Saturday, January 09, 2016

Appellant URBANSKI loses appeal of obviousness determination at CAFC

Of legal standards:

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 substantial
evidence if a reasonable mind might accept the evidence
to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). Obviousness is a question
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).

The appellant's argument:

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 reaction
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.

The "substantial evidence" standard was relevant:

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.

The concept of "result effective variable" appeared:

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 resulteffective.”).
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.


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.

KSR is mentioned:

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)).

The appellant's teaching away argument failed:

In cases involving mechanical device or apparatus
claims, we have held that “[i]f references taken in combination
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, Urbanski’s
reliance on Gordon and its progeny is misplaced.


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.

As to "substantial evidence," from an IPBiz post
on 17 Sept. 2004

from Velander v. Garner (CAFC 2003):

Substantial evidence "means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion." Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938). Our review of the Board's factual findings for substantial evidence examines the record as a whole, taking into account evidence that supports as well as detracts from those findings. Gartside, 203 F.3d at 1312. "The possibility of drawing two inconsistent conclusions from the evidence," however, will not render the Board's findings unsupported by substantial evidence. Consolo v. Fed. Mar. Comm'n, 383 U.S. 607, 620 (1966). In other words, if the evidence of record will support several reasonable but contradictory conclusions, we will not find the Board's decision unsupported by substantial evidence because the Board chose one finding over another plausible alternative. In re Jolly, 308 F.3d 1317, 1320 (Fed. Cir. 2002).


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