2123

2123 Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments [R-5]

I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN

Heck

“‘The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned, as they are a part of the literature and are relevant for all they contain.’” In re Heck, 699 F.2d 1331, 1333 (Fed. Cir. 1983), citing In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968).

MERCK

A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments. Merck & Co v. Biocraft Labs., 874 F.2d 804, 807 (Fed. Cir. 1989).

II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART

FULTON

See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art's mere disclosure of more than one alternative does not constitute a teaching away from any … alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed .…”)

In addition, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

SUSI

Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971)., 440 F.2d 442, 446 n.3 (CCPA 1971).