BASF SE

Patent Trials and Appeals Board

Jul 27, 2021

2020006481 (P.T.A.B. Jul. 27, 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.
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.
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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.
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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.
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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.
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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
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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
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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.
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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–
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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).
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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.
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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
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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
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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).
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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
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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,
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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