BASF SE

Patent Trials and Appeals Board

Sep 29, 2021

2020005609 (P.T.A.B. Sep. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/145,337 05/03/2016 NINA MUSAEUS 074008-0605-03-
US-541437
8041
123223 7590 09/29/2021
Faegre Drinker Biddle & Reath LLP (WM)
Attn: Intellectual Property Group
One Logan Square, Suite 2000
Philadelphia, PA 19103-6996
EXAMINER
ROBERTS, LEZAH
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
09/29/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
DBRIPDocket@faegredrinker.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NINA MUSAEUS and CARSTEN NINN JENSEN
Appeal 2020-005609
Application 15/145,337
Technology Center 1600
Before JENNIFER MEYER CHAGNON, TAWEN CHANG, and DAVID
D. COTTA, Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21, 25, 27–38, and 40–43.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM but designate our affirmance as a new ground of
rejection.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as BASF SE.
Appeal Br. 2.
2 In the Answer, the Examiner withdrew the obviousness rejection as to
claims 34, 35, 37, and 40–42, which are now only “objected to as being
Appeal 2020-005609
Application 15/145,337

2
STATEMENT OF THE CASE
“The carotenoid class of substances is classified into two main groups,
the carotenes and the xanthophylls.” Spec. 1:11–12. The Specification
states:
Both carotenes and xanthophylls are insoluble in water,
while the solubility in fats and oils is found to be . . . low
. . . . This limited solubility and the great sensitivity to
oxidation stand in the way of direct use of the relatively
coarse-particled products obtained from chemical
synthesis in the coloring of human foods and animal
feeds because, in coarsely crystalline form, the
substances are not storage-stable and provide only poor
coloring results.
Id. at 1:31–37.
The Specification states that “[i]mproved color yields in the direct
coloring of human foods can be achieved . . . by specifically produced
formulations in which the active substances are in finely divided form and, if
appropriate, protected from oxidation by protective colloids,” and that “use
of these formulations in animal feeds leads to a greater bioavailability of the
carotenoids . . . and thus indirectly to improved coloring effects.” Spec.

dependent upon a rejected base claim.” Ans. 6. We therefore do not
consider the merits of the obviousness rejection as to these claims. The
Examiner further states that “the subject matter in claims 34-35, 27 and 40-
42 is considered allowable” because “[t]he ratio range of carotenoid to
sucrose yields an increase in stability of the carotenoid that would not have
been predictable to one of ordinary skill in the art based on the prior art.” Id.
(emphasis added). Because claim 27 depends from claim 21 and does not
include any additional limitation regarding the ratio range of carotenoid to
sucrose, and because the Examiner addresses Appellant’s arguments with
respect to claim 27 in the Answer, we understand that the Examiner
withdrew the obviousness rejection as to claim 37, not claim 27.
Appeal 2020-005609
Application 15/145,337

3
1:39–44. The Specification states that “[v]arious processes have been
described for improving the color yields and for increasing the absorbability
or bioavailability [of carotenoids],” all of which are “aim[ed] reducing the
size of the crystallites of the active substances and bringing the particles to a
size in the region below 10 µm.” Id. at 1:46–2:3. According to the
Specification, however, “there continues to be a need for improvements in
[carotenoid] preparations, whether in relation to an increased bioavailability
or, in particular, in relation to a better storage stability, for example in
tablets.” Id. at 2:28–31.

CLAIMED SUBJECT MATTER
The claims are directed to a preparation in powder form comprising a
carotenoid, a modified starch, and sucrose. Claim 21 is illustrative:
21. A preparation in powder form comprising:
(a) at least one carotenoid,
(b) at least one modified starch, and
(c) sucrose;
wherein the at least one carotenoid is present in the powder in
an amount of 1 to 25% by weight, based on the weight of the
powder; and wherein the at least one carotenoid and the sucrose
are present in the powder in a ratio by weight of 1:2 to 1:80 and
said at least one modified starch is present in an amount from 5
to 30% by weight, based on the powder, and
wherein the carotenoid has a degree of crystallinity in the range
from 90 to 99% determined by X-ray diffraction.
Appeal Br. 16 (Claims App.).

Appeal 2020-005609
Application 15/145,337

4
REJECTION
Claims 21, 25, 27–33, 36, 38, and 43 are rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Antoshkiw3 and Runge ’3154.
Final Act. 2; Ans. 6.5

OPINION
A. Issue
The Examiner finds that Antoshkiw suggests all of the limitations of
claim 21, except that “it does not disclose the carotenoid is crystalline.”
Final Act. 3. The Examiner finds that Runge ’315 likewise suggests all of
the limitations of claim 21, except that it does not “disclose the starch is a
modified starch.” Id. at 4. The Examiner concludes that “[i]t would have
been obvious to one of ordinary skill in the art to have used a crystalline
carotenoid in the compositions of Antoshkiw . . . motivated by the desire [to]
use a form suitable for use in powder compositions.” Id. at 5. The
Examiner also concludes that, “[a]lternatively, it would have been obvious
to one of ordinary skill in the art to have used a modified starch in the
compositions of Runge [’315] . . . motivated by the desire to use a protective
colloid that produces desirable properties as disclosed by Antoshkiw.” Id. at
4–5.
Appellant contends that a skilled artisan would not have had reason to
combine Antoshkiw and Runge ’315 to arrive at the claimed invention.

3 Antoshkiw et al., US 3,998,753, issued Dec. 21, 1976.
4 Runge et al., US 6,235,315, issued May 22, 2001.
5 As discussed above, the Examiner withdrew the obviousness rejection as to
claims 34, 35, 37, and 40–42 in the Answer. See supra n.2.
Appeal 2020-005609
Application 15/145,337

5
Appeal Br. 8–9. As to claim 27, which depends from claim 21 and further
recites that the at least one carotenoid comprises ß-carotene, Appellant
further contends that Antoshkiw does not specifically disclose ß-carotene,
and that “Runge [’315] discloses a degree of crystallinity of greater than 20
for lycopene but NOT for ß-carotene.” Id. at 9–11. Appellant also contends
that Runge ’315 teaches away from claim 42, which recites that “the
carotenoid has a degree of crystallinity in the range from 95 to 99%
determined by X-ray diffraction and the at least one carotenoid comprises
ß-carotene,” because “Runge [’315] is related to Lycopene and not
ß-carotene” and “discloses that the degree of crystallinity for ß-carotene is
only 10% by weight in dry powder . . . and not in the range from 95 to 99%
determined by X-ray diffraction as is required by appellant’s claimed
invention of claim 42.” Id. at 12. Finally, as to claim 43, which recites a
preparation according to claim 21 “wherein the preparation is prepared by
[a] process which consists essentially of” certain steps, Appellant contends
that the cited prior art references do not disclose certain of the recited steps.
Id. at 13–14.
The issues with respect to this rejection are (1) whether a skilled
artisan would have had reason to combine Antoshkiw and Runge ’315 to
arrive at the invention of claims 21; and (2) whether a preponderance of
evidence supports the Examiner’s conclusion that the combination of
Antoshkiw and Runge ’315 suggests the additional claim limitations of
claims 27, 42, and 43 and that a skilled artisan would have had reason to
combine the teachings of the references to arrive at the inventions of these
claims.
Appeal 2020-005609
Application 15/145,337

6
B. Findings of Fact
1. Antoshkiw teaches that carotenoids are important coloring
agents, but their insolubility in water, relative high melting points, and
sensitivity to oxidation “militate against direct employment of the crystalline
materials for coloration of aqueous foodstuffs or feedstuffs or for use as a
source of vitamin A since in this form, the materials are poorly absorbed or
give poor coloring effects.” Antoshkiw 1:6–11, 1:25–33.
2. Antoshkiw teaches “water dispersible carotenoid compositions
in . . . powder form which are suitable for use in the preparation of colored
optically clear, stable, aqueous compositions and which can be incorporated
into, e.g., pharmaceutical or cosmetic preparations or animal feedstuff and to
processes for their preparation.” Id. at Abstract, 1:49–52.
3. Antoshkiw teaches that “carotenoids which can be used in the
practice of [its] invention are the known natural or synthetic available
representatives of this class of compounds useful as coloring agents,”
including, e.g., carotene, lycopene, zeaxanthin, and canthaxanthin. Id. at
2:3–11.
4. Antoshkiw teaches “water-dispersible powders containing from
about 2.5 to about 15% carotenoid.” Id. at 4:11–14. See also id. at 2:16–18
(describing “[w]ater-dispersible powders containing from 2.5 to 15% by
weight of canthaxanthin”), 2:25–26 (describing “beadlets containing 1%
zeaxanthin”), 4:51–54 (teaching “water-dispersible carotenoid-containing
powder compositions containing from 2 to about 15% by weight of the
carotenoid”), 8:15–31 (claims 3 and 4, powder comprising from about 2 to
about 15% of a carotenoid).
Appeal 2020-005609
Application 15/145,337

7
5. Antoshkiw teaches that its carotenoid powder compositions
contain from about 75% by weight to about 90% by weight of a carrier
comprising a carbohydrate, e.g., sucrose, and a water-soluble protective
colloid, e.g., modified food starch, “wherein the weight ratio of water-
soluble protective colloid to carbohydrate ranges from about 1/1 to about
2/1.” Id. at 2:39–49; see also id. at 8:32–37 (claim 5), 9:1–6 (claim 17).
6. Antoshkiw discloses examples of carotenoid-containing
powders comprising (1) 23.3 grams (2.5%) canthaxanthin, 279 grams
sucrose, and 330 grams of gelatin, id. at 4:62–6:20 (Example 1); (2) 46.6,
70, or 93 grams (5.0, 7.5, or 10%) canthaxanthin, 279 grams of sucrose, and
330 grams of gelatin, id. at 6:22–60 (Example 2); (3) 31.0 grams (5%)
ß-apo-8’-carotenal, 135 grams sucrose, and 135 grams modified food starch,
id. at 6:63–13 (Example 3); and (4) 17.1 grams (1%) zeaxanthin, 279 grams
sucrose, 330 grams gelatin, id. at 7:15–30 (Example 4).
7. Runge ’315 teaches that, like all carotenoids, lycopene is
insoluble in water and only slightly soluble in fats and oils and that
[t]his limited solubility and the high sensitivity to
oxidation stand in the way of direct use of the relatively
coarse-grain crystalline lycopene in the coloration of
foodstuffs and feedstuffs, since the pure substance is too
unstable in coarse-crystalline form, is only inadequately
absorbed and thus yields only poor coloring results.
Only by means of specifically prepared
formulations in which the active compounds are present
in finely divided form, and if appropriate protected
against oxidation by protective colloids, can improved
color yields be achieved in the direct coloring of
foodstuffs.
Runge ’315, 1:33–45.
Appeal 2020-005609
Application 15/145,337

8
8. Runge ’315 teaches “stable, pulverulent lycopene formulations,
comprising lycopene having a degree of crystallinity of greater than 20%.”
Id. at Abstract, 1:6–8.
9. Runge ’315 teaches that “pulverulent lycopene formulations in
which the lycopene is particularly stable to oxidation and light” may be
achieved by “formulations comprising lycopene having a degree of
crystallinity of greater than 20%,” and further teaches that
[t]he degree of crystallinity of lycopene in the
formulations according to the invention can be
determined, for example, by X-ray diffraction
measurements and in general lies in the range greater
than 20%, preferably in the range from 25 to 100%,
particularly preferably in the range from 30 to 95%, very
particularly preferably in the range from 40 to 80%.
Id. at 2:38–44.
10. Runge ’315 teaches that “it was possible to adjust the degree of
crystallinity of lycopene by variation of the grinding time and/or grinding
temperature.” Id. at 5:29–32.
11. Runge ’315 teaches that
[t]he content of lycopene in the formulations according to
the invention lies in the range from 0.5 to 25% by weight,
preferably in the range from 2 to 21 % by weight,
particularly preferably in the range from 5 to 16% by
weight, very particularly preferably in the range from 8
to 12% by weight, based on the dry mass of the
formulations.
Id. at 2:54–59.
12. Runge ’315 teaches increasing the stability of its formulations
by incorporating into its formulation “protective colloids, plasticizers, and/or
stabilizers,” in addition to the active compound. Id. at 2:64–67.
Appeal 2020-005609
Application 15/145,337

9
13. Runge ’315 teaches that suitable protective colloids include,
e.g., gelatin and starch. Id. at 3:1–3.
14. Runge ’315 teaches increasing the mechanical stability of the
final product by adding a plasticizer, e.g., sucrose, to the colloid. Id. at 3:8–
11.
15. Runge ’315 teaches that
[t]he ratio of protective colloid and plasticizer to
carotenoid solution is in general selected such that a final
product is obtained which contains between 0.5 and 25%
by weight of lycopene, 10 to 50% by weight, preferably
15 to 35% by weight, of a protective colloid, 20 to 70%
by weight, preferably 30 to 60% by weight, of a
plasticizer, all percentage data based on the dry mass of
the powder, and, if appropriate, minor amounts of a
stabilizer.
Id. at 3:12–19.
16. Runge ’315 teaches that its formulations can contain, in
addition to lycopene, further carotenoids, such as ß-carotene, zeaxanthin,
canthaxanthin, and ß-apo-8-carotenal. Id. at 3:39–44.
17. Runge ’315 teaches that a lycopene formulation prepared by the
process it discloses “has surprising properties in comparison with
corresponding ß-carotene or canthaxanthin formulations,” in that ß-carotene
or canthaxanthin in a dry powder prepared according to the method taught in
EP-A-0 065 193 is present “in mainly amorphous form with a degree of
crystallinity of only 10%,” whereas the lycopene in Runge ’315’s
formulation has a “degree of crystallinity . . . , determined with the aid of
X-ray diffraction diagrams, . . . in the range greater than 20%, preferably in
the range from 25 to 100%, particularly preferably in the range from 30 to
Appeal 2020-005609
Application 15/145,337

10
95%, very particularly preferably in the range from 40 to 80%.” Id. at 4:39–
50.
18. Runge ’315 teaches a method of grinding crystalline lycopene
using a ball mill. Id. at 7:20-31 (Example 3).
C. Analysis
Claim 21
Except as otherwise noted, we adopt the Examiner’s findings of fact
and reasoning regarding the scope and content of the prior art (Final Act. 2–
5; Ans. 6–12) and agree with the Examiner that claim 21 is obvious over
Antoshkiw and Runge ’315.6 We address Appellant’s arguments below.
Appellant contends that it would not have been obvious to a skilled
artisan to modify Antoshkiw’s composition so that “the carotenoid has a
degree of crystallinity in the range from 90 to 99%,” as required by
independent claim 21. Appeal Br. 8. More specifically, Appellant contends
that Antoshkiw’s invention relates to “carotenoid compositions . . .
dispersible in aqueous solutions to form optically clear aqueous
compositions,” and “[a] person skilled in the art knows that a crystalline
compound . . . has a lower solubility in a solvent (leading in some cases not

6 Although the Examiner states that the rejection is based on Antoshkiw and
Runge ’315, in several instances in the Final Rejection the Examiner appears
to have cited instead to Runge et al., US 6,509,029 B2, issued Jan. 21, 2003
(Runge ’029). See, e.g., Final Act. 4. Because Runge ’315 contains
disclosures similar (though not identical) to the portions of Runge ’029 cited
by the Examiner, we nevertheless agree with the Examiner that claim 21 is
obvious over Antoshkiw and Runge ’315. However, we do not adopt the
Examiner’s findings that are based on the disclosures of Runge ’029 and rely
instead on similar disclosures in Runge ’315 for our affirmance. See FF9,
FF12–FF16, FF18.
Appeal 2020-005609
Application 15/145,337

11
to optically clear solutions) than a compound with reduced crystallinity.” Id.
(citing Honda7).
We are not persuaded. Runge ’315 teaches that a powder formulation
of lycopene, a carotenoid, is particularly stable to oxidation and light where
the lycopene has a degree of crystallinity greater than 20%, and further
teaches that the degree of crystallinity is “preferably in the range from 25 to
100%” and “particularly preferably in the range from 30 to 95%.”8 FF8,
FF9. Runge ’315 also teaches that the degree of crystallinity of lycopene
may be adjusted by varying grinding time and/or grinding temperature.
FF10.
The ranges disclosed in Runge ’315 encompasses and/or overlaps the
90 to 99% crystallinity recited in claim 21 and renders this limitation prima
facie obvious. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“A
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art.”); see also
In re Aller, 220 F.2d 454, 456 (CCPA 1955) (explaining that “where the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation”).
In light of Runge ’315’s teachings, a skilled artisan would have been

7 Masaki Honda et al., Enhanced Solubility and Reduced Crystallinity of
Carotenoids, ß-Carotene and Astaxanthin, by Z-Isomerization, 120 Eur. J.
Lipid Sci. & Tech. 1800191 (2018).
8 We note that Runge ’315 also teaches that “[t]he degree of crystallinity of
lycopene in the formulations according to [its] invention . . . very
particularly preferably in the range from 40 to 80%,” which is outside of the
range recited in claim 21. FF9. However, “all disclosures of the prior art,
including unpreferred embodiments, must be considered.” In re Lamberti,
545 F.2d 747, 750 (CCPA 1976).
Appeal 2020-005609
Application 15/145,337

12
motivated to modify Antoshkiw’s carotenoid composition, particularly a
lycopene composition, so that “the carotenoid has a degree of crystallinity in
the range from 90 to 99%,” as recited in claim 21, in order to increase the
composition’s stability.
We also disagree with Appellant that Honda suggests it would not
have been obvious to a skilled artisan to modify Antoshkiw’s composition
so that “the carotenoid has a degree of crystallinity in the range from 90 to
99%.” Appeal Br. 8.
As an initial matter, Honda post-dates the filing date of the instant
application, and Appellant has provided no evidence that its disclosures
reflect the understanding of those skilled in the art at the time of the
invention. Moreover, “a given course of action often has simultaneous
advantages and disadvantages, and this does not necessarily obviate
motivation to combine.” Medichem, S.A. v. Rolabo S.L., 437 F.3d 1157,
1165 (Fed. Cir. 2006). Thus, even assuming a skilled artisan would
understand at the time of the invention that a compound with greater
crystallinity “has a lower solubility in a solvent (leading in some cases not to
optically clear solutions),” Appeal Br. 8, such an artisan may nevertheless be
motivated to formulate Antoshkiw’s composition with carotenoid having the
requisite degree of crystallinity, in order to achieve the increased stability
disclosed in Runge ’315. Finally, Honda at most teaches that, “[a]s the
Z-isomer content of [ß-carotene and astaxanthin] increased, their solubility
in organic solvents enhanced and their degree of crystallinity reduced.”
Honda 7 (emphasis added). Such a conclusion does not support Appellant’s
suggestion that a skilled artisan would understand that crystalline
Appeal 2020-005609
Application 15/145,337

13
compounds generally would have a lower solubility so as to decrease the
likelihood of forming optically clear aqueous compositions.
As to the Examiner’s alternative rationale for combining Antoshkiw
and Runge ’315, Appellant contends that “the use of starch [in the
composition of Runge ’315] cannot be a motivation for the person skilled in
the art to use modified starch,” because “[m]odified starch has in
comparison to starch completely different properties . . . , [and] the person of
ordinary skill in the art would get a completely different product.” Appeal
Br. 9.
We are not persuaded. Runge ’315 teaches using starch as a
protective colloid to increase the stability of its lycopene powder
composition. FF8, FF12, FF13. Antoshkiw teaches that modified food
starch is also a water-soluble protective colloid that may be incorporated into
a carotenoid powder composition. FF5. It would have been obvious to
those skilled in the art to substitute one known equivalent (i.e., Antoshkiw’s
modified food starch) for another (i.e., Runge ’315’s starch). See In re
Omeprazole Patent Litigation, 483 F.3d 1364, 1374 (Fed. Cir. 2007)
(finding “no . . . error in [the] conclusion that it would have been obvious to
one skilled in the art to substitute one ARC [alkaline reactive compound] for
another”); In re Fout, 675 F.2d 297, 301 (CCPA 1982) (holding that
“[e]xpress suggestion to substitute one equivalent for another need not be
present to render such substitution obvious”).

Claim 27
Claim 27 depends from claim 21 and further recites that “the at least
one carotenoid comprises ß-carotene.” Appeal Br. 16 (Claims App.).
Appeal 2020-005609
Application 15/145,337

14
Appellant first contends that claim 27 is patentable because claim 21
is patentable. Appeal Br. 9. We are not persuaded for the reasons discussed
above.
Appellant also contends that claim 27 is patentable because
“Antoshkiw discloses carotene only in one location of the patent,” and
“[t]here is no specific disclosure of ß-carotene in Antoshkiw.” Appeal Br.
9–10.
To the extent Appellant is arguing that Antoshkiw does not render
carotene obvious because the reference mentions carotene only once, we
disagree because “all disclosures of the prior art . . . must be considered.”
In re Lamberti, 545 F.2d at 750.
Neither are we persuaded by Appellant’s contention that Antoshkiw
does not specifically disclose ß-carotene. As Appellant acknowledges,
Antoshkiw teaches that “[t]he carotenoids which can be used in the practice
of [its] invention are the known natural or synthetic available representatives
of this class of compounds useful as coloring agents,” including carotene.
FF3; Appeal Br. 9. Appellant further identifies only six forms of carotene,
i.e., α-, β-, γ-, δ-, ε-, and ζ-carotene. Given the limited number of carotene
forms, we find Antoshkiw’s disclosure of “carotene” allows a skilled artisan
to “at once envisage each member” belonging to the class and, thus,
discloses each member of the class, including ß-carotene, “as if [the
reference] had drawn each structural formula or had written each name.” In
re Petering, 301 F.2d 676, 681–82 (CCPA 1962). In any event, as further
discussed below, Runge ’315 also discloses including ß-carotene in its
composition. FF16.
Appeal 2020-005609
Application 15/145,337

15
Appellant next argues that “[t]he Examiner relies upon Runge [’315]
for disclosing the degree of crystallinity,” but “Runge [’315] discloses a
degree of crystallinity of greater than 20 for lycopene but NOT for
ß-carotene as is required by . . . claim 27.” Appeal Br. 10. Appellant
contends that Runge ’315 in fact “teaches away from the . . . claimed
invention of ß-carotene having a degree of crystallinity from 90 to 99%,”
because Runge ’315 discloses “ß-carotene having a degree of crystallinity of
only 10%” and also “teaches that lycopene has better properties than ß-
carotene.” Id. at 10–11.
We are not persuaded because claim 27 does not require ß-carotene to
have a degree of crystallinity in the range of 90 to 99% determined by X-ray
diffraction. More particularly, claim 21 recites a preparation in powder form
comprising “at least one carotenoid,” wherein “the at least one carotenoid is
present in the powder in an amount of 1 to 25% by weight,” “the at least one
carotenoid and the sucrose are present in the powder in a ratio by weight of
1:2 to 1:80,” and “the carotenoid has a degree of crystallinity in the range
from 90 to 99% determined by X-ray diffraction.” Appeal Br. 16 (Claims
App.). Claim 27 then recites that “the at least one carotenoid comprises
ß-carotene.” Id. (emphasis added). Thus, the broadest reasonable
interpretation of claim 27 encompasses a carotenoid mixture, comprising
ß-carotene, having the requisite degree of crystallinity. In other words, the
claimed degree of crystallinity applies to the carotenoid mixture, not
necessarily to ß-carotene by itself.
Runge ’315 teaches that its lycopene formulation may also contain
multiple carotenoids, including ß-carotene. FF16. In light of the teaching in
Runge ’315 that a degree of crystallinity encompassing or overlapping the
Appeal 2020-005609
Application 15/145,337

16
claimed range of 90–99% contributes to the stability of its lycopene
formulation, FF9, we find that it would have been obvious to a skilled
artisan to formulate a lycopene formulation of Runge ’315 comprising
ß-carotene such that the carotenoid mixture has the claimed degree of
crystallinity. In re Aller, 220 F.2d at 456 (“[W]here the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”).

Claim 43
Claim 43 claims:
43. The preparation according to claim 21, wherein the
preparation is prepared by the process which consists
essentially of:
i) suspending said at least one carotenoid a) in an aqueous
molecular dispersed or colloidal solution of said at least one
modified starch b),
ii) grinding the suspended particles,
iii) mixing the ground suspension with said sucrose c), and
iv) subsequently converting the suspension optionally in the
presence of a coating material into a dry powder,
where the suspension comprises after process step iii), based on
the dry matter of the aqueous suspension, from 1 to 25% by
weight of at least one carotenoid, and the ratio of carotenoid a)
to sucrose c) is from 1:2 to 1:80 by weight.
Appeal Br. 19 (Claims App.).
Appellant contends that “the rejection with respect to claim 43 should
be reversed” because “Antoshkiw and Runge [’315] do not disclose at least
step (ii) and (iii). Appeal Br. 14.
Appeal 2020-005609
Application 15/145,337

17
We are not persuaded. Claim 43 is a product-by-process claim. “The
patentability of a product does not depend on its method of production. If
the product in a product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though the prior
product was made by a different process.” In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985). As explained above, the preparation
of claim 21 is obvious over Antoshkiw and Runge ’315. Therefore, claim 43
is obvious over Antoshkiw and Runge ’315, regardless of any differences in
the methods used to produce the preparation.
Accordingly, we affirm the rejection of claims 21, 27, and 43 as
obvious over Antoshkiw and Runge ’315. Claims 25, 28–33, 36, and 38,
which are not separately argued, fall with claim 21. However, because our
reasoning differs from that of the Examiner in certain respects, we designate
our affirmance as a new ground of rejection.

CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
21, 25,
27–33,
36, 38,
43
103 Antoshkiw,
Runge ’315
21, 25,
27–33,
36, 38,
43
21, 25,
27–33,
36, 38,
43

TIME PERIOD FOR RESPONSE
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
Appeal 2020-005609
Application 15/145,337

18
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED; 37 C.F.R. § 41.50(b)