Editing MPEP 2123

<noinclude>{{MPEP Section|2122|2100|2124}}</noinclude>

==[[MPEP 2123|2123 Rejection Over Prior Art's Broad Disclosure Instead of Preferred Embodiments]]==

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

“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. They 
are part of the literature of the art, relevant for all they 
contain.” In re Heck, 699 F.2d 1331, 1332-33, 
216 
USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In 
re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 
277 (CCPA 1968)). 

A reference may be relied upon for all that it would 
have reasonably suggested to one having ordinary 
skill the art, including nonpreferred embodiments. 
Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 
10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 
975 (1989). See also Upsher-Smith Labs. v. Pamlab, 
LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 
(Fed. Cir. 2005)(reference disclosing optional inclusion 
of a particular component teaches compositions 
that both do and do not contain that component);
Celeritas Technologies Ltd. v. Rockwell International 
Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-
23 (Fed. Cir. 1998) (The court held that the prior art 
anticipated the claims even though it taught away 
from the claimed invention. “The fact that a modem 
with a single carrier data signal is shown to be less 
than optimal does not vitiate the fact that it is disclosed.”).


See also MPEP § 2131.05 and § 2145, subsection 
X.D., which discuss prior art that teaches away from 
the claimed invention in the context of anticipation 
and obviousness, respectively.

II.NONPREFERRED AND ALTERNATIVE 
EMBODIMENTS CONSTITUTE PRIOR 
ART

Disclosed examples and preferred embodiments do 
not constitute a teaching away from a broader disclosure 
or nonpreferred embodiments. In re Susi,
440 
F.2d 442, 169 USPQ 423 (CCPA 1971). “A 
known or obvious composition does not become patentable 
simply because it has been described as somewhat 
inferior to some other product for the same use.” 
In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 
1132 (Fed. Cir. 1994) (The invention was directed to 
an epoxy impregnated fiber-reinforced printed circuit 
material. The applied prior art reference taught a 
printed circuit material similar to that of the claims 
but impregnated with polyester-imide resin instead of 
epoxy. The reference, however, disclosed that epoxy 
was known for this use, but that epoxy impregnated 
circuit boards have “relatively acceptable dimensional 
stability” and “some degree of flexibility,” but are 
inferior to circuit boards impregnated with polyester-
imide resins. The court upheld the rejection concluding 
that applicant’s argument that the reference 
teaches away from using epoxy was insufficient to 
overcome the rejection since “Gurley asserted no discovery 
beyond what was known in the art.” 27 F.3d at 
554, 31 USPQ2d at 1132.). Furthermore, “[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, 
73 
USPQ2d 1141, 1146 (Fed. Cir. 2004).