Meiresonne v. Google, Inc.

March 07, 2017

Federal Circuit No. 2016-1755

Author: Andrew Yeretsky

In a precedential opinion, the Federal Circuit held that a reference that merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the claimed invention does not teach away from the claimed invention.

The claims at issue are directed to a system in which a user can identify a supplier of goods or services over the internet. Claim 19 recites "a rollover viewing area that individually displays information corresponding to more than one of the related subject matter links in the same rollover viewing area." There was no dispute that each of the claim limitations was disclosed in one or both of the references cited in the rejection under 35 U.S.C. § 103. However, Meiresonne argued that the cited references taught away from the claimed invention. The Federal Circuit disagreed.

The Federal Circuit held that "describing descriptive text as '[o]ften[]...cursory, if not cryptic' does not automatically convert the reference to one that teaches away from combining text descriptions with a rollover window." In particular, the Federal Circuit held that the cited referenced do not teach away from the invention because "the references do not say or imply that text descriptions are 'unreliable,' 'misleading,' 'wrong,' or 'inaccurate,' which might lead one of the ordinary skill in the art to discard text descriptions completely." Consequently, the Federal Circuit concluded that the Board's obviousness determination was supported by substantial evidence.