In Re: Urbanski, No. 2015-1272 (Fed. Cir. 2016)

Written By: David Youngkin

In In Re: Gregory E. Urbanski, Kevin W. Lang the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (Board) finding the claims of the application obvious.  Urbanski’s application at issue was U.S. 11/170,614, entitled “Protein and Fiber Hydrolysates”, and was directed to a method of enzymatic hydrolysis of soy fiber.  Relevant to the appeal was claim 43 which required “that the soy fiber and enzyme be mixed in water for 60 to 120 minutes”.

During prosecution the Examiner rejected the application as obvious in light of two references: 1) WO96/32852, Gross et al.; and 2) U.S. Patent 5,508,172, Wong et al.  The Examiner found that both Gross and Wong relate the enzymatic hydrolysis of dietary fibers.  Gross teaches a method using a longer hydrolysis time of 5 to 72 hours to from a stable dispersion, whereas Wong’s method produces a product using a shorter hydrolysis time of 100 to 240 minutes.  Although Gross teaches a longer reaction time the Examiner argued that one skilled in the art would have been motivated to use the shorter reaction time of Wong in the process of Gross to achieve a lower degree of hydrolysis.  This combination would have resulted in the claimed invention.   

Urbanski submitted a declaration arguing that the rejection was improper because reducing the hydrolysis time would provide a fiber that was unsatisfactory for Gross’s intended purpose of forming stable dispersions.  Urbanski appealed to the Board, which affirmed the Examiner rejecting Urbanski’s teaching away argument. 

In rejecting Urbanski’s argument the Federal Circuit affirmed the obviousness rejection.  The Federal Circuit agreed that one of ordinary skill would have been motivated to combine the shorter reaction time as taught by Wong, even if it meant reducing the stability of the fibers from a longer reaction time as taught by Gross.    The Federal Circuit further stated that “[a]lthough Gross generally discloses a relatively longer reaction time that results in fiber capable of forming stable dispersions, Gross does not criticize or discredit the use of a shorter reaction time.”  Thus the Federal Circuit found one of ordinary skill would have been motivated to combine the two references and “would have expected that, by adjusting the reaction time, the degree of hydrolysis and properties of the fiber would be altered.”  

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