BULBARELLO, Andrea et al.

Patent Trials and Appeals Board

Oct 1, 2019

14398057 - (D) (P.T.A.B. Oct. 1, 2019)

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.
14/398,057 10/30/2014 Andrea BULBARELLO BHD-4662-2935 9094
23117 7590 10/01/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANDREA BULBARELLO and GEORG STEIGER
____________

Appeal 2019-001001
Application 14/398,057
Technology Center 1700
____________

Before BEVERLY A. FRANKLIN, JEFFREY B. ROBERTSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

SQUIRE, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–11 and 13.3 We have jurisdiction under
35 U.S.C. § 6(b).

1 In explaining our Decision, we refer to the Specification filed Oct. 30,
2014 (“Spec.”); Non-Final Office Action dated Dec. 12, 2017 (“Non-Final
Act.”); Appeal Brief filed May 4, 2018 (“Br.”); and Examiner’s Answer
dated Sept. 4, 2018 (“Ans.”). There is no reply brief.
2 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies DSM IP Assets B.V. as the real party
in interest. Br. 1.
3 Claim 12 is canceled and claims 14 and 15 are withdrawn. Br. 11–12.
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We AFFIRM.
The Claimed Subject Matter
Appellant’s disclosure relates to reconstituted rice kernels enriched
with ferric pyrophosphate, and citric acid, a citrate salt or mixtures thereof.
Spec. 1; Abstract. Claim 1 is illustrative of the claimed subject matter on
appeal and is reproduced below from the Claims Appendix to the Appeal
Brief:
1. Reconstituted rice kernels comprising:
60 to 99 wt.-% of comminuted rice matrix material,
0.015 to 10 wt.-% of ferric pyrophosphate,
0.01 to 40 wt.-% of anhydrous or monohydrate
citric acid and/or a citrate salt
selected from the group consisting of
potassium citrate, monosodium citrate and
trisodium citrate, and
0 to 5 wt.-% of at least one micronutrient, wherein
the ferric pyrophosphate and the citric acid and/or
citrate salt are present in a
molar ratio of the ferric pyrophosphate to the
citric acid and/or citrate salt of between 0.01
and 20, and wherein
the reconstituted rice kernels remain color stable
upon storage and release the
ferric ions of the ferric pyrophosphate to
become bioavailable upon cooking in boiling
water at a temperature of 80 to 120 °C for 10
to 120 minutes.
Br. 10 (key disputed claim language italicized and bolded).
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The References
The Examiner relies on the following prior art references as evidence
in rejecting the claims on appeal:
Bortz et al. (“Bortz”) US 2006/0134227A1 June 22, 2006
Ito et al. (“Ito”) US 2006/0153954 A1 July 13, 2016
The Rejection
On appeal, the Examiner maintains (Ans. 3) the following rejection:
claims 1–11 and 13 rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Ito in view of Bortz. Ans. 3; Final Act. 3.
OPINION
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner’s
rejection based on the fact-finding and reasoning set forth in the Answer,
and Non-Final Office Action, which we adopt as our own. We add the
following primarily for emphasis.
Appellant argues claims 1–11 and 13 as a group. Br. 5. We select
claim 1 as representative and the remaining claims subject to the Examiner’s
rejection stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner determines that the combination of Ito and Bortz
suggests a reconstituted rice material satisfying all of the limitations of
claim 1 and concludes the combination would have rendered the claim
obvious. Ans. 3–5. On the record before us, we find a preponderance of the
evidence and sound technical reasoning support the Examiner’s analysis and
determination that the combination of Ito and Bortz suggests a reconstituted
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rice material satisfying all of the limitations of claim 1, and conclusion that
the combination would have rendered the claim obvious. Ito, Abstract,
¶¶ 15, 25; Bortz, Abstract, ¶¶ 9, 11, 18, 22, 23, 28, 69–71.
Appellant argues that the Examiner’s rejection should be reversed
because the claimed invention “achieves significant improvements with
respect to the bioavailability of iron.” Br. 5. In particular, Appellant
contends the experimental data provided in the originally-filed Specification
show that
the combination of ferric pyrophosphate and citric acid
and/or the citrates selected from the group consisting of
potassium citrate, monosodium citrate and trisodium
citrate give an extremely significant effect on the release
of iron.
Id. at 5.
This argument is not persuasive. In attempting to overcome a prima
facie case of obviousness by showing unexpected results, the burden rests
with Appellant to establish (1) that the alleged unexpected results presented
as being associated with the claimed invention are, in fact, unexpected, (2)
that the comparisons are to the disclosure of closest prior art, and (3) that the
supplied evidentiary showing is commensurate in scope with the claimed
subject matter. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
Appellant has failed to satisfy the requisite burden. Appellant does
not identify sufficient evidence that there is actually a difference between the
test results of the claimed invention and the closest prior art (Ito). The
“experimental data” in the originally-filed Specification to which Appellant
refers at page 5 of the Appeal Brief (see Spec. 9–16) are neither
representative of the teachings of the closest prior art nor commensurate
with the scope of the claims. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir.
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2011) (“Evidence of secondary considerations must be reasonably
commensurate with the scope of the claims.”).
Moreover, Appellant does not adequately explain why the alleged
“significant improvements” (Br. 8) Appellants contend are shown in the
experimental data are considered to be unexpected results and not just
typical results by one of ordinary skill in the art. Klosak, 455 F.2d at 1080
(“[T]he burden of showing unexpected results rests on [the party] who
asserts them.”).
Appellant’s assertions that the claimed invention “achieves significant
improvements with respect to the bioavailability of iron” (Br. 5) and the
experimental data show the claimed composition demonstrates “an
extremely significant effect on the release of iron” (id. at 5) are conclusory
and, without more, insufficient to establish unexpected results. De Blauwe,
736 F.2d at 705 (“It is well settled that unexpected results must be
established by factual evidence. Mere argument or conclusory statements in
the specification does not suffice.”).
Next, Appellant argues the Examiner’s rejection should be reversed
because the cited art does not teach or suggest the “citric acid and/or a citrate
salt selected from the group consisting of potassium citrate, monosodium
citrate and trisodium citrate” recitation of the claim. Id. at 5–8. In
particular, Appellant contends the disclosure at paragraphs 69–71 of Bortz
does not relate to citric acid or salts thereof, but instead relates to the use of
succinic acid and ascorbic acid. Id. at 7. Appellant further contends that,
based on Bortz’ disclosure, a person of ordinary skill in the art would have
had no motivation to use citric acid without ascorbic acid or succinic acid
with the reasonable expectation of improving bioavailability. Id. at 7.
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Appellant also contends Bortz does not disclose that citric acid would or
could increase the solubility of iron, and the reference does not relate at all
to rice matrix. Id. at 7.
We do not find Appellant’s argument in this regard persuasive of
reversible error in the Examiner’s rejection. Contrary to what Appellant
argues (Br. 5–8), the cited art does teach or suggest the “citric acid and/or a
citrate salt selected from the group consisting of potassium citrate,
monosodium citrate and trisodium citrate” recitation of the claim. As the
Examiner finds (Ans. 3–5), Bortz discloses a nutritional and dietary
supplement, which contains ferric pyrophosphate and uses organic acids,
including citric acid or salts thereof to aid in iron absorption. Bortz ¶¶ 9, 18,
22, 28, 69–71. In particular, paragraph 28 of Bortz explicitly discloses that
examples of suitable organic acids include “citric acids” and “salts of citric
acids.”
Appellant’s argument is misplaced because Bortz’s teachings are not
limited to the disclosures in its examples or preferred embodiments. See In
re Mills, 470 F.2d 649, 651 (CCPA 1972) (“[A] reference is not limited to
the disclosure of specific working examples.”); see also In re Susi, 440 F.2d
442, 445-46 (CCPA 1971) (explaining that disclosure of particular preferred
embodiments does not teach away from a prior art reference’s broader
disclosure).
As the Examiner finds (Ans. 5), Bortz explicitly discloses that both
succinic acid and ascorbic acid are merely examples of other suitable iron
absorption promoters. See Bortz ¶ 28 (disclosing “[e]xamples of suitable
organic acids include but are not limited to succinic acid”), ¶ 29 (disclosing
“[o]ther suitable iron absorption promoters include for example but are not
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limited to ascorbic acid”). Although paragraphs 69–71 of Bortz discuss the
use of succinic or ascorbic acids as iron absorption promoters, such
disclosure is exemplary or merely a preferred embodiment and, without
more, does not negate or take away from Bortz’ disclosure regarding the use
of organic acids, including “citric acid” and “salts of citric acids” (Bortz ¶
28). See In re Preda, 401 F.2d 825, 826 (CCPA 1968) (explaining that a
prior art reference’s disclosure must be considered for all that it teaches,
including “the inferences which one skilled in the art would reasonably be
expected to draw therefrom”).
Lastly, Appellant argues the Examiner’s rejection should be reversed
because one of ordinary skill in the art would not have had motivation to
combine the Bortz and Ito references to address the “problem encountered
by the current Applicant” or a “reasonable expectation of solving such
problem.” Id. at 7–8.
We do not find this argument persuasive of reversible error in the
Examiner’s rejection because, in making an obviousness determination, the
prior art does not have to be directed to trying to solve the same problem in
which the claimed invention is directed. Indeed, the Supreme Court has
stated that it is error to “look only to the problem the patentee [or applicant]
was trying to solve.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420
(2007). Thus, Appellant’s contentions regarding improving bioavailability
and increasing the solubility of iron (Br. 7) are largely irrelevant. The fact
that Appellant may have “recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise [have been] obvious.”
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
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Moreover, we find the Examiner provides a well-reasoned basis,
which is supported by a preponderance of the evidence in the record, to
evince why one of ordinary skill would have combined the teachings of Ito
and Bortz to arrive at Appellant’s claimed invention. Ans. 3–4. See also
KSR, 550 U.S. at 420 (2007) (explaining that any need or problem known in
the art can provide a reason for combining the elements in the manner
claimed).
Appellant’s disagreement as to the Examiner’s factual findings and
reasoning for combining the references, without more, is insufficient to
establish reversible error. Cf. SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006) (“[M]ere statements of disagreement .
. . as to the existence of factual disputes do not amount to a developed
argument.”).
Accordingly, we affirm the Examiner’s rejection of claims 1–11 and
13 under 35 U.S.C. § 103(a) as obvious over the combination of Ito and
Bortz.
CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
1–11, 13 § 103(a)
Ito, Bortz
1–11, 13
Overall
Outcome
1–11, 13

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).
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AFFIRMED