Ex Parte Artisa et al

Board of Patent Appeals and Interferences

Jul 20, 2011

10923000 (B.P.A.I. Jul. 20, 2011)

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.
10/923,000 08/23/2004 Joseph D. Artisa 103022.58743C1 2785
23911 7590 07/20/2011
CROWELL & MORING LLP
INTELLECTUAL PROPERTY GROUP
P.O. BOX 14300
WASHINGTON, DC 20044-4300
EXAMINER
FUBARA, BLESSING M
ART UNIT PAPER NUMBER
1613
MAIL DATE DELIVERY MODE
07/20/2011 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JOSEPH D. ARTISA and CATHERINE JEN
__________

Appeal 2010-007853
Application 10/923,000
Technology Center 1600
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
for reducing a subject‟s cholesterol/HDL ratio. The Examiner has rejected
the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
Appeal 2010-007853
Application 10/923,000

2
STATEMENT OF THE CASE
Claims 26-29 and 51 are on appeal (Supp. App. Br.
1
2).
2
We will
focus on claim 26, the only independent claim on appeal, which reads as
follows:
26. A method for reducing the cholesterol/HDL ratio in a subject
comprising administering to a subject in need thereof an amount of
α-cyclodextrin wherein the amount of α-cyclodextrin administered to said
subject and fat ingested daily by said subject is in a ratio of about 1:20 to
about 1:3 w/w, and wherein said amount of α-cyclodextrin is sufficient to
reduce the cholesterol/HDL ratio in said subject.
Claims 26-29 stand rejected under 35 U.S.C. § 103(a) as obvious over
Suzuki (JP 60-094912 A, May 28, 1985) (Ans. 3).
Claims 26 and 51 stand rejected under 35 U.S.C. § 103(a) as obvious
over Suzuki in view of JP '419 (JP 06-343419, Dec. 20, 1994) (Ans. 6).
Claims 26-29 and 51 stand rejected under 35 U.S.C. § 103(a) as
obvious over JP '256 (JP 06-269256 A, Sep. 27, 1994) (Ans. 6).
I
The Examiner relies on Suzuki for disclosing “administering
α-cyclodextrin containing composition to a subject,” that “the α-cyclodextrin
is present in the composition in amounts of 10-40%,” and that the
α-cyclodextrin administration “reduces neutral fats, prevents and treats
hyper triglyceremia, arteriosclerosis and fat/triglyceride-accumulation in the
liver” (Ans. 4). The Examiner find that “Suzuki does not disclose the ratio
of the α-cyclodextrin to the ingested fat,” but that Appellants “have not

1
Response to Notice of Non-Compliant Appeal Brief.
2
Claims 1-12, 18-25, 30-50, and 52-61 are also pending but have been
withdrawn from consideration (Supp. App. Br. 2).
Appeal 2010-007853
Application 10/923,000

3
shown that the specific ratio recited provides unexpected results to the
claimed method where both the prior art and the instant claims administer
α-cyclodextrin” (id.).
In rejecting claims 26 and 51, the Examiner additionally relies on
JP '419 for disclosing a non-farinaceous food product (id. at 6), as recited in
claim 51. The Examiner does not argue that JP '419 discloses the claimed
ratio of the α-cyclodextrin to the ingested fat (id.)
Appellants argue that nothing in Suzuki suggests “that they should
carry out the claimed process, i.e., reducing cholesterol/HDL ratios by
administering α-cyclodextrin to the subject in an amount to achieve a
particular ratio with the subjects‟ daily ingested fat” (App. Br. 9). In
particular, Appellants argue that Suzuki “teaches one of skill in the art to
administer α-cyclodextrin to a subject at 10% or more of the subject‟s total
diet to achieve the desired results” (id.). Appellants also argue that they
“have provided evidence that their method uses far less than the „10% or
more‟ α-cyclodextrin that Suzuki . . . teaches is necessary „to achieve the
objective of the [their] invention” (id.).
In addition, Appellants argue that JP '419 “does not teach or suggest
administering α-cyclodextrin to a subject in an amount to achieve a
α-cyclodextrin:ingested fat ratio of 1:3 to 1:20” (id. at 15).
Issue
Has the Examiner set forth a prima facie case that it would have been
obvious, based on the disclosures of Suzuki, alone or in combination with
JP '419, to administer α-cyclodextrin such that the amount of α-cyclodextrin
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Application 10/923,000

4
administered to a subject and the fat ingested daily by the subject is in a ratio
of about 1:20 to about 1:3 w/w?
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) (citation omitted).
Analysis
We agree with Appellants that the Examiner has not set forth a prima
facie case of obviousness. Suzuki discloses that α-cyclodextrin should be
used at 10% or more to achieve the objective of their invention (Suzuki 7
3
).
The Examiner has not adequately explained why it would have been obvious
to use lower amounts, nor has the Examiner adequately explained how the
use of amounts disclosed in Suzuki would result in a weight ratio of
α-cyclodextrin to daily ingested fat of about 1:20 to about 1:3. In addition,
the Examiner has not shown that JP '419 overcomes this deficiency.
Conclusion
The Examiner has not set forth a prima facie case that it would have
been obvious, based on the disclosures of Suzuki, alone or in combination
with JP '419, to administer α-cyclodextrin such that the amount of
α-cyclodextrin administered to a subject and the fat ingested daily by the
subject is in a ratio of about 1:20 to about 1:3 w/w. We are therefore
constrained to reverse the obviousness rejections in view of these references.

3
The page citation to Suzuki is to the translation of record.
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Application 10/923,000

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II
The Examiner relies on JP '256 for teaching a “food product that
contains alpha cyclodextrin and fat in a ratio of 0.2 to 2 wt% cyclodextrin to
35 to 55% wt% fat (which is 1:175 to 1:275 for the lower end of 0.2% and
1:17.5 to 1:27.5 at the higher end of 2%)” (Ans. 7). The Examiner finds that
the “difference between [JP '256] and the claim 26 is the ratio of 1:20 to 1:3
for the claim 26 and a ratio of 1:17.5 to 1:27.5 for the 2% cyclodextrin” (id.).
Appellants argue that JP '256 “does not disclose administering its food
product to a subject such that a ratio of α-cyclodextrin to the subject‟s daily
ingested fat is 1:20 to 1:3” (App. Br. 16). We agree.
JP '256 discloses a creamy composition used as a decoration topping
that contains 35-55 wt% oil and fat and 0.2-2 wt% cyclodextrin (JP '256,
Abstract). These amounts may suggest a food product having a cyclodextrin
to fat ratio between about 1:20 to about 1:3 w/w. However, the Examiner
has not shown that JP '256 teaches or suggests administering cyclodextrin
such that the amount of α-cyclodextrin administered to a subject and the fat
ingested daily by the subject is in a ratio of about 1:20 to about 1:3 w/w. We
will therefore also reverse the obviousness rejection over JP '256.

REVERSED

cdc