Losing Competing Property Not A Teaching Away

In In re Urbanski, the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (PTAB) finding the claims of Urbanski's patent application obvious. Urbanski had argued that the cited references taught away from their combination, but the court agreed with the PTAB that someone skilled in the art would have been motivated to modify the method of the primary reference in accordance with the teachings of the secondary reference, even if that meant sacrificing the benefit of the primary reference.

The Patent Application At Issue

The patent application at issue was U.S. 11/170,614, directed to methods "for making an enzymatic hydrolysate of a soy fiber," with "a reduced water holding capacity suitable for use as food additives." As summarized by the Federal Circuit, relevant to the appeal was the recitation "that the soy fiber and enzyme be mixed in water for 60 to 120 minutes to provide a fiber product having a claimed degree of hydrolysis, water holding capacity, and free simple sugar content."

The Cited Prior Art

The obviousness rejection was based on two references directed to methods of enzymatic hydrolysis of dietary fibers. According to the Federal Circuit decision, the primary reference, Gross, "teaches a method that converts dietary fibers into 'stable, homogeneous colloidal dispersions or gels,'" using "a relatively longer hydrolysis time, e.g., 5 to 72 hours," while the secondary reference, Wong, "produces a soy fiber product of improved sensory properties, including smoothness and mouth feel, without substantially reducing the fiber content" using "a shorter hydrolysis time, e.g., 100 to 240 minutes, preferably, 120 minutes."

The Federal Circuit Decision

The Federal Circuit decision was authored by Judge Lourie and joined by Judges Bryson and Chen.

The court found substantial evidence to support the PTAB's finding that "one of ordinary skill in the art would have been motivated to modify the Gross process in view of Wong to use a shorter reaction time, and that the claimed degree of hydrolysis, water holding capacity, and free simple sugar content would be expected properties of the hydrolysis product." In that regard, the court noted:

Both Gross and Wong relate to enzymatic hydrolysis of dietary fibers. Gross teaches a longer reaction time, whereas Wong teaches a shorter reaction time that overlaps with, or falls within, Urbanski's claimed range. Both Gross and Wong recognize that reaction time and degree of...