I. Generic Obviousness Rejection
Showing that a prior art reference teach away from a particular combination suggested by an examiner is a way to show the non-obviousness of the invention.
During patent prosecution, an examiner may cite two or more references, the combination of which in the examiner opinion makes the inventor’s claimed invention obvious, and thus unpatentable. The first reference is referred to as the primary reference and the second reference is referred to as the secondary reference. For example, the examiner may state that Claim 1 is unpatentable as being obvious in light of the primary reference as modified by the secondary reference. Simply put, the examiner believes that one of ordinary skill in the art would have modified the apparatus or method disclosed in the primary reference to include a feature disclosed in the secondary reference. To overcome the rejection, the invention may show that the prior art teach away from the proposed modification.
II. Teach Away To Show Non-Obviousness
In order to rebut this prima facie showing of obviousness, the inventor may argue that one of ordinary skill in the art would not have made the suggested modification to the primary reference. One test would be to show that the proposed modification would render the primary reference unsatisfactory for its intended purpose, and thus the references actually teach away from the proposed modification suggested by the examiner. MPEP 2143.01(V).
III. In re Urbanski case background
In In re Urbanski (Fed. Cir. 2016), the Federal Circuit affirmed the examiner and the PTAB, both of which rejected the claims and found that the cited prior art does not teach away from the combination suggested by the examiner.
The Urbanski application was directed to a method of enzymatic hydrolysis of soy fiber (i.e., dietary fiber), such that the product has a reduced water holding capacity suitable for use as a food additive. The claimed invention was directed to the method of mixing soy fiber and enzyme together for a certain period of time. The examiner cited to the Gross and Wong references. Gross taught all of the limitations of the claimed invention except for the short reaction times. Gross encouraged long reaction times. For that missing element (i.e., short reaction time), the examiner utilized the Wong reference which taught short reaction times.
The examiner reasoned that one of ordinary skill in the art would have modified Gross (i.e., primary reference) with the teachings of Wong (i.e., secondary reference). The inventor argued that the Gross reference teach away from such modification because both Gross and Wong references encourage one of ordinary skill in the art to adjust the reaction times in opposite directions.
However, both Gross and Wong recognized that the reaction time was a result effective variable that would have had a predictable effect on the degree of hydrolysis. Gross taught that long reaction times would have the benefit of converting dietary fibers into stable, homogenous colloidal dispersions or gels (i.e., stable dispersions). Wong taught that short reaction times would improve sensory properties (e.g., smoothness and mouthfeel).
IV. References may not teach away from the proposed modification even if benefits of primary reference was reduced or eliminated
Short and long reaction times both produced benefits that were different and well known. The Federal Circuit found that one of ordinary skill in the art would have adjusted the reaction times to fit the desired end results even if that meant that the benefits derived from longer reaction times as taught in Gross would be reduced.
In coming to this conclusion, the Federal Circuit compared the instant case with that of In re Gordon highlighted in the Manual of Patent Examining Procedure (MPEP) §2143.01(V). As such, this case provides further clarification to the guidance provided in this MPEP section.
MPEP 2143.01(V) states that “if the 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 (Fed. Cir. 1984).” (emphasis added). That was the basic argument made by the inventor in the present case who argued that making the modification suggested by the examiner would render the invention of Gross inoperable for its intended purpose. In particular, the modification suggested by the examiner would forego the benefit of stable dispersions taught by Gross achieved by long reaction times.
In re Gordon
The Federal Circuit distinguished the instant case from that of In re Gordon where the proposed modification would have made the modified device inoperable for its intended purpose. In In re Gordon, the primary reference would have been completely inoperable for any purpose and there would have been no other benefit of the Gordon invention.
Discussion of holding of In re Urbanski
By distinguishing this case from that of In re Gordon, this opinion suggests that the primary reference does not necessarily teach away from a modification that forgoes a benefit stated in the primary reference. This may be so provided that there are trade-offs in benefits when making the proposed modification.
In the present case, the benefits could be adjusted between stable dispersions and sensory properties by adjusting the length of the reaction time. To properly show that the reference teach away from the modification, one would apparently have to show that there was also no benefit in making the modification suggested by the examiner.
The instant case does not make clear whether eliminating a benefit is the same as making the overall goal of the product described in the primary reference inoperable. Gross and Wong were both directed to dietary fiber. Regardless of the reaction times, both Gross and Wong both were still operable as a dietary fiber. As such, this case could also be read to mean that the “inoperable for its intended purpose” language in MPEP §2143.01(V) (see quote above) requires a showing that the general purpose of the primary reference and not merely that one of the benefits is eliminated or reduced is required to show that there would be no motivation to make the proposed modification.
To show that the prior art teaches away from the modification proposed by the examiner, one may have to show that the proposed modification to the primary reference would not only make the reference inoperable for its intended purpose but also that there would be no other benefit in making the proposed modification.
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