In re Urbanski

In re Urbanski

809 F.3d 1237 (Fed. Cir. 2016)
Authored by Kelsey Barnes

Statement of Facts: In 2005, Gregory E. Urbanski and Kevin W. Lang (collectively “Urbanski”) filed patent application 11/170,614 (the “ ‘614 application”) directed to a method of enzymatic hydrolysis of soy fiber. The method resulted in a product that could be used as a food additive. The claimed method required the mixture of soy fiber and enzyme in water for 60 to 120 minutes. The resulting fiber product had a claimed degree of hydrolysis, water holding capacity, and free simple sugar content.

The patent examiner rejected Urbanski’s ‘614 application under 35 U.S.C. § 103(a) as obvious in view of two references – PCT Application Publication WO96/32852 of Gross et al. (“Gross”) and U.S. Patent No. 5,508,172 of Wong et al. (“Wong”) – both directed to methods of enzymatic hydrolysis of dietary fibers. Gross and Wong recognize that they can vary reaction time and degree of hydrolysis to adjust the fiber’s properties. Gross provided for a longer reaction time, while Wong provided for a shorter reaction time that overlapped with Urbanski’s claimed range of 60 to 120 minutes. Wong’s methodology also produced soy fiber with improved sensory properties without substantially reducing the fiber content.

The examiner concluded that a skilled artisan seeking to produce soy fiber with improved properties and high fiber content, as Wong provided, would have modified the Gross process to use a shorter reaction time to achieve a lower degree of hydrolysis. Moreover, one of ordinary skill in the art would have expected that modifying the Gross process to use a shorter reaction time would have resulted in Urbanski’s claimed water holding capacity and free simple sugar content.

Urbanski appealed to the United States Patent and Trademark Office Patent Trial and Appeal Board (the “Board”), asserting that the methods and products of the cited references were significantly different from those claimed in the ‘614 application. Urbanski further argued that Gross “teaches away” from the modification that would have been necessary to arrive at the claimed methods and products. He specifically argued that shortening Gross’s reaction time, as Wong taught, would render the modified process unsatisfactory for Gross’s intended purpose. Thus, Gross teaches away from the modification.

The Board affirmed the examiner’s obviousness rejections, observing that Urbanski failed to present evidence of unpredictability or identify anything in the prior art teaching away from the ‘614 application. Furthermore, the Board agreed that one of ordinary skill would have been motivated to combine Gross and Wong’s processes to achieve the claimed water holding capacity and free simple sugar content.

Procedural History:The patent examiner rejected Urbanski’s ‘614 application under 35 U.S.C. § 103(a) because it was obvious in view of two references: Gross and Wong. The Board affirmed the examiner’s rejection of the claims as unpatentable under 35 U.S.C. § 103(a). Urbanski appealed to the Federal Circuit.

Question Presented: Whether the claims of Urbanski’s ‘614 application would have been obvious in view of the cited references of Gross and Wong.

Holding: Judge Lourie, joined by Judges Bryson and Chen, authored the Federal Circuit’s opinion. The court affirmed the Board’s decision, finding that a prima facie case of obviousness had been established and not successfully rebutted. One of ordinary skill in the art would have known to shorten Gross’s reaction time to obtain the favorable properties disclosed in Wong. Similarly, the court found that a person of ordinary skill would have expected that adjusting the reaction time would alter the degree of hydrolysis and the properties of the fiber. Furthermore, there was no

Reasoning: In making this determination, the Federal Circuit distinguished this case from In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). The court in Gordon declared that in cases involving mechanical device or apparatus claims, if combining references would produce an inoperative device, such references teach away from the combination and cannot serve as bases for a prima facie case of obviousness. The court noted that in Gordon, the proposed modification would have made the cited reference inoperable for its intended purpose. Here, the claimed modification of Gross would not result in an inoperable product. One of ordinary skill would have been motivated to pursue Wong’s desirable properties, even if that meant foregoing some of the benefits of the Gross process. Furthermore, Urbanski’s claims did not require the lost benefits of the modified Gross method. The court emphasized that the modified process still resulted in an operable, useful product.

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