11057480 (B.P.A.I. Jul. 25, 2011)

Ex Parte Ahlgren et al

Board of Patent Appeals and InterferencesJul 25, 2011

11057480 (B.P.A.I. Jul. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte NILS WILLIAM AHLGREN, RONALD LEE DAHL, MONTE LEE FRIESEN, and ALEXANDER MARK SCHOBEL __________ Appeal 2010-007598 Application 11/057,480 Technology Center 1600 __________ Before DEMETRA J. MILLS, RICHARD M. LEBOVITZ, and MELANIE L. McCOLLUM, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2010-007598 Application 11/057,480 2 STATEMENT OF CASE The following claim is representative. 1. A chewable fiber composition comprising compressed granules, wherein said granules comprise a water-soluble dietary fiber and said fiber comprises guar gum having an average molecular weight between 15,000 and 35,000, and said granules have a size distribution of less than 10% by weight of granules having particle size larger than about 850 µm and less than 35% by weight of granules having particle size smaller than about 75 µm. Cited References Greenberg US 5,260,279 Nov. 9, 1993 Licari US 6,455,068 B1 Sept. 24, 2002 deVries et al. US 6,495,177 B1 Dec. 17, 2002 Heath et al. GB 2 030 583 A Oct. 2, 1978 Grounds of Rejection 1. Claims 1-5, 7, 9-10, and 12 are rejected under 35 U.S.C. § 103(a) for obviousness over Heath in view of Licari and Greenberg. FINDINGS OF FACT The findings of fact are set forth in the Answer at pages 3-9. Discussion ISSUE The Examiner concludes that Heath teaches granulates of guar gum consisting of particles having sizes within the range 100 to 1000µ with less than 5% by weight of the particles having a size below the lower limit (Abstract). These granulates can be made up in the form of tablets (Page 1, lines 119-121). Example 1 discloses the method for producing the guar Appeal 2010-007598 Application 11/057,480 3 gum granulates in a high speed horizontal mixing machine by spraying water onto the moving powder, heating the resulting granules, cooling the granules, sieving the granules to reject granules greater than 710µ or less than 300µ(Page 1, line 127 to Page 2, line 15). Example 2 discloses the method of preparing the guar gum granulates in a fluid bed drier (Page 2, lines 17-47). Heath does not expressly teach the average molecular weight of the guar gum. Licari teaches a chewable tablet with a dietary fiber (Col. 1, lines 9-15). Dietary fibers including guar gum and hydrolyzed guar gum (available from Taiyo Kagaku Co., Ltd) are disclosed as the low viscosity fiber components of the chewable composition (Col. 6, line 63 to Col. 7, line 23). Tableting procedures commonly known in the art are disclosed, along with excipients such as sorbitol (Col. 7, line 55 to Col. 8, line 9). Greenburg discloses a commercially available hydrolyzed guar gum (Taiyo Kagaku Co, Ltd) with a molecular weight of 20,000- 30,000 (Col. 2, lines 27-34). It would have been obvious to one of ordinary skill in the art at the time the invention was made to make a tablet with granulates of guar gum, as suggested by Heath, combine it with the use of a commercially available hydrolyzed guar gum with a molecular weight of 20,000-30,000, as taught by Licari and Greenburg, and produce the instant invention. One of ordinary skill in the art would do this because the hydrolyzed guar gum with a molecular weight of 20,000-30,000 is commercially available and Licari teaches that the hydrolysis of guar gum improves the organoleptic properties of the resulting material (Col. 7, lines 12-15). (Ans. 3-4.) Appellants argue that Heath teaches away from the combination suggested by the Examiner because it specifies that the fiber used “should form such a gel in less than about 5 minutes, i.e. shortly after consumption.” (App. Br. 11.) Appellants argue that partially hydrolyzed guar gum as Appeal 2010-007598 Application 11/057,480 4 taught in the Licari and Greenberg publications is not considered to be a guar gum that gels. Appellants argue that Heath teaches that quick gelling is required, so substitution of a non-gelling polymer would not reasonably be expected to be successful. The issue is: Does the cited prior art support a prima facie case of obviousness? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appeal 2010-007598 Application 11/057,480 5 If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900, 902 (Fed. Cir 1984). ANALYSIS Appellants argue that Heath teaches away from the combination suggested by the Examiner because it specifies that the fiber used “should form such a gel in less than about 5 minutes, i.e. shortly after consumption.” (App. Br. 11.) Appellants argue that partially hydrolyzed guar gum, as taught in Licari and Greenberg, is not considered to be a guar gum that gels. Appellants argue that Heath teaches that quick gelling is required, so substitution of a non-gelling polymer would not reasonably be expected to be successful. We are persuaded by Appellants’ argument. In particular, we do not find that the Examiner has explained why one of ordinary skill in the art would have used the size distribution of the gelling guar gum granules disclosed in Heath for the molecular weight sizes of the non-gelling hydroxylated guar gum disclosed in Licari and Greenberg. We also find that substitution of non-gelling hydroxylated guar gum disclosed in Licari and Greenberg for the completely gelling guar gum of Heath, would destroy the functional gelling properties of the gum granulates of Heath. In re Gordon, 733 F.2d at 902 . In view of the above, the rejection of the claims for obviousness is reversed. Appeal 2010-007598 Application 11/057,480 6 CONCLUSION OF LAW The cited references do not support the Examiner’s obviousness rejection. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). REVERSED cdc