Ex Parte Becker et al

Board of Patent Appeals and Interferences

Apr 30, 2009

10159950 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NATHANIEL T. BECKER, SCOTT WILLIAM CAPECI,
EDWARD M. CONCAR, GISELLE JANSSEN, ALISHA JARNAGIN,
GENEVIEVE CAGALAWAN KIPTE, ERIC LIPPAY, EDGAR MANUEL
MARIN-CARRILLO, AYROOKARAN J. POULOSE, MICHAEL
STANFORD SHOWELL, LANDON STEELE, SUZANNE STONER, and
DOREEN C. VICTORIA
____________

Appeal 2009-0608
Application 10/159,950
Technology Center 1700
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Decided:1 April 30, 2009
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-0608
Application 10/159,950

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 54-62, 64-66, and 68-80. We have jurisdiction
under 35 U.S.C. § 6.
We AFFIRM.
Statement of the Case
Appellants claim an effervescent composition comprising an enzyme
and a substrate “wherein the effervescent composition generates a consumer
recognizable signal upon contacting an environment from which generation
of a consumer recognizable signal is desired” (claim 54). Appellants also
claim a method of producing an effervescent composition “comprising the
steps of identifying an enzyme and substrate combination adapted for
generation of a consumer-recognizable signal and combining the enzyme
and substrate” (claim 78).
Representative claims 54 and 78 read as follows:
54. An effervescent composition comprising an effervescent system
comprising an enzyme and a substrate, wherein the effervescent composition
generates a consumer recognizable signal upon contacting an environment
from which generation of a consumer recognizable signal is desired.

78. A method of producing an effervescent system or
composition comprising the steps of identifying an enzyme and substrate
combination adapted for generation of a consumer-recognizable signal and
combining the enzyme and substrate.

The prior art set forth below is relied upon by the Examiner as
evidence of anticipation and obviousness:
Ogden 4,399,744 Aug. 23, 1983
Herbots 6,734,155 B1 May 11, 2004
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Appeal 2009-0608
Application 10/159,950

The Examiner rejects claims 54, 56, 60, 68, 71, 75, and 78 under 35
U.S.C. § 102(b) “as being clearly anticipated by Ogden (US 4,399,744) and
evidenced by General Science Archive found at
http://www.newton.dep.anl.gov/askasci/gen01/gen01340.htm.”2 (Ans. 3).
Additionally, the Examiner rejects all appealed claims under 35
U.S.C. § 103(a) as being unpatentable over Herbots.
Appellants’ arguments concerning these rejections are directed to
independent claims 54 and 78 only (App. Br. 4, 8). Accordingly, we will
focus on these independent claims in assessing the merits of the Examiner’s
rejections.
Issues
Have Appellants shown error in the Examiner’s finding that Ogden
anticipates claims 54 and 78 by arguing that Ogden’s composition does not
generate a consumer recognizable signal?
Have Appellants shown error in the Examiner’s determination that
claims 54 and 78 are unpatentable over Herbots via the argument that
Herbots’ composition is not effervescent and does not generate a consumer
recognizable signal?
Findings of Fact
Ogden discloses a beverage carbonator device comprising a container
12 having a spigot 16 and a pressure gauge 250 (figs. 1-4, col. 5, ll. 40-49,
col. 9, ll. 36-40). Within container 12 is tank 28 which generates
carbonating gas (i.e., carbon dioxide) via a reaction between sugar and yeast
(i.e., enzyme) (figs. 1-4, col. 5, ll. 50-58, col. 10, ll. 33-43, col. 15, ll. 35-46).

2 In our disposition of this rejection, we have no need to rely upon or discuss
the General Science Archive referred to by the Examiner.
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Appeal 2009-0608
Application 10/159,950

Herbots discloses cleaning compositions comprising an enzymatic
system (i.e., an enzyme and a substrate therefor) such as an effervescent
denture cleansing tablet (Abstract, col. 6, ll. 38-60, col. 63, ll. 49-66).
Principles of Law
The discovery of a new property or use of a previously known
composition, even when that property and use are unobvious from the prior
art, cannot impart patentability to claims to the known composition. In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
Analysis
Concerning the § 102 rejection, Appellants argue that, “[a]s Ogden
does not disclose a consumer recognizable signal, it cannot anticipate claims
54, 78 or their respective dependent claims” (App. Br. 7; see also Reply Br.
3-4). This argument is unpersuasive for two reasons.
First, claims 54 and 78 do not require generation of a consumer
recognizable signal. This is because the recitation in these claims regarding
generation of such a signal constitutes merely a statement of intended use for
the composition defined by the claims. As indicated above, it is an
established legal principle that the discovery of a new use for a previously
known composition, even when the use is non-obvious from the prior art,
cannot impart patentability to claims directed to the known composition.
Second, during use, Ogden’s composition would generate a number of
consumer recognizable signals. For example, the generation of carbonation
gas (i.e., carbon dioxide) by Ogden’s composition would be signaled by (1)
pressure gauge 250, (2) the pressurized (i.e., via carbon dioxide) dispensing
of beverage from spigot 16, and (3) the carbonated taste of the dispensed
beverage.
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Appeal 2009-0608
Application 10/159,950

As for the § 103 rejection over Herbots,3 Appellants argue that
Herbots “does not disclose an effervescent composition or system” (App. Br.
9). This is incorrect. Herbots expressly discloses an effervescent
composition (col. 63, ll. 49-66) as pointed out in the findings of fact set forth
above. According to Appellants, Herbots also is deficient because “there is
no consumer recognizable signal” (App. Br. 9). However, for reasons
explained earlier, claims 54 and 78 do not require generation of a consumer
recognizable signal. In any event, the effervescence generated by Herbots’
composition would be visually recognizable by a consumer.
Conclusions of Law
Appellants have not shown error in the Examiner’s finding that Ogden
anticipates claims 54 and 78 by arguing that Ogden’s composition does not
generate a consumer recognizable signal.
Appellants have not shown error in the Examiner’s determination that
claims 54 and 78 are unpatentable over Herbots via the argument that
Herbots’ composition is not effervescent and does not generate a consumer
recognizable signal.
Accordingly, we sustain the Examiner’s § 102 rejection of claims 54,
56, 60, 68, 71, 75, and 78 as being anticipated by Ogden and the Examiner’s
§ 103 rejection of all appealed claims as being unpatentable over Herbots.
Order
The decision of the Examiner is affirmed.

3 For clarification, we point out that the Examiner identifies no deficiency in,
and proposes no modification of, Ogden with respect to independent claims
54 and 78. The Examiner addresses deficiencies in and modifications of
Herbots only with respect to certain dependent claims (Ans. 3-7).
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Appeal 2009-0608
Application 10/159,950

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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