In re Urbanski

Addressing “teaching away” arguments in the context of obviousness issues, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB or Board) obviousness decision, holding a person of ordinary skill in the art (POSITA) would find the combination of two prior art references obvious and would have expected the resulting products. In re Urbanski, Case No. 15-1272 (Fed. Cir., Jan. 8, 2016) (Lourie, J.).

The application in question is directed at a method of enzymatic hydrolysis of soy fiber. The examiner rejected the claims as obvious in view of two references that disclosed enzymatic hydrolysis of dietary fibers. On appeal to the Board, the inventors argued that one reference taught away from the proposed combination because it required a longer reaction time than would be satisfactory for the intended purpose of the second reference. The Board rejected the “teaching away” argument, explaining that even if the benefits of the prior art processes were mutually exclusive, that nevertheless did not outweigh the evidence of obviousness and that the inventors failed to present any evidence of unpredictability with respect to the proposed combination. The applicants appealed.

On appeal, the inventors again argued that modifying the first reference in a manner taught by the second reference (i.e., shortening the reaction time) would render the modified process unsatisfactory for the intended purpose of the first reference (forming a more stable dispersion as a result of a longer reaction time). Because obviousness is a question of law based on underlying factual findings, the Court reviewed the Board’s legal determination de novo and the underlying factual findings under a substantial evidence standard. In affirming the Board’s conclusion, the Court noted that each reference recognized that reaction time and degree of hydrolysis were result-effective variables. According to the Court, the disclosure of the prior art references supported the Board’s finding that a POSITA would have expected the degree of hydrolysis and the properties of the fiber could be altered. The Court thus found that it would have been obvious to shorten the reaction time of the first reference to gain the benefits of the second reference, despite the fact that one would no longer obtain the benefits of the first reference.

In distinguishing the “teaching away” case law presented by the inventors, the Court explained that, in this instance, the prior art did not teach that the proposed combination would result in an inoperable process or a product with undesirable properties. Rather, the combination only resulted in a modified process—which produces products with different, but not inoperable, properties—rendering the claimed invention obvious.