Board Reverses Examiner's Rejection as Based on Mere Conclusory Statements
In Ex Parte Jansen (Appeal 2010-002637, in Application Serial No. 11/185,527, decision issued March 13, 2012), the BPAI reversed the examiner’s finding of obviousness and reiterated the importance of the examiner’s requirement to articulate a rational basis for finding of obviousness.
The invention on appeal was directed to a “wet-milling” process for corn: a process with a steeping step to soften the corn before milling. After producing a milled fiber material comprising fiber, starch, and protein, the process was used to produce ethanol, as in claim 11:
A process comprising:
[Steps 1-6] … producing a milled fiber material that comprises fiber, starch, and protein
 contacting the milled fiber material with at least one enzyme to convert at least some of the starch therein to dextrose, wherein at least some of the starch in the milled fiber material is gelatinized by heating, is at least partially liquefied by alpha amylase, and is at least partially saccharified by amyloglucosidase, producing a material comprising dextrose and fiber; and
 converting at least some of the dextrose to ethanol by fermentation.
Rejecting the process as obvious, the examiner relied on Giesfeldt (U.S. Patent No. 5,073,201) as the primary reference, which disclosed a wet-milling process for corn, i.e., steps 1–6 of claim 11, to produce a high fiber product. Notably, Giesfeldt did not disclose or suggest the production of ethanol from the milled fiber material in step 6.
In an attempt to remedy the deficiencies of Giesfeldt, the examiner turned to four secondary references that generally taught starch could be converted to dextrose with amalase and that dextrose could be fermented to ethanol. Although the Appellants’ argued throughout prosecution that there was no apparent reason for a person of ordinary skill in the art to combine these secondary references with Giesfeldt, the examiner claimed that under KSR “one must have a reason to combine known options or elements or have a reasonable expectation of success.” Examiner Ans. p. 6 (emphasis added).
On appeal, the Board reversed the examiner and reiterated one of the most important and often disregarded principles of patent law:
Most inventions arise from a combination of old elements and each element may often be found in the prior art. ... However, mere identification in the prior art of each element is insufficient to defeat the patentability of the combined subject matter as a whole. ... Rather, to establish a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the Board must articulate the basis on which it concludes that it would have been obvious to make the claimed invention. In re Kahn, 441 F.3d 977, 986 (Fed. Cir. 2006) (emphasis added).
Consequently, “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” Id.at 988 (quoted in KSR Int 'I Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007)).
Reversing each of the examiner’s obviousness rejections, the BPAI held that the examiner failed to establish a prima facie case of obviousness, because the Examiner did not provide a sufficient reason why those of skill in the art would have combined the teachings of the Giesfeldt to maximize fiber content with the secondary references that simply taught the conversion of starch to dextrose.