that are or will be coated or saturated with asphalt or asphalt mix. . . . [However] The claims are plainly not so limited. Indeed, they are not even limited to “roofing materials,” as they all expressly include “building cover material” as well as roofing material. Moreover, even the specification, when not discussing preferred embodiments, is not limited to roofing materials: it speaks of “roofing materials or other building materials normally employed as cover materials over a wood roof deck or stud wall.”

Thus, although Lassiter may teach-away is focused on asphalt materials, it does not teach away from all embodiments covered by the full-scope of the claims.

Following the Supreme Court’s lead in KSR, the Federal Circuit offered a full reversal and held the claims unpatentable.

Based on the record before us, there is only one permissible factual finding—a skilled artisan would be motivated to combine the prior-art references to print nail tabs on building cover materials that are not (already or to be) asphalt coated or saturated Lassiter’s nozzle-based printing technique and Hefele’s and Eaton’s gravurebased printing processes were known substitutes, with success predictable as to materials covered by the claims. There is no substantial evidence to the contrary.



28 thoughts on “Teaching Away: Only Counts if the Reference Teaches Away from All Embodiments of the Claim

  1. 6

    I was originally confused by this, as I normally consider “teaching away” arguments in the context of whether reference A can be modified by reference B, not whether reference A discloses the claim language at issue.

    It seems to me that the court should have said that this is not an issue of whether reference A teaches away from pressure, but simply whether reference A teaches that particular feature in the claim under BRI. If the claim language contains genus language of “building materials”, where asphalt is a species of that genus, and reference A only discourages use of pressure wrt the species and not the genus as a whole, then the reference still may read on the genus claim language.

    I would hate for this holding to be applied to normal “teaching away” arguments based on a combination or modification of prior art references.

    1. 6.2

      The court was responding to the arguments made by the patentee. The patentee had no other arguments so they clung to this b0 gus “teaching away” argument like a pitbull. Sanctions would have been perfectly appropriate here.

      But we know that would be soooooooooooo unfair.

  2. 5

    This appears to be an example of an overly aggressive patent attorney doing his client a great disservice by trying to claim more than the client invented — pressure tabs on asphalt roofing.

    1. 5.1

      More likely: application claim drafting done in a prior art vacuum created by not doing any prior art searching beforehand, because the client doesn’t want to pay for that.*

      *This is a great example of how much money companies actually “save” by that practice.

      1. 5.1.1

        Absolutely agree that not providing the best possible prior art search in preparation of application writing is f001hardy.


          not providing the best possible prior art search in preparation of application writing is f001hardy

          Would that include the art that teaches that programmable computers process data in the manner in whch they are instructed?


            It also applies to the “art” that teaches that three basic units of matter can be configured in a multitude of ways.

            Thanks for asking.

            Here’s a couple of question for you:

            Does copyright cover facts?
            Not the collection of facts, mind you – the facts themselves?

            Does copyright cover logic?

            Does copyright cover software?
            If yes, what is the aspect of software that copyright covers?
            Is that aspect any different than logic?

            Do you see where this leads?


              the “art” that teaches that three basic units of matter can be configured in a multitude of ways.

              That would be the art where you are required to describe the configuration in structural terms, and where you overcome obviousness with unexpected results.

              In other words: every art except the s0 ftie w0ftie “art” aka the “art” of writing instructions for applying logic to data.

              Does copyright cover software?

              LOL Deep deep stuff. Thank goodness you’re not a dust-kicking t rdb@ll, “anon.” I might think you were just trying to change the subject as usual.



                required to describe the configuration in structural terms,

                And yet again the canard of an optional claim form as somehow being not an option….


                As for the other questions, why don’t you try answering them. Clearly, they will lead back to this subject (and they will do so in a way that I am sure that your feelings will not enjoy).

  3. 4

    Perhaps just a pedantic nit, but the headline would be better put as:

    Teaching away: Scope of the item proffered as teaching away must match the scope of the claim.

    As to “Many if not most mistakes at the PTAB level will be in the patentees favor and everybody knows this.” – that’s just not reality (by the way Malcolm, I agree with your paragraph (1)).

    1. 4.1

      I disagree with Malcolm’s first paragraph. What it says seems OK except that he falls into the old error of treating “teaching away” as an all-or-nothing either/or question.

      The degree of teaching away varies case by case. “Expensive” discourages the combination to at least some extent. “Not preferred” does too, even if only a little. A determination under 35 U.S.C. § 103, however, requires consideration of the entirety of the disclosure made by the two references to those skilled in the art. The teaching away in the reference doesn’t somehow stop being teaching away, and doesn’t suddenly become absolutely irrelevant to obviousness or nonobviousness as a matter of law, just because it happens to fall short of some arbitrary threshold level of teaching-away or discouragement. (The CAFC, as usual, has some decisions, like the vacated Apple v. Samsung panel opinion, that seem to lend support to MM’s view, but also has others, like the en banc majority opinion in that same case, that say otherwise.)

      That being said, at least at first glance you don’t need to agree with Malcolm to agree with the Court in this case. The question here was how much, if at all, the prior art taught away from the combination using roofing/building materials falling under the claim’s materials limitation. It appears there was evidence that the prior art DID teach away from using asphalt-coated materials that satisfied the combination, but also evidence that it did NOT teach away from using non-asphalt building materials in the claimed combination. That would seem to be enough to support the Court’s obviousness determination. The petitioner did not have to prove that the entire scope of the claims was obvious, just part of it.

      1. 4.1.1

        MM asseerts that “expensive” is not teaching away. But you, 1-Eyed Man, write the opposite, namely, that:

        ““Expensive” discourages the combination”

        I think we need to be clear here about who is the person for whom things are either obvious or not. Thus, for a real business manager, it might very well be not at all “obvious” to proceed down a prohibitively expensive course of technology.

        But we are not concerned (are we) with what is commercially obvious. That is irrelevant and a distraction, surely. Or do we need accountancy professionals pontificating to the court about what they would find “obvious”?

        We should instead be concerned (should we not?) about what that imaginary construct, the PHOSITA (who takes no account of cost) finds technologically obvious or not.

        If so, MM is right, no?

      2. 4.1.2

        “Expensive” prior art is still prior art.

        Patents are for promoting progress in technology. “That would be expensive” is not “teaching away” from a combination. You will never succeed with that argument against a competent attorney. Ever.

        Amazing that this is even debated here. But not surprising given the disinformation promulgated by Big Jeans and his ilk.

      3. 4.1.3

        The teaching away in the reference doesn’t somehow stop being teaching away … just because it happens to fall short of some arbitrary threshold level of teaching-away

        I think you need to slow down a bit before you post silliness like this.

  4. 3

    Not fa nuttin, but back in the day, yours truly spent considerable time pealing annular rings of paper/plastic material off a roll of substrate material and sticking them (with pressure) over the pre-cut holes in “loose-leaf” paper, either as a preventive measure or as a means of repair of pages from my “loose-leaf binder.”

    I did a similar chore using annular rings that came loose in a box. In those instances, one side of the rings had to be moistened like a postage stamp, and then applied with pressure to the location of the pre-cut holes.

    So… you know…. 103s-ville dudes.

  5. 2

    [T]he Federal Circuit offered a full reversal and held the claims unpatentable.

    I found thefull reversal to be one of the more interesting points in this case. The CAFC explained (slip op. at 8) that “Owens Corning sought outright reversal on this ground in its opening brief, [and] Fast Felt in its responsive brief did not ask for a remand if this court adopted a claim interpretation not limited by any requirement of asphalt coating or saturation,” (emphasis added). This is the second time that I remember seeing the CAFC say “you did not ask for remand, so outright reversal is what you get.”

    Take-home lesson: if you are the appellee, be sure to throw in at least one line asking for remand in the instance that the judgment is not affirmed.

    1. 2.1

      Good point, but way too late by the patent owner to amend any claims in the IPR or provide declarations that could have been provided earlier, so no good reason for a remand to change this IPR outcome.

  6. 1

    Great sensible decision. Two important lessons here for all the people who always f0rget (and will certainly continue to forget):

    (1) “teaching away” in a prior art reference does not mean “if you squint your eyes really hard and ignore a bunch of other stuff, you can kinda imagine that someone might see this statement as suggesting something different from one of the embodiments in the claim.” Rather, a defensible “teaching away” is a statement that says, expressly or inherently, that the specific thing you are claiming is something that will not work. “Expensive” is not “teaching away.” “Not preferred” is not “teaching away.” “X won’t work because it involves Y which interferes with whole point of doing X” <– that’s teaching away. Note also that the existence of one art reference “teaching away” amidst five others that suggest otherwise is not going to cut the mustard, generally speaking.

    (2) The PTAB is not “anti-patent”. Not by a long shot. Many if not most mistakes at the PTAB level will be in the patentees favor and everybody knows this. Of course, the mistakes are not as likely to be as biased towards patentees as initial exam because there are additional eyes invested in eliminating those mistakes at the PTAB level. But they happen, and ignoring that fact is just another transparent game played by the maximalists (who are otherwise oh-so-“civilized” — you can always trust them! LOL).

    1. 1.1

      MM, on the inherent bias of the PTAB: would you not believe that a judge hearing a case for the second time on the same evidence be inclined to rule in the same way even if the second time the standard of proof was higher?

      Stated another way, would not you prefer that the second judge be different from the first?

    2. 1.2

      MM, assume these facts: it is conventional wisdom that iron smelting furnaces need cold air blasts in order to work efficiency. The inventor discovers that using hot air blasts dramatically increases the efficiency of the iron smelting furnace.

      Does the conventional wisdom teach away?

      1. 1.2.1

        Ned, here in Europe, we don’t use the concept of “teaching away”. But we do recognise the notion of a “prejudice” that might exist in the mind of the PHOSITA, such prejudice resulting in a disinclination to adopt the claimed solution to solve the objective problem.

        It cropped up in the litigation over Dyson patents on vacuum cleaners. There was a prejudice against vacuum cleaners without a paper bag to capture the sucked-up dust.

        Sounds like, in your hypo, there was just such a prejudice.

        I wonder whether MM can relate to the notion of a technical prejudice.

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