BASF SEDownload PDFPatent Trials and Appeals BoardJul 27, 20212020006481 (P.T.A.B. Jul. 27, 2021) Copy Citation 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. 13/945,438 07/18/2013 Thrandur Helgason 074016-0089-US (286705) 1098 123223 7590 07/27/2021 Faegre Drinker Biddle & Reath LLP (WM) Attn: Intellectual Property Group One Logan Square, Suite 2000 Philadelphia, PA 19103-6996 EXAMINER PROSSER, ALISSA J ART UNIT PAPER NUMBER 1619 NOTIFICATION DATE DELIVERY MODE 07/27/2021 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 THRANDUR HELGASON, CHRISTIAN KÖPSEL, CLEMENS SAMBALE, ANDREAS HABICH, and ANDREAS HASSE ________________ Appeal 2020-006481 Application 13/945,438 Technology Center 1600 ________________ Before ERIC B. GRIMES, TIMOTHY G. MAJORS, and RACHEL H. TOWNSEND, Administrative Patent Judges. MAJORS, Administrative Patent Judge. DECISION ON APPEAL Appellant1 submits this appeal under 35 U.S.C. § 134(a) involving claims to an aqueous transparent oil-in-water emulsion comprising, inter alia, an emulsified carotenoid dissolved in a triacylglycerol oil. The claims have been rejected for obviousness under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies BASF SE as the real party-in- interest. Appeal Br. 2. Appeal 2020-006481 Application 13/945,438 2 STATEMENT OF THE CASE “The invention relates to an aqueous transparent oil-in-water emulsion comprising a carotenoid and a process for producing said emulsion.” Spec. 1:5–6. The Specification explains that “[e]mulsions containing carotenoids are well known in the state[] of the art,” and that “[c]arotenoids are used as colouring material and as an active substance for the human food and animal feed industry,” among other uses. Id. at 8–10. The Specification further explains that “[g]enerally a lot of additives are necessary in order to obtain [a] stable carotenoid emulsion, where the carotenoid is protected from oxidation and the emulsion ha[s] an improved colouration.” Id. at 1:19–21; see also id. at 2:4–5 (noting that emulsifying carotenoids may be challenging “because of their low oil solubility and very low water solubility”). According to the Specification, an “object of the present invention [is] to put aqueous carotenoid emulsions at disposal which show[] improved colour, preferably at high carotenoid concentrations, with improved bioavailability of the carotenoids.” Id. at 2:11–13. Claims 1–10, 15, 17, 19, 21, and 25–35 are on appeal. Claim 1 is illustrative and is reproduced below: 1. An aqueous transparent oil-in-water emulsion comprising an emulsified carotenoid in a concentration of 0.025-2000 ppm solved in a triacylglycerol oil, wherein no solid carotenoid particles are present, and wherein 40 to 75% of the carotenoid is the trans-isomer and 25-60% of the carotenoid is the cis-isomer, and said emulsion comprising a modified starch and/or at least one surface active protein in a concentration of 0.5-600 ppm and with a NTU (Turbidity) value at a concentration of 5 ppm of carotenoid of 10 to 35 NTU and wherein the triacylglycerol oil is in a concentration of 0.1-35 ppm. Appeal 2020-006481 Application 13/945,438 3 Appeal Br. 30. Independent claims 26, 27, and 29 are similar to claim 1, but recite some additional or different components of the emulsion and/or different concentrations for certain components. See, e.g., Appeal Br. 35 (claim 26 (specifying inclusion of a carbohydrate with a dextrose equivalent (DE) value between 35 and 50); claim 27 (reciting carotenoid concentration of 0.1 to 100 ppm, and that the emulsion does not contain gum arabic)). The Examiner notes that applicant elected “MCT oil” and “apocarotenal” as the species of triacylglycerol oil and the carotenoid, respectively. Final Act. 2; Spec. 5:1–2 (MCT is a “medium-chain triacylglycerol”). We limit our analysis of the claims to the patentability of the elected species. Ex parte Ohsaka, 2 USPQ2d 1460, 1461 (BPAI 1987). Appellant seeks review of the Examiner’s rejection of claims 1, 2, 4– 6, 19, 21, 27–29, and 31–35 under 35 U.S.C. § 103(a) as obvious over the combination of Bromley2 and Auweter3 and (optionally) Rasmussen.4 Final Act. 4–10.5 The rejection of claims 3, 7–10, 15, 17, 25, 26, and 30 as obvious over the combination of Bromley, Auweter, Rasmussen (optionally), and Schaffner6 is also on appeal. Id. at 10–16. 2 Bromley et al., US 2012/0016026 A1, published Jan. 19, 2012. 3 Auweter et al., US 5,968,251, issued Oct. 19, 1999. 4 Rasmussen, Carotenoid colours – the better alternative to artificial dyes, Innovations in Food Technology, Nov. 2008. 5 This citation refers to the Examiner’s Final Rejection dated October 18, 2019 (“Final Act.”). We also refer herein to the Examiner’s Answer on Appeal dated June 26, 2020 (“Ans.” or “Answer”), and to the Advisory Action dated January 10, 2020 (“Adv. Act.”). 6 Schaffner et al., US 2009/01015331 A1, published Apr. 23, 2009. Appeal 2020-006481 Application 13/945,438 4 I. Obviousness over Bromley, Auweter, and Rasmussen The issue on appeal is whether a preponderance of the evidence supports the Examiner’s conclusion that claims 1, 2, 4–6, 19, 21, 27–29, and 31–35 would have been obvious over the combination of Bromley in view of Auweter and (optionally) Rasmussen. We focus primarily here on claim 1. The other claims for which Appellant has not advanced separate argument will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv).7 The Examiner finds that Bromley teaches or suggests the emulsion of claim 1, with the exception that Bromley does not disclose the recited proportion of cis- and trans-isomers of the carotenoid (40–75% trans, and 25–60% cis). Final Act. 9. The Examiner finds, for example, that Bromley teaches diluted food and beverage additives that comprise a liquid oil-in- water emulsion with an active carotenoid (e.g., apo-carotenal) dissolved in MCT or other oils, and the use of modified starch as an emulsion stabilizer. Id. at 4–5 (citing, for example, Bromley, Abstr., ¶¶ 10–12, 27 (identifying “apo-carotenal” as a non-polar active), 37 (“fatty acid modified starch” as exemplary stabilizer), 41 (listing concentrations for non-polar solvents (e.g., oils)), 44–47 (describing dilution factors for the concentrated composition, 7 Our rules require that an appeal brief include headings for each contested ground of rejection and, for each such ground, that “any claim(s) argued separately or as a subgroup shall be argued under a separate subheading that identifies the claim(s) by number.” 37 C.F.R. § 41.37(c)(iv). In many cases, Appellant’s brief does not follow this rule. For example, Appellant refers to claims 15, 25, and 26 in what might be characterized as an “argument” for those claims, but in a section appearing to address the first rejection (which is not the basis on which claims 15, 25, or 26 are rejected) and without headings or subheadings identifying those claims. See, e.g., Appeal Br. 18– 19, 21–23. Notwithstanding the above, we address Appellant’s contentions where it has identified individual claims. Appeal 2020-006481 Application 13/945,438 5 for example, 1:250), 169, 220 (identifying “MCT oil” as an exemplary non- polar solvent). As noted by the Examiner, Bromley also teaches the desired properties of its compositions, including stability, clarity, no phase separation or visible particles, and with a turbidity (NTU) value of less than 200. Id. ¶ 11. Although the Examiner finds that Bromley does not “specifically teach or exemplify an embodiment” with each of the components (carotenoid, oil, etc.) in the exact parts-per-million (ppm) amounts recited in claim 1, the Examiner finds that those amounts would have been obvious based on Bromley’s teachings. For example, the Examiner finds that Bromley discloses that carotenoids may comprise from about 0 to 15 wt% (0 to 150,000 ppm) in a concentrate that, when diluted according to Bromley’s teachings would produce ppm amounts within the claimed ranges (e.g., 150,000/250 (dilution factor) = 600 ppm carotenoid; claim 1 range is 0.025– 2000 ppm). Final Act. 6; see also Ans. 8 (noting that Bromley expressly teaches dilutions of up to 1:500); see Bromley ¶¶ 44–47 (dilutions), 417 (carotenoid concentrations “of between 0% or about 0% and 15%”). The Examiner provides similar dilution and ppm calculations for the other components, including the MCT oil and starch. Final Act. 6–8 (noting, for example, that a 1:250 dilution of a 1 wt% oil = 40 ppm MCT oil). With respect to the oil component, the Examiner further reasons that it is a result- effective, and optimizable, variable because Bromley teaches that the amount of the oil solvent must be “sufficient to dissolve the non-polar active” (i.e., the carotenoid). Final Act. 7; Bromley ¶ 41 (teaching “the concentrate contains a non-polar solvent [typically an oil] . . . that dissolves the non-polar active ingredient”); see also Final Act. 10 (citing Auweter’s Appeal 2020-006481 Application 13/945,438 6 teaching to include oil from 0 to 500% by weight of the carotenoid when preparing an emulsification of the carotenoid, which Examiner asserts provides further motivation to optimize this oil component, if necessary). Because Bromley does not teach the respective proportion of the cis- and trans-isomers of the carotenoid in the composition, the Examiner turns to Auweter. Final Act. 8–9. According to the Examiner, Auweter discloses carotenoid powders prepared from oil-in-water emulsions used as coloring agents in food. Id. (citing Auweter, Abstr.). Further, the Examiner finds, Auweter teaches that the carotenoid may have an all-trans content of at least 50% (thus implying a cis-isomer content about 50% or less). Id. (citing Auweter, 8:18–20 (claim 9 (“all-trans isomer content of at least 50%”)); see also Auweter, 3:16–30 (teaching control of isomerization between cis and trans), 4:15–24 (listing suitable carotenoids), 5:6–15 (teaching use of MCT oil in the solvent phase in amounts from 0–500% by weight of the carotenoid), 8:21–23 (claim 10 (“all-trans isomer content of at least 75%”)). The Examiner reasons that it would have been obvious to include in Bromley’s emulsions both cis- and trans-isomers of the carotenoid as taught by Auweter and, if necessary, to optimize the relative isomer proportions to adjust the color effect of such compositions. Final Act. 9. Additionally or alternatively to the above, the Examiner cites Rasmussen’s teachings about the use of carotenoids as colorants, and that dilutions of carotenoid concentrates in foods and beverages typically contain about 5 to 10 ppm of the dissolved carotenoid. Final Act. 9–10; see generally Rasmussen. From this the Examiner reasons that it would have been obvious to dilute a concentrate of Bromley as proposed to comprise Appeal 2020-006481 Application 13/945,438 7 between 5 to 10 ppm of the dissolved carotenoid, as taught in Rasmussen. Final Act. 10; Adv. Act. 3; Ans. 13–14. We agree with and adopt the Examiner’s findings and reasoning in support of the conclusion that claim 1 (and the other rejected claims) would have been obvious over Bromley and Auweter, optionally in further view of Rasmussen. Final Act. 4–10; Adv. Act. 2–6; Ans. 4–14. In short, we agree that Bromley teaches or suggests emulsions with each of the recited components that, when diluted, would satisfy the component concentrations recited in the claims. To the extent Bromley does not teach the claimed proportion of cis- and trans-isomers of the carotenoid, that deficiency is remedied by Auweter, which teaches the use of a 50/50 mix of the isomers, and also suggests that isomerization content may be controlled to provide desired color effects, as stated by the Examiner. Rasmussen, while not ultimately necessary, further evidences the obviousness of dilutions of carotenoid compositions for food colorants, and having carotenoid concentrations within the scope of the claims—providing support to the Examiner’s rationale to choose and optimize the components of Bromley’s emulsion. We address Appellant’s arguments below. Appellant contends that “with four non-disclosed (overlapping) ranges in Bromley the appellant believes this simply is too much to constitute a prima facie case of obviousness.” Appeal Br. 14. To support this contention, Appellant then proceeds to describe the various ways in which Bromley (and the other asserted references) allegedly differ from the claimed composition such that the subject matter would not have been obvious. Id. at 16–24. Appellant’s argument is not persuasive as discussed in detail below. Appeal 2020-006481 Application 13/945,438 8 Appellant argues that, although Bromley discloses that the amount of carotenoids may range from 0 to 15 weight %, “this disclosure is a very clear ‘non-teaching,’” which makes no sense to the skilled artisan and would be “discard[ed].” Id. at 16–17. Instead, Appellant contends, the skilled artisan would focus on another disclosed and preferred range of carotenoids in Bromley (i.e. between 5–15%). Id. (citing Bromley ¶ 417 (“Typically, carotenoid-containing compounds are used . . . within a concentration range of between 0% or about 0% and 15% or about 15%, typically between 5% or about 5% and 15% . . . w/w, of the concentrate.”) (emphasis added)). If, as Appellant urges, 5% (or 50,000 ppm) is the floor of Bromley’s disclosed range, the carotenoid content when diluted falls outside the ranges recited in (at least some of) the claims. Id. at 16–18 (explaining that, at a dilution of 1:250, the result is 200 ppm; noting that claims 26 and 27 recite an upper limit of 100 ppm of the carotenoid); see also id. at 19 (“However, the minimum amount of 5 in Bromley is clearly way outside the ranges required by the present claims.”). We reject this argument. First, there is no sufficient evidentiary basis to support the notion that the skilled artisan would discard the broader, explicitly disclosed range of carotenoids in Bromley in favor of a narrower allegedly “preferred” range. And the law is to the contrary. Merck & Co. Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (explaining that, when obviousness is the issue, preferred and non-preferred disclosures must be considered). Second, even if 5% (50,000 ppm)/250 produces a 200 ppm concentration outside some claims (i.e., 200 ppm > 100 ppm as recited in claim 27), Appellant’s argument fails to grapple with the fact that 200 ppm is squarely within the carotenoid range recited in claim 1 (0.025– Appeal 2020-006481 Application 13/945,438 9 2000 ppm). Third, there is nothing senseless about the broader range of Bromley—it expressly covers the use of small amounts of carotenoid (e.g., “about 0%”) and would thus embrace concentrations of, for example, 0.5%, 1%, etc. Ans. 10–11. And, finally, applying Bromley’s broader disclosures, the claimed carotenoid concentrations are clearly met. (For example, 0.5% or 5,000 ppm diluted in a ratio of 1:250 equals 20 ppm).8 Appellant next turns to the oil element. Appeal Br. 19–20. According to Appellant, the range of oil in the present claims is 0.1–35 ppm, but Bromley’s calculated oil content is 40 ppm. Id. (1% or 10,000 ppm divided by 250 equals 40 ppm). This 12.5% difference between 35 and 40 ppm is, Appellant argues, “a very considerable deviation.” Id. at 19. Also, Appellant contends that it “does not see where and how Bromley would provide” a motivation to optimize the oil content. Id. at 20. Recognizing that Auweter also teaches the use of MCT oils to help dissolve carotenoids, and suggests any amount of oil from 0 to 500% by weight of the carotenoid may be used, Appellant contends this “very broad range . . . actually teaches the person of ordinary skill in the art nothing specific.” Id. at 22; see Auweter, 5:6–16 (“concentration of from 0 to 500% by weight of the carotenoid”). Appellant’s argument on the oil element is unavailing. We agree with the Examiner that Bromley teaches that MCT oil should be present in amounts sufficient to dissolve the non-polar active (i.e., the carotenoid). 8 As Examiner notes, Bromley actually teaches dilutions of up to 1:500. Ans. 8–9 (citing Bromley ¶ 46). Applying that dilution factor to the alleged 5% minimal concentration (as argued by Appellant) produces a carotenoid concentration of 100 ppm (meeting the limitations of claims 26 and 27). Appeal 2020-006481 Application 13/945,438 10 Ans. 7. Auweter provides a similar suggestion. The Examiner has also cited unrebutted evidence in secondary sources to show that it was well-known that carotenoids have low solubility in oil. Final Act. 18; Adv. Act. 4–5. Altogether, the record supports the Examiner’s position that the oil content is a recognized optimizable variable—and that amounts should be tailored to the amount of the carotenoid sufficient to solubilize it. Bromley’s oil content of 40 ppm (according to one calculation) may not be within the recited range (0.1–35 ppm), but we agree with the Examiner that routine optimization would have overcome that purported distinction. And, that aside, because Bromley also teaches dilutions of 1:500 are suitable, a 1% oil content of Bromley would yield a value of 20 ppm. Ans. 8.9 Hence, applying Bromley’s broader teachings, the range of oil content overlaps with the claims. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (explaining that overlapping ranges in the art can be sufficient to support a prima facie case of obviousness and “shift[] the burden to the applicant to show that his invention would not have been obvious”). Appellant provides no objective evidence to the contrary. Appellant next turns to Auweter and the Examiner’s reliance on that reference for teaching the claimed proportion of cis- and trans-isomers of the carotenoid. Appeal Br. 21. Appellant acknowledges Auweter discloses the use of 50% trans-isomer content. Id. But, Appellant contends, Auweter elsewhere describes an all-trans content of “at least 75%” and that “all-trans isomer content is typically 76%.” Id. Appellant therefore asserts that Auweter teaches that “it would be beneficial to look for high all-trans isomer 9 The Examiner made this express calculation (1% or 10,000 ppm divided by 500 equals 20) in the Answer and Appellant filed no further reply to it. Appeal 2020-006481 Application 13/945,438 11 contents.” Id. Appellant also cites pending claim 15, and argues the cis- isomer content in that claim is increased relative to the trans-isomer content, which Appellant contends is the “exact opposite” of Auweter’s disclosure on increasing trans-isomer content. Id. at 21–22. This argument fares no better than Appellant’s argument regarding the oil element. We agree with the Examiner that “Auweter indisputably disclose[s] a trans-isomer content of at least 50%, a range that overlaps the instantly claimed range, sufficient for prima facie obviousness.” Ans. 5–6 (noting that even the “at least 75%” disclosure overlaps or abuts the claims). Moreover, as the Examiner explains, Auweter’s disclosure of different ranges and the effects of isomer configuration on the desired color effects of the composition provide a “motivation to optimize” the proportion of cis- and trans-isomers. Id. Auweter’s teachings are not limited to any preferred embodiment, nor to its separate disclosure of using a 76% or greater proportion of trans-isomers. As for claim 15, the Examiner (like Appellant) describes it as a “product-by-process” claim. Id.; Appeal Br. 11. The Examiner explains that the claim is therefore not limited to the manipulations of the recited steps and, further, that the powder of claim 15 is not limited to any particular isomer content. Ans. 6. So, a particular method by which Auweter adjusts the proportion of cis- and trans-isomers does not evidence a patentable distinction versus claim 15. Appellant fails to rebut Examiner on these points. Appellant, still not finished with Auweter, contends that Auweter’s compositions are not the same as what is claimed because they include a “protective colloid, which the present invention does not have.” Appeal Br. 22–23 (asserting this is especially true for claim 25, which recites that the Appeal 2020-006481 Application 13/945,438 12 only surfactant or emulsifier present is the modified starch). This argument is not persuasive because it presumes a rejection and modification of the art that the Examiner is not advancing. The Examiner proposes the modification of Bromley merely to include the proportion of cis- and trans- isomers of the carotenoid as taught in Auweter—whether Auweter uses a “colloid” in making its powders is not pertinent to the proportion issue. Adv. Act. 5–6 (noting that “the Office Action references ‘Bromley in view of Auweter’” and that “this entire tangent is moot because the maintained grounds of rejection are not predicated on modifying Bromley to include the protective colloid of Auweter”). Moreover, as explained by the Examiner, it is unclear what distinction exists between Auweter’s “colloid” (which may include starch and proteins) and the starch and/or proteins encompassed by at least pending claim 1. See Auweter, 4:40–42 (“Examples of protective colloids which are used are gelatin, fish gelatin, starch, dextrin, vegetable proteins, pectin, gum arabic, casein, caseinate, or mixtures thereof.”); Spec. 6:26–30 (listing examples of modified starch and proteins for the emulsion). The further contention of Appellant that a skilled artisan “would immediately recognize that the specifics” of Auweter “would not be transferable” to other emulsions like Bromley is merely unpersuasive attorney argument. Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034, 1043 (Fed. Cir. 2017) (“Attorney argument is not evidence.”). Appellant contends that the concentrated carotenoid products of Rasmussen are disclosed as containing 3% carotenoid, which would allegedly motivate and teach away from using lower amounts (2000 ppm or 0.2%) as claimed. Appeal Br. 24. Even if Appellant’s interpretation of Rasmussen (which is only optionally relied upon by Examiner) were Appeal 2020-006481 Application 13/945,438 13 accurate, a teaching of higher amounts of carotenoid does not rise to the level of a “teaching away” from using lower amounts. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding there is no teaching away when the art suggests alternatives and “does not criticize, discredit, or otherwise discourage the solution claimed.”). Moreover, the Examiner persuades us that, in fact, “the 3% [in Rasmussen] references the commercially available concentrate which is diluted to for example 2 ppm or 5 ppm” and, thus, is not inconsistent with the Examiner’s reasoning that it would have been obvious to dilute Bromley’s compositions to have similarly low part-per- million concentrations within the scope of the claims. Ans. 13–14; Adv. Act. 3 (explaining also that claim 1 is broadly drawn to any aqueous emulsion inclusive of food / beverage product dilutions). Turning to claim 4, Appellant notes that it depends from claim 1 and further requires the emulsion exhibit a colour intensity value (E 1/1) of 140– 280 based on a certain test. Appeal Br. 24; see also id. at 30 (claim 4). Appellant contends that it “does [not] believe that either Bromley, Auweter or Rasmussen disclosed this feature.” Id. at 24. The Examiner, however, finds that this feature in claim 4 is merely a functional property of the emulsion composition that, owing to the overlap between the actual ingredients of the claimed and prior art compositions, would be present in the cited art. Final Act. 9–10 (“Because the composition of the prior art is physically the same, it must have the same properties.”); Ans. 12. We agree, on this record, with the Examiner. “From the standpoint of patent law, a compound and all of its properties are inseparable; they are one and the same thing.” In re Papesch, 315 F.2d 381, 391 (CCPA 1963). Appeal 2020-006481 Application 13/945,438 14 Appellant’s “belief” that the color intensity feature is missing in the prior art is not persuasive evidence or argument in rebuttal of claim 4. For the reasons above, we determine that the preponderance of the evidence supports the Examiner’s conclusion that claims 1, 2, 4–6, 19, 21, 27–29, and 31–35 would have been obvious over Bromley, Auweter, and (optionally) Rasmussen. II. Obviousness over Bromley, Auweter, Rasmussen, and Schaffner The Examiner concludes that claims 3, 7–10, 15, 17, 25, 26, and 30 would have been obvious over Bromley in view of Auweter (and optionally Rasmussen), in further view of Schaffner. Final Act. 10–16. We agree with and adopt the Examiner’s findings and reasoning in support of this rejection. Id. In general, the Examiner turns to Schaffner for its disclosure of improved, modified starches and carbohydrates with certain characteristics, such as molecular weights and DE (dextrose equivalent) values. Id. at 13– 16 (concluding it would have been obvious to use the starch/carbohydrates of Schaffner as a simple substitution of known emulsion stabilizers for favorable effects). Appellant responds that Schaffner’s particles are larger than what is claimed, that Schaffner’s NTU values are higher than what is claimed, that Schaffner is not an emulsion like Bromley, that Schaffner’s E1/1 values are higher than what is claimed, and that the Examiner must be using hindsight. Appeal Br. 26. None of these contentions shows error in the rejection because the Examiner is not relying on Schaffner for the various features that Appellant argues are different from the claims—those features are taught in the other references of record. See Ans. 14–15 (explaining why “Appellant’s characterization of Schaffner remains untethered to the grounds Appeal 2020-006481 Application 13/945,438 15 of rejection articulated in the Office Action.”). When it comes to the key teachings of Schaffner that the Examiner does rely on (i.e., certain favorable starches/sugars as stabilizers), Appellant’s only response is that stabilizers appear in a “long list” of Bromley, and that “appellant does not believe Bromley or the other references teach[] the dextrose equivalent (DE)” values as claimed. Appeal Br. 27–28. But this is unpersuasive because Bromley expressly teaches that its emulsions may include carbohydrate bulking agents/stabilizers and Schaffner teaches examples of improved starches and carbohydrates (incidentally, used in compositions for the enrichment, fortification, and coloration of foods and beverages) with the requisite DE values. See Bromley ¶ 37; Schaffner ¶¶ 1, 2, 13, and 39. The Examiner has explained persuasively why the skilled artisan would have considered using such substitute starches and carbohydrates in Bromley’s emulsion, and that reasoning is not the product of hindsight gleaned only from applicant’s disclosure. Appellant has not dealt persuasively with the rejection and combination of references proposed. Turning finally to claim 30, Appellant repeats the limitation added by this dependent claim and states that “appellant does not believe that the prior art teaches this limitation.” Appeal Br. 28–29. The Examiner has, however, provided findings and reasoning specific to claim 30. Final Act. 12; Ans. 16–17. And, under our rules, “[a] statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(iv). Adding a statement of Appellant’s “belief” does not make such a non-argument any stronger. Accordingly, we determine that the preponderance of the evidence supports the Examiner’s conclusion that claims 3, 7–10, 15, 17, 25, and 26, Appeal 2020-006481 Application 13/945,438 16 and 30 would have been obvious over Bromley, Auweter, Rasmussen (optionally), and Schaffner. CONCLUSION For the reasons explained above, the preponderance of the evidence supports the Examiner’s rejections on appeal. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–6, 19, 21, 27– 29, 31–35 103(a) Bromley, Auweter, Rasmussen 1, 2, 4–6, 19, 21, 27– 29, 31–35 3, 7–10, 15, 17, 25, 26, 30 103(a) Bromley, Auweter, Rasmussen, Schaffner 3, 7–10, 15, 17, 25, 26, 30 Overall Outcome 1–10, 15, 17, 19, 21, 25–35 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation