In Re: Urbanski
809 F.3d 1237
Fed. Cir.2016Background
- Urbanski appealed the PTO Board’s affirmance of an Examiner’s rejection of claims 43–50 and 52–68 of U.S. Patent Application No. 11/170,614, directed to an enzymatic hydrolysis method for soy fiber producing a hydrolysate with specified degree of hydrolysis, reduced water holding capacity, and low free simple sugar content.
- Claim 43 (representative) requires specified water:fiber ratios, pH, heating and cooling steps, use of endoglucanase only, 60–120 minutes high-speed mixing to hydrolyze 0.5%–5% of glycosidic bonds, enzyme inactivation, and spray drying to yield the claimed properties.
- Examiner rejected the claims as obvious over Gross (WO96/32852) in view of Wong (U.S. Pat. No. 5,508,172) and other references; Gross teaches long hydrolysis times producing stable dispersions, Wong teaches shorter times (100–240 min, pref. 120) improving sensory properties without large fiber loss.
- Examiner and Board found a motivation to combine: both Gross and Wong treat reaction time and degree of hydrolysis as result-effective variables that predictably change fiber properties; shortening Gross’s reaction time to achieve Wong-like properties would have been obvious and would be expected to produce the claimed water-holding and sugar attributes.
- Urbanski submitted an inventor declaration arguing Gross teaches away because shortened hydrolysis would defeat Gross’s goal (stable dispersions); the Board and the court found the declaration did not show unpredictability or that Gross discourages the shorter-time modification.
Issues
| Issue | Urbanski's Argument | Director/Examiner/Board's Argument | Held |
|---|---|---|---|
| Motivation to combine Gross and Wong | No motivation; Gross teaches longer times for stable dispersions and teaches away from shorter times | Both refs concern enzymatic hydrolysis; both identify reaction time/degree of hydrolysis as result-effective variables; Wong provides motivation to shorten time for sensory improvements | Motivated to combine; substantial evidence supports combination — obviousness affirmed |
| Teaching away / inoperability | Shortening Gross’s time renders process inoperable for Gross’s purpose, so Gross teaches away | Gross does not criticize shorter times or discourage their use; Wong shows desirability of shorter times | Gross does not teach away; inoperability argument fails |
| Whether claimed product properties would have been expected | Claimed ranges yield unexpected results; declaration shows different dispersion behavior | Prior art indicates predictable relation: time → degree of hydrolysis → properties (water holding, sugars); Gross shows water-holding change is time-dependent | Properties would have been expected; prima facie case of obviousness established |
| Examiner/Board consideration of declaration | Examiner ignored or misweighed the declaration | Examiner and Board considered and reasonably discounted it as not showing unpredictability or criticality | Court finds Board properly considered and weighed the declaration |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness framework and predictability of variable effects)
- In re Applied Materials, Inc., 692 F.3d 1289 (2012) (recognition that a property is affected by a variable suffices to find the variable result-effective)
- In re Gordon, 733 F.2d 900 (1984) (prior art that renders a modification inoperable can teach away)
- McGinley v. Franklin Sports, Inc., 262 F.3d 1339 (2001) (combinations that produce seemingly inoperative results teach away)
- In re Gurley, 27 F.3d 551 (1994) (defining when a reference teaches away)
- Consol. Edison Co. v. NLRB, 305 U.S. 197 (1938) (standard for substantial evidence)