Ex Parte Akashe et al

Board of Patent Appeals and Interferences

Oct 31, 2005

10377474 (B.P.A.I. Oct. 31, 2005)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte AHMAD AKASHE
and
STEVEN E. HILL

Appeal No. 2005-2629
Application No. 10/377,474

ON BRIEF

Before KIMLIN, PAK and OWENS, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20.
Claims 1 and 13 are illustrative:
1. A method to reduce the rate of oxidation of omega-3 or
omega-6 polyunsaturated lipids in an aqueous emulsion, the method
comprising blending soy protein into the emulsion in an amount
effective for slowing the rate of oxidative rancidity of the
omega-3 or omega-6 polyunsaturated lipid in the emulsion.
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Application No. 10/377,474
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13. An aqueous emulsion comprising
an omega-3 or omega-6 polyunsaturated lipid; and
at least about 0.5 percent soy protein, the amount of
soy protein in the emulsion effective for reducing the oxidation
of the omega-3 or omega-6 polyunsaturated lipids by at least 8
times as compared to a control emulsion stored for about the same
time and at about the same temperature with the same amount of
omega-3 or omega-6 lipids, wherein the control emulsion does not
have an oxidation stabilizer.
The examiner relies upon the following references in the
rejection of the appealed claims:
Chang et al. (Chang) 5,077,069 Dec. 31, 1991
Cope et al. (Cope) 5,700,782 Dec. 23, 1997
Blauel et al. (Blauel) 5,536,523 Jul. 16, 1996
Appellants' claimed invention is directed to a method for
reducing the rate of oxidation of omega-3 or omega-6 poly-
unsaturated lipids in an aqueous emulsion. The method entails
adding an effective amount of soy protein to the emulsion. The
claims are also directed to the stabilized emulsion itself.
According to appellants, the claimed invention allows "for the
formulation of food products containing healthful functional
ingredients, such as the omega-3 or omega-6 polyunsaturated
lipids, and have an extended shelf life that is feasible for
commercial applications and consumption" (page 3 of principal
brief, last paragraph).
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Appealed claims 1-18 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Cope. Claims 1-18 also stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Cope in view
of Chang. Claims 19 and 20 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Cope in view of either Blauel
alone, or in further combination with Chang.
Appellants do not separately argue any of the claims on
appeal. Accordingly, claims 1-18 stand or fall with claim 1, and
claims 19-20 stand or fall together.
We have thoroughly reviewed each of appellants' arguments
for patentability. However, we find that the examiner's
rejections are well-founded and in accordance with current patent
jurisprudence. Accordingly, we will sustain the examiner's
rejections for essentially those reasons expressed in the Answer,
and we add the following primarily for emphasis.
We consider first the examiner's § 102 rejection over Cope.
Appellants do not dispute the examiner's factual determination
that Cope, like appellants, describes an aqueous emulsion
comprising an omega-3 polyunsaturated lipid and soy protein, nor
do appellants challenge the examiner's calculations which
demonstrate that the emulsions of Cope comprise concentrations of
Appeal No. 2005-2629
Application No. 10/377,474
1 Please see pages 10 and 11 of the Examiner's Answer.
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the omega-3 polyunsaturated lipids and soy protein in amounts
taught in the present specification.1 Appellants' specification
discloses that "the emulsion of the invention comprises from
about 0.1 to about 50 percent polyunsaturated omega-3 or omega-6
lipids and from about 0.5 to about 5 percent soy protein" (see
sentence bridging pages 4 and 5). Consequently, since Cope
describes aqueous emulsions that comprise concentrations of
omega-3 polyunsaturated lipids and soy protein that are disclosed
by appellants to reduce the rate of oxidation of the lipids, we
find it reasonable to conclude that the soy protein-containing
aqueous emulsions of Cope reduce the rate of oxidation of the
omega-3 polyunsaturated lipid component of the emulsion. It is
well settled that when a prior art composition reasonably appears
to be substantially the same as a claimed composition, it is
eminently fair to place upon an applicant the burden of proving
that the prior art composition does not possess characteristics
attributed to the claimed composition. In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
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In the present case, while appellants make the argument that
the emulsions of Cope contain components that are not recited in
the appealed claims, appellants have advanced no compelling
rationale, let alone objective evidence, which demonstrates that
the soy protein of Cope would be rendered ineffective as an anti-
oxidant by the components of the reference composition. As
pointed out by the examiner, appealed claim 1 does not quantify
the amount of reduction in the rate of oxidation. Moreover, the
claims on appeal, by virtue of using "comprising," do not
preclude the presence of additional components which are not
recited. Since the USPTO does not have the facilities and
wherewithal to test the properties of prior art compositions, it
is fair to place upon appellants the burden of establishing that
the emulsions of Cope do not exhibit a reduction in the rate of
oxidation of the lipids due to the presence of the soy protein.
Appellants maintain that the formulation of Cope is not identical
with the composition of the appealed claims. However, it is not
necessary that the compositions be identical in order to fairly
place upon appellants the burden of demonstrating that the soy
protein of Cope does not reduce the rate of oxidation of the
omega-3 polyunsaturated lipid.
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Appellants also contend that "given the fact that soy
protein is only an optional ingredient, such option suggests that
the levels of the soy protein in Cope may not effect [sic,
affect] the stability of the composition" (page 11 of principal
brief, third paragraph). However, as noted by the examiner, Cope
exemplifies an aqueous emulsion comprising soy protein.
Appellants rely upon Examples 3 and 4 of the present
specification to demonstrate that soy protein does not exhibit an
anti-oxidative effect in all compositions. Example 3 shows that
soy protein has no anti-oxidative effect when added to bulk oil
rather than an emulsion, whereas Example 4 "shows that the soy
protein has limited antioxidative effect without naturally
occurring isoflavones" (page 3 of Reply Brief, last paragraph).
However, these examples are not probative to the issue of whether
the soy protein of Cope exhibits an anti-oxidative effect on the
disclosed aqueous emulsions which comprise omega-3 poly-
unsaturated lipids.
Turning to the § 103 rejection of claims 1-18 over Cope in
view of Chang, it logically follows that our rationale in support
of sustaining the examiner's § 102 rejection over Cope is also
applicable to affirming the examiner's § 103 rejection.
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Regarding the § 103 rejection of claims 19 and 20 over the
combined teachings of Cope, Blauel and Chang, we agree with the
examiner that Blauel evidences the obviousness of using soy
protein in the claimed range of about 0.5 to about 5% of the
emulsion. Blauel discloses concentrations of soy protein within
the claimed range which stabilize an aqueous emulsion comprising
nutritionally desirable omega-3 fatty acids. Accordingly, we
concur with the examiner that one of ordinary skill in the art
would have found it obvious to use the claimed amounts of soy
protein in the aqueous emulsions of Cope for the purpose of
stabilizing the emulsions. It is not necessary for a finding of
obviousness that the prior art also teach the effect of reducing
the rate of oxidation of the omega-3 polyunsaturated lipids.
Appellants have not established that the prior art use of soy
protein to stabilize the emulsion would not also bring about the
anti-oxidant effect. Appellants' argument that Blauel does not
teach that the soy protein isolate would be effective as an anti-
oxidant does not address the thrust of the examiner's rejection.
As a final point, we note that appellants base no argument
upon objective evidence of nonobviousness, such as unexpected
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results, which would serve to rebut the prima facie case of
obviousness established by the examiner.
In conclusion, based on the foregoing and the reasons well-
stated by the examiner, the examiner's decision rejecting the
appealed claims is affirmed.
AFFIRMED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Administrative Patent Judge )
ECK:clm
Appeal No. 2005-2629
Application No. 10/377,474
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