Digest of In Re Urbanski, No. 2015-1272 (Fed. Cir. Jan. 8, 2016) (precedential). On appeal from the P.T.A.B. Before Lourie, Bryson, and Chen.
Procedural Posture: Applicant appealed the decision of the Patent Trial and Appeal Board (“Board”) affirming the Examiner’s rejection of claims as obvious. CAFC affirmed.
- Obviousness: Substantial evidence supported the Board’s finding that one of ordinary skill in the art would have been motivated to modify the process disclosed in a first prior art reference by using a shorter reaction time to pursue the desirable properties taught by a second prior art reference, and that the claimed degree of hydrolysis and fiber properties were expected properties of the hydrolysis product.
- Teaching Away: The cited references were combinable because they both related to enzymatic hydrolysis of dietary fibers, and did not teach away from the claimed method. This was so even though modifying the process disclosed in the first prior art reference to pursue certain desirable properties by shortening the reaction time, as taught by the second prior art reference, would have meant that the modified process would forego the benefits disclosed in the first reference, i.e., forming stable dispersions. The prior art did not teach that such a modification would have resulted in an “inoperable” process or a product with undesirable properties.