A proposed combination of prior art references does not have to be operable for all of the benefits disclosed in the reference being modified. Here, for example, a prima facie case of obviousness was found to be unrebutted by a showing that certain stability benefits touted by the primary reference would be lost if its reaction times were shortened in accordance with the teachings of a secondary reference because such a combination would provide other benefits and the stability benefits being lost were not relevant to the claimed invention. This would be a good case to consult before asserting a teaching away defense to a proposed combination of prior art references for inoperability.
Background / Facts: The application on appeal here from rejection at the PTO is directed to the enzymatic hydrolysis of soy fiber, such that the product has a reduced water holding capacity suitable for use as food additives. The prior art includes a primary reference having all the features of the claimed invention except that it teaches using a longer reaction time to promote the formation of stable dispersions, and a secondary reference that teaches a shorter reaction time to achieve other desirable properties, such as improved sensory properties.
Issue(s): Whether the primary reference teaches away from combination with the secondary reference for purposes of establishing obviousness when such a combination would no longer possess the stable dispersion benefit touted by the primary reference.
Holding(s): No. “Nothing in the prior art teaches that the proposed modification would have resulted in an ‘inoperable’ process or a dietary fiber product with undesirable properties. As the Board properly found, one of ordinary skill would have been motivated to pursue the desirable properties taught by [the secondary reference], even if that meant foregoing the benefit taught by [the primary reference]. And [the applicant’s] claims do not require [the primary reference’s] benefit that is arguably lost by combination with [the secondary reference].”