The Federal Circuit recently issued a precedential opinion (In re Urbanski) discussing the interrelationship between the issues of teaching away, the obviousness of modifying a reference that would render it inoperable for its intended purpose, and result-effective parameters. The invention involved a novel method for making an enzymatic hydrolysate of a soy fiber, where certain ranges for certain variables were explicitly claimed.
We know from the Supreme Court's decision in KSR that teaching away is a relevant consideration to analyze whether a patent is obvious. As discussed in a previous post, the Supreme Court explained that when the prior art teaches away from combining certain known elements, discovery of a successful means of combining them is more likely to be nonobvious.
We also know from long-standing Federal Circuit precedent that combining references in a way that renders them inoperable for their intended purpose is not a proper way to prove obviousness. From cases such as In re Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) and others, the court has confirmed that if 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. Interestingly, in Urbanski, the court notes that the precedent related to inoperable combinations are "mechanical", as if that somehow means they are not applicable to formulations or mixtures.
Another way to prove obviousness is to rely on the routine optimization rationale, where since a certain parameter has been recognized in the art as a result-effective variable, it is therefore obvious to find even a novel range for that particular parameter. 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.”)
In re Urbanski
In Urbanski, the claims included specific ranges for several variables, including the degree of hydrolysis, water holding capacity, and free simple sugar content. The applicant argued that modifying the process in the first cited reference by shortening the reaction time as taught by the secondary reference in order reach the claimed features would render the modified process unsatisfactory for the intended purpose. Therefore, according to the applicant, the prior art taught away from the modification. The applicant relied on an inventor declaration explaining how modifying the features of the prior art to reach the claimed ranges would render the prior art ineffective.
The court explained the interplay between these doctrines, specifically noting that there was a reason to combine the references based on the teaching regarding the recognition in the prior art that the particular claimed parameter ranges were of parameters recognized as result-effective variables. This motivation was sufficient, even though one skilled in the art would have to make sacrifices in the performance of the solution relative to the teachings of the references. In other words, the combination would provide benefits to certain parameters, and thus the references are still combinable even thought there may be some degradation of performance of other parameters as compared with one of the references. The court even goes so far as to assert facts that are directly opposite to the declaration when it explains that "[n]othing in the prior art teaches that the proposed modification would have resulted in an 'inoperable' process or a dietary fiber product with undesirable properties." While true, the declaration provided a detailed technical explanation of exactly why the proposed modifications would have resulted in an inoperable process with undesirable properties.
Unfortunately, this case appears to make arguing against obviousness even more challenging. For example, an inventor's ability to rely on teaching away arguments, even when there is a declaration providing evidence of how the proposed combination is deficient, has been hindered by this decision. Two takeaways from this are that an argument based on teaching away must be primarily established based on the disclosure in the prior art references themselves, and an argument based on inoperable combinations should actually establish inoperability to a sufficiently high degree to be non-functional (rather than merely undesirable). Finally, boostrapping the two together, as the applicant attempted, is likely going to be ineffective.