CAFC: Obvious even if it meant foregoing benefits of prior art

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– Joe Robinson, Bob Schaffer, and Puja Dave


Federal Circuit Review No. 80-3.
Obviousness Rejection Upheld When Artisan Would Pursue Properties of One Reference, Foregoing the Benefits of Another     

In Re: Urbanski, No. 2015-1272, 2016 U.S. App. LEXIS 215 (Fed. Cir. January 8, 2016) (Before Lourie, Bryson, and Chen, J.) (Opinion for the court, Lourie, J.). Click Here for a copy of the opinion.

Urbanski filed a patent for a method of enzymatic hydrolysis of soy fiber to reduce water holding capacity.  To achieve hydrolysis, the invention requires reacting the soy fiber and enzyme in water for 60 to 120 minutes. The claims were rejected as obvious over two references, Gross and Wong, that disclose enzymatic hydrolysis of dietary fibers.  The Examiner held that one of ordinary skill in the art would have expected that using a shorter reaction time from Wong in the process of Gross would have resulted in the claimed invention.

Urbanski appealed to the Board, and the Board affirmed.  The Board rejected the argument that Urbanski’s patentable insight was to forego the benefits of the longer reaction time in Gross, when Wong suggested a shorter reaction time, albeit for other reasons.

cafc-federal-circuit-335z copyThe Court affirmed the obviousness rejection. “As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by Wong [a shorter reaction time like Urbanski’s], even if that meant foregoing the benefit [of more stable fibers from a longer reaction time] taught by Gross.” One of ordinary skill could have been motivated to modify Gross in view of Wong to achieve the desired effects.  Also, the Board was right to conclude that, based on the two different reaction times and degrees of hydrolysis taught by the references, one of ordinary skill could have expected that adjusting these features would predictably alter the properties of soy fiber.

The Court held that Urbanski improperly relied on In re Gordon, 733 F.2d 900 (Fed. Cir. 1984) to argue that references in combination that produce a ‘seemingly inoperative device’ cannot support a case of obviousness. In Gordon, the reference taught the relevant  apparatus in an upside down orientation, making it inoperable for its intended purpose.  Here, Wong provided motivation to modify Gross.  Although Gross taught that a longer reaction time results in different fiber characteristics, it never discredits a shorter reaction time.  Accordingly, the Federal Circuit affirmed the obviousness rejection.

The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

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