In Re: Urbanski

United States Court of Appeals
for the Federal Circuit
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IN RE: GREGORY E. URBANSKI, KEVIN W. LANG,
Appellants
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2015-1272
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 11/170,614.
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Decided: January 8, 2016
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JONATHAN D. BALL, Greenberg Traurig LLP, New
York, NY, argued for appellants. Also represented by
JENNIFER R. MOORE.
AMY J. NELSON, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Michelle K. Lee. Also represented by NATHAN K.
KELLEY, THOMAS W. KRAUSE, COKE STEWART.
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Before LOURIE, BRYSON, and CHEN, Circuit Judges.
LOURIE, Circuit Judge.
Gregory E. Urbanski and Kevin W. Lang (collectively,
“Urbanski”) appeal from the decision of the United States
Patent and Trademark Office (“PTO”) Patent Trial and
Appeal Board (the “Board”) affirming the Examiner’s
rejection of claims 43–50 and 52–68 of U.S. Patent Appli-
2 IN RE URBANSKI
cation 11/170,614 (the “ ’614 application”) as unpatentable
under 35 U.S.C. § 103(a) (2006). 1 See Ex Parte Urbanski,
No. 2013-002044, slip op. at 3, 11 (P.T.A.B. Oct. 9, 2014)
(“Board Decision”); Joint App. (“J.A.”) 2–15. Because the
Board did not err in concluding that the claims of the ’614
application would have been obvious over the cited refer-
ences, we affirm.
BACKGROUND
In 2005, Urbanski filed the ’614 application, which is
entitled “Protein and Fiber Hydrolysates” and is directed
to a method of enzymatic hydrolysis of soy fiber, such that
the product has a reduced water holding capacity suitable
for use as food additives. J.A. 33. Claim 43 is representa-
tive of the claims on appeal and reads as follows: 2
43. A method for making an enzymatic hydrolysate
of a soy fiber comprising:
(a) mixing water and a soy fiber to form a
substantially homogenous aqueous dispersion
of hydrated unhydrolyzed soy fiber, wherein
the unhydrolyzed soy fiber and water are pre-
sent in a weight ratio of between about 1:1.5
and about 1:8;
(b) adjusting the pH of the mixture to be-
tween about 4.5 and about 5.5;
1 Because the ’614 application was filed before the
enactment of the Leahy-Smith America Invents Act
(“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), we apply
the pre-AIA version of 35 U.S.C. § 103.
2 Urbanski relies only on limitations in claim 43 to
challenge the obviousness rejections and submits that all
of the rejected claims stand or fall together. Appellants’
Br. 5; see also In re Kaslow, 707 F.2d 1366, 1376 (Fed. Cir.
1983).
IN RE URBANSKI 3
(c) heating to at least about 200ºF for a time
sufficient to substantially swell the unhydro-
lyzed soy fiber;
(d) cooling the mixture to between about
115ºF and about 135ºF;
(e) contacting the mixture with one or more
endoglucanase enzymes in the absence of exo-
hydrolytic enzymes, said one or more endoglu-
canase enzymes comprising an enzyme
capable of catalyzing the hydrolysis of 1,4-β-D-
glycosidic linkages in cellulose, the one or
more endoglucanase enzymes being present in
a weight ratio to the unhydrolyzed soy fiber of
about 1:1,000 to about 1:25;
(f) mixing under high speed for about 60
minutes to about 120 minutes to hydrolyze be-
tween about 0.5% and about 5% of the glyco-
sidic bonds present in the unhydrolyzed soy
fiber;
(g) inactivating the one or more endoglu-
canase enzymes; and
(h) drying the resulting enzymatic hydroly-
sate by spray drying;
to provide a hydrolysate of soy fiber having an
average degree of hydrolysis of between about
0.5% and about 5%; a water holding capacity
which is reduced by about 10% to about 35%
as compared to the water holding capacity of
the unhydrolyzed soy fiber; a free simple sugar
content of less than about 1%; and which is
suitable for human consumption.
Board Decision at 2 (emphases added).
Claim 43 thus requires that the soy fiber and enzyme
be mixed in water for 60 to 120 minutes to provide a fiber
4 IN RE URBANSKI
product having a claimed degree of hydrolysis, water
holding capacity, and free simple sugar content. Accord-
ing to the ’614 application, “[t]he skilled artisan will be
able to control the duration of the hydrolysis reaction to
achieve any desired [degree of hydrolysis].” J.A. 47.
The Examiner rejected claims 43–50 and 52–68 under
35 U.S.C. § 103(a) as obvious over PCT Application Publi-
cation WO96/32852 of Gross et al. (“Gross”) in view of U.S.
Patent 5,508,172 of Wong et al. (“Wong”) and other refer-
ences. Board Decision at 3. Both Gross and Wong dis-
close methods of enzymatic hydrolysis of dietary fibers.
Gross teaches a method that converts dietary fibers into
“stable, homogeneous colloidal dispersions or gels,” which
uses a relatively longer hydrolysis time, e.g., 5 to 72
hours. Gross p. 2 ll. 28–30; id. p. 7 ll. 13–15, 27–29.
Wong’s method produces a soy fiber product of improved
sensory properties, including smoothness and mouthfeel,
without substantially reducing the fiber content, and uses
a shorter hydrolysis time, e.g., 100 to 240 minutes, prefer-
ably, 120 minutes, Wong, at [57]; id. col. 3 ll. 51–58.
The Examiner found that Gross and Wong, both relat-
ing to enzymatic hydrolysis of dietary fibers, are readily
combinable, and that “both recognize that the degree of
hydrolysis of the fiber is a result effective variable.” J.A.
288. The Examiner acknowledged that Gross teaches a
longer reaction time, J.A. 288, but found that a skilled
artisan seeking to produce soy fiber with improved palat-
ability and high fiber content, as taught by Wong, would
have modified the Gross process to use a shorter reaction
time to achieve a lower degree of hydrolysis, J.A. 288, 293.
The Examiner also found that one of ordinary skill in the
art would have expected that modifying the Gross process
to use a shorter reaction time would have resulted in the
claimed water holding capacity and free simple sugar
content. J.A. 289.
IN RE URBANSKI 5
During prosecution, Gregory Urbanski submitted a
declaration, in which he asserted that “the methods and
products of Gross are significantly different [from] those
claimed in the ’614 application and that Gross teaches
away from the modification that would have been neces-
sary to arrive at the claimed methods and products.” J.A.
240. He presented evidence that hydrolyzed soy fiber
prepared according to the ’614 application failed to form a
stable, homogeneous dispersion as disclosed in Gross.
J.A. 241–42. Urbanski thus argued that reducing the
hydrolysis time would have rendered the fiber product
unsatisfactory for Gross’s intended purpose of forming
stable dispersions. J.A. 237, 329. The Examiner,
however, found Urbanski’s argument and declaration
unpersuasive. J.A. 254, 386–87.
Urbanski appealed to the Board, which affirmed the
Examiner’s obviousness rejections. The Board rejected
Urbanski’s teaching-away argument, finding that the
declaration, viewed together with Gross and Wong, at
best shows that the benefits of the prior art processes can
be “mutually exclusive,” viz., that the Gross process,
which involves a longer reaction time, results in a stable
dispersion; whereas the Wong process, which involves a
shorter reaction time, improves the sensory properties of
soy fiber without substantially reducing the fiber content.
Board Decision at 5–6. In the Board’s opinion, that
Wong’s benefit “may come at the expense of Gross’s bene-
fit” does not outweigh the evidence of obviousness. Id. at
5–8.
The Board also found that “both Gross and Wong
recognize reaction time and degree of hydrolysis as result-
effective variables that can be varied in order to adjust
the properties of the hydrolyzed fiber in a predictable
manner.” Id. at 6. The Board observed that Urbanski
failed to present evidence of unpredictability or identify
anything in the prior art teaching away from the claimed
method. Id. at 9. The Board, moreover, agreed with the
6 IN RE URBANSKI
Examiner that the claimed water holding capacity and
free simple sugar content would have been obvious in
view of the combined teachings of Gross and Wong. Id. at
9–11.
Urbanski timely appealed to this court. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a ques-
tion of law based on underlying factual findings, In re
Baxter, 678 F.3d 1357, 1361 (Fed. Cir. 2012), including
what a reference teaches, In re Beattie, 974 F.2d 1309,
1311 (Fed. Cir. 1992), the existence of a reason to combine
references, In re Hyon, 679 F.3d 1363, 1365–66 (Fed. Cir.
2012), and whether the prior art teaches away from the
claimed invention, In re Mouttet, 686 F.3d 1322, 1330
(Fed. Cir. 2012).
Urbanski argues that the Board failed to articulate a
sufficient reason why one of ordinary skill would have
been motivated to combine the processes of Gross and
Wong. According to Urbanski, the declaration establishes
that modifying the Gross process by shortening the reac-
tion time, as taught by Wong, would render the modified
process unsatisfactory for Gross’s intended purpose, and
thus that Gross teaches away from the modification.
Urbanski faults the Examiner for failing to address, and
the Board for failing to properly consider, the declaration.
Additionally, Urbanski asserts that neither the Board nor
the Examiner established that the cited references teach
IN RE URBANSKI 7
or suggest the claimed degree of hydrolysis, water holding
capacity, or free simple sugar content.
The Director responds that substantial evidence sup-
ports the Board’s factual findings that Gross and Wong
both recognize that reaction time and degree of hydrolysis
are result-effective variables; that varying the reaction
time would have a predictable effect on the degree of
hydrolysis, which in turn affect the attributes of the fiber
product; that Gross does not teach away from a shorter
reaction time; and that one of ordinary skill would have
been motivated to modify the Gross process by shortening
the reaction time. The Director maintains that both the
Board and the Examiner properly considered Urbanski’s
declaration. The Director also responds that the claimed
water holding capacity and free simple sugar content are
expected properties of the product of the claimed method.
We agree with the Director that substantial evidence
supports the Board’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.
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 over-
laps with, or falls within, Urbanski’s claimed range.
Wong also teaches that its method produces soy fiber with
improved sensory properties without substantially reduc-
ing 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.
8 IN RE URBANSKI
Additionally, the Board properly found that 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. See In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by
the variable is sufficient to find the variable result-
effective.”). The degree of hydrolysis is dependent on the
reaction time because the longer the fiber is in contact
with the enzyme, the greater the extent of hydrolysis.
The degree of hydrolysis in turn affects the attributes of
the resulting fiber product. Wong suggests that a shorter
reaction time and a lower degree of hydrolysis improves
soy fiber’s sensory properties without substantially reduc-
ing the fiber content; whereas Gross suggests that a
longer reaction time and a higher degree of hydrolysis
results in fibers capable of forming a stable dispersion.
Substantial evidence thus supports the Board’s finding
that a person of ordinary skill would have expected that,
by adjusting the reaction time, the degree of hydrolysis
and the properties of the fiber would be altered.
As the Board observed, Gross teaches that hydrolyzed
fiber absorbs less water as compared with unhydrolyzed
fiber and discloses one example in which the water hold-
ing capacity was reduced by 40% after hydrolysis. Board
Decision at 9. One of ordinary skill thus would have
expected that modifying the Gross process by shortening
the reaction time would have resulted in a lesser change
in water holding capacity. Likewise, substantial evidence
supports the Board’s finding that shortening the reaction
time and lowering the degree of hydrolysis would result in
a lower free simple sugar content. We therefore agree
with the Director that the PTO established a prima facie
case of obviousness.
That prima facie case has not been rebutted. There is
no evidence, and Urbanski does not suggest, that the
IN RE URBANSKI 9
claimed ranges of degree of hydrolysis, water holding
capacity, and free simple sugar content are “critical” or
“produce a new and unexpected result” as compared to the
prior art. Applied Materials, 692 F.3d at 1297. There is
also no evidence that the “variables interacted in an
unpredictable or unexpected way,” which could render the
claims nonobvious. Id. at 1298 (citing KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 421 (2007)).
Moreover, we agree with the Director that both the
Examiner and the Board properly considered and weighed
Urbanski’s declaration. We are unpersuaded by Urban-
ski’s argument that, 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,
Gross teaches away from the claimed method of making a
hydrolysate of a soy fiber.
In cases involving mechanical device or apparatus
claims, we have held that “[i]f references taken in combi-
nation would produce a ‘seemingly inoperative device,’ . . .
such references teach away from the combination and
thus cannot serve as predicates for a prima facie case of
obviousness.” McGinley v. Franklin Sports, Inc., 262 F.3d
1339, 1354 (Fed. Cir. 2001) (quoting In re Sponnoble, 405
F.2d 578, 587 (CCPA 1969); see also In re Gordon, 733
F.2d 900, 902 (Fed. Cir. 1984)). But in this case, Urban-
ski’s reliance on Gordon and its progeny is misplaced.
As indicated, the Board correctly found that Gross
and Wong are combinable, as both references concern the
enzymatic hydrolysis of dietary fibers and recognize that
reaction time and degree of hydrolysis can be varied in
order to adjust the fiber’s properties. Although Gross
teaches the benefit of stable dispersions, Wong teaches
other desirable properties, viz., improved sensory proper-
ties without substantially reducing the fiber content. On
this record, the Board properly found that one of ordinary
10 IN RE URBANSKI
skill would have been motivated to pursue the desirable
properties taught by Wong, even at the expense of forego-
ing the benefit taught by Gross.
This case is therefore distinguishable from Gordon,
which Urbanski relies on. In Gordon, the Board affirmed
the Examiner’s rejection of a claim directed to a blood
filter with an inlet and outlet on the bottom over the prior
art, French, which taught a gasoline filter with the inlet
and outlet on the top. 733 F.2d at 901. The Board rea-
soned that “it would have been obvious to turn the French
device upside down to have both the inlet and outlet at
the bottom, rather than at the top.” Id. at 902. This court
reversed, noting that French teaches a liquid strainer
which relied, at least in part, upon the assistance of
gravity to separate undesired particles from gasoline. We
reasoned:
Therefore, it is not seen that French would have
provided any motivation to one of ordinary skill in
the art to employ the French apparatus in an up-
side down orientation. The mere fact that the pri-
or art could be so modified would not have made
the modification obvious unless the prior art sug-
gested the desirability of the modification. . . . In-
deed, if the French apparatus were turned upside
down, it would be rendered inoperable for its in-
tended purpose. . . . In effect, French teaches away
from the board’s proposed modification.
Id. (emphases added).
Here, the cited references do not teach away from the
claimed method. The obviousness rejections are based on
Gross in view of Wong. As indicated earlier, Wong teach-
es that its method produces soy fiber with improved
sensory properties without substantially reducing the
fiber content. Wong thus provides the motivation to
modify the Gross process and suggests the desirability of
such modification. Moreover, both Gross and Wong
IN RE URBANSKI 11
suggest that hydrolysis time may be adjusted to achieve
different fiber properties. Nothing in the prior art teaches
that the proposed modification would have resulted in an
“inoperable” process or a dietary fiber product with unde-
sirable 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. The Board therefore did not
err in rejecting Urbanski’s inoperability argument.
Substantial evidence, moreover, supports the Board’s
finding that Gross does not otherwise teach away from
the claimed method. “A reference may be said to teach
away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path
set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Although
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. Accordingly, we conclude that the Board
did not err in affirming the Examiner’s decision that
claims 43–50 and 52–68 of the ’614 application would
have been obvious over the cited references.
CONCLUSION
We have considered Urbanski’s remaining arguments,
but find them unpersuasive. For the foregoing reasons,
we conclude that claims 43–50 and 52–68 of the ’614
application would have been obvious in view of the prior
art, and therefore affirm the decision of the Board.
AFFIRMED