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 hydrolysis are result-effective variables that can be varied in order to adjust the properties of the hydrolyzed fiber in a predictable manner.
  • Gross suggests that a longer reaction time and a higher degree of hydrolysis results in fibers capable of forming a stable dispersion.
  • Wong suggests that a shorter reaction time and a lower degree of hydrolysis improves soy fiber’s sensory properties without substantially reducing the fiber content.
  • It is undisputed that the properties disclosed in Wong would be favorable properties of dietary fibers.
  • Substantial evidence thus supports the Board’s finding that a person of ordinary skill would have been motivated to modify the Gross process by using a shorter reaction time, in order to obtain the favorable properties disclosed in Wong.

Urbanski argued that the rejection was improper because “modifying the Gross process by shortening the hydrolysis time, as taught by Wong, would have rendered the modified process inoperable for Gross’s intended purpose, viz., forming stable dispersions,” but the court was not persuaded by that “teaching away” argument:

Nothing in the prior art teaches that the proposed modification would have resulted in an “inoperable” process or a dietary fiber product with undesirable properties. As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even if that meant foregoing the benefit taught by Gross. And Urbanski’s claims do not require Gross’s benefit that is arguably lost by combination with Wong.

Thus, the court affirmed the rejection of Urbanski’s claims.

What About MPEP § 2143.01(V)?

The Federal Circuit distinguished the case at hand from In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984), which appears to be the basis for MPEP § 2143.01(V). That section of the MPEP provides the following guidance to examiners:


If proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 221 USPQ 1125 (Fed. Cir. 1984) ….

The Federal Circuit noted that in Gordon, the proposed modification would have made the cited prior art apparatus “inoperable for its intended purpose” (or any purpose, apparently) while in the case before it, the asserted modification of Gross would not result in an inoperable product. By distinguishing Gordon that way, the Federal Circuit placed no value on the purpose of the primary reference being modified, expressly stating that the rejection was proper even if “Gross’s benefit [would be] lost by combination with Wong.” Instead, the court focused on the fact that the modified process still resulted in an operable, useful product.

But is that how a real person of skill in the art would have applied the references?