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
