CAFC: Obvious even if it meant foregoing benefits of prior art

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Federal Circuit Review No. 80-3.
Obviousness Rejection Upheld When Artisan Would Pursue Properties of One Reference, Foregoing the Benefits of Another     

In Re: Urbanski, No. 2015-1272, 2016 U.S. App. LEXIS 215 (Fed. Cir. January 8, 2016) (Before Lourie, Bryson, and Chen, J.) (Opinion for the court, Lourie, J.). Click Here for a copy of the opinion.

Urbanski filed a patent for a method of enzymatic hydrolysis of soy fiber to reduce water holding capacity.  To achieve hydrolysis, the invention requires reacting the soy fiber and enzyme in water for 60 to 120 minutes. The claims were rejected as obvious over two references, Gross and Wong, that disclose enzymatic hydrolysis of dietary fibers.  The Examiner held that one of ordinary skill in the art would have expected that using a shorter reaction time from Wong in the process of Gross would have resulted in the claimed invention.

Urbanski appealed to the Board, and the Board affirmed.  The Board rejected the argument that Urbanski’s patentable insight was to forego the benefits of the longer reaction time in Gross, when Wong suggested a shorter reaction time, albeit for other reasons.

cafc-federal-circuit-335z copyThe Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong [a shorter reaction time like Urbanski’s], even if that meant foregoing the benefit [of more stable fibers from a longer reaction time] taught by Gross.” One of ordinary skill could have been motivated to modify Gross in view of Wong to achieve the desired effects.  Also, the Board was right to conclude that, based on the two different reaction times and degrees of hydrolysis taught by the references, one of ordinary skill could have expected that adjusting these features would predictably alter the properties of soy fiber.

The Court held that Urbanski improperly relied on In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) to argue that references in combination that produce a ‘seemingly inoperative device’ cannot support a case of obviousness. In Gordon, the reference taught the relevant  apparatus in an upside down orientation, making it inoperable for its intended purpose.  Here, Wong provided motivation to modify Gross.  Although Gross taught that a longer reaction time results in different fiber characteristics, it never discredits a shorter reaction time.  Accordingly, the Federal Circuit affirmed the obviousness rejection.


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