Ex Parte Bubnis et al

Board of Patent Appeals and Interferences

May 9, 2011

11090486 (B.P.A.I. May. 9, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM BUBNIS, RICHARD COTTER,
PAUL W. HERMAN, JUDITH MOREINES, SCOTT W. POXON,
BRUCE W. SUTTON, JEFFREY V. VERNON,
DENISE L. WALTERS, MICHAEL G. WILLIAMS,
and NEIL WITTENBERG
__________

Appeal 2010-001552
Application 11/090,486
Technology Center 1600
__________

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

PRATS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellants have requested rehearing of the decision entered February
25, 2011 (“Decision”), in which we affirmed the Examiner’s rejection of
claims 34-58 as obvious. The request for rehearing is denied.

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DISCUSSION
In requesting rehearing, Appellants argue that
at least claim 54 is not obvious in light of the cited references
because the order of mixing of ingredients of the invention, in
particular the mixing of phytosterol and silicon dioxide prior to
combination with at least one additional nutrient, is not taught
in any of the asserted references and is a unique limitation of
claim 54.

(Req. Reh’g 2.) Thus, Appellants urge, our Decision “overlooked the unique
limitations regarding the order of mixing of ingredients of pending claim 54
which was extensively discussed during the oral hearing” (id. at 3).
Appellants’ arguments regarding claim 54 do not persuade us that our
Decision misapprehended or overlooked any points Appellants argued in
their Appeal Brief.
1
At the outset, we first note that Appellants appear to
seek in the rehearing request to rely on statements made at oral argument,
but not made in their Appeal Brief.
However, “[a]t the oral hearing, appellant may only rely on evidence
that has been previously entered and considered by the primary examiner
and present argument that has been relied upon in the brief or reply brief
except as permitted by paragraph (e)(2) of this section.” 37 C.F.R. §
41.47(e)(1). While paragraph (e)(2) allows presentation of new argument
directed to recent decisions by this Board or a Federal Court, Appellants’
arguments are not directed to such matters.
As to claim 54, we acknowledge that it recites a product-by-process –
a phytosterol-containing nutritional supplement in tablet form that also

1
Appeal Brief entered March 27, 2008 (“App. Br.”). Appellants did not file
a Reply Brief.
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contains multivitamins and/or multi-minerals, obtained by a process
“wherein the phytosterol is mixed with absorbent to at least partially coat the
phytosterol prior to combination with at least one additional nutrient selected
from the group consisting of vitamins, minerals and combinations thereof . .
. .” (App. Br. 85.)
We are not persuaded that our Decision misapprehended or
overlooked any argument that the order of combining ingredients in claim 54
was unique as compared to the other claims separately argued. In arguing
claim 54, Appellants urged that the claimed “partially coat[ing]” feature
required coating the phytosterol with absorbent before combination with
other ingredients (see App. Br. 59-60 (“As Dr. Poxon’s Declaration
discusses in detail on pages 4 and 5, inclusion of silicon dioxide per se does
not eliminate the agglomeration of phytosterol that generates processing and
tablet dissolution problems. The phytosterol particles should be at least
partially coated early in the process to avoid spontaneous agglomeration.”).
However, rather than suggesting that the order of combining
ingredients was a feature unique to claim 54, Appellants instead presented
essentially identical arguments with respect to each of the nine other
separately argued groups, urging that the “partially coating” feature in other
claims similarly requires combining phytosterol and silicon dioxide
absorbent before adding other ingredients (see id. at 9, 17, 25, 34, 42, 51, 59,
67, 76). Appellants reiterate these same points in their Request for
Rehearing (see Req. Reh’g 3-4).
Rather than overlooking those arguments, our Decision directly
addressed them (see Decision 19):
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While it is unclear what specific portions of pages 4 and
5 of the Declaration Appellants are referring to, we note Dr.
Poxon’s statement on page 6 of the Declaration, that in his
opinion it is preferable to mix the silicon dioxide and
phytosterol together before mixing in the other tablet
ingredients, so as to ensure that the silicon dioxide partially
coats the phytosterol, thus avoiding tableting problems and
ensuring timely disintegration in the subject’s gut (FF 20).

Thus, as the Decision explains, the scope of Appellants’ claims is
broad, with the “partially coating” limitation encompassing simple mixing of
the phytosterol with the silicon dioxide absorbent, and also encompassing
contacting very small amounts of absorbent with relatively large amounts of
phytosterol (Decision 19-20). Given that Sorkin described absorbent
amounts comparable to those described in Appellants’ Specification and the
Poxon Declaration, we explained that we were not persuaded that Appellants
had shown that the product suggested by the cited references would fail to
have the functional and structural properties that result from mixing the
absorbent and phytosterol before mixing with other ingredients (see id. at
20-21). We therefore concluded:
While Appellants urge that making [the Examiner’s
asserted] combination [of Cooper and Sorkin] would not
produce a composition in which the phytosterols would be
partially coated with silicon dioxide, nor would it have resulted
in a composition disintegrable in a user’s gastrointestinal tract,
that argument is not supported by any clear comparison
between claim-encompassed compositions and prior art silicon
dioxide-containing compositions.

(Id. at 21-22.)

In the instant case, we note that claim 54 requires only that the
phytosterol be partially coated with the absorbent “prior to combination with
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at least one additional nutrient” (App. Br. 85). Thus, claim 54 encompasses
a product made by a phytosterol coating step in which all ingredients of the
composition, except one of the vitamins and minerals, are present in the
coating mixture. We are not persuaded that the cited references fail to
suggest a product having the properties resulting from that process. Thus, as
the Decision points out, Appellants’ arguments in this regard are undermined
by the scope of the subject matter claimed.
Appellants now urge that the smaller amount of phytosterols used in
Sorkin’s tablets does not suggest the 800 milligram daily dosage recited in
claim 54:
The Examiner combined the Cooper reference with the
Sorkin reference which discloses a composition containing
phytosterol or policosanol. Sorkin’s disclosed tablet
formulations contain only 250 mg of “CHOLESTATIN” which
contains a minimum of 88% phytosterols; whereas, Appellants’
claimed formulation contains at least 800 mg per daily dosage.
Since Sorkin’s tablet formulation did not contain as much
phytosterol as the Appellants’ tablet formulation, it is likely that
Sorkin did not have to solve the phytosterol agglomeration
problem.

(Req. Reh’g 5.) Appellants do not, however, explain where this precise
argument was previously presented, such that our Decision may have
overlooked it. See 37 C.F.R. § 41.52(a)(1) (“Arguments not raised in the
briefs before the Board and evidence not previously relied upon in the brief
and any reply brief(s) are not permitted in the request for rehearing except as
permitted by paragraphs (a)(2) and (a)(3) of this section.”).
Moreover, Appellants’ argument again ignores the scope of claim 54,
which does not require the 800 mg daily phytosterol dosage to be present in
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a single tablet, but instead expressly recites that the composition can be
formulated into a plurality of “tablets” (App. Br. 85).
In any event, we are not persuaded that the Decision overlooked the
claimed phytosterol dosage limitations (see Decision 17 (“As to phytosterol
dosages, we note Sorkin’s disclosure that its tablet, which contains 250 mg
phytosterol, was suitably administered three times daily (FF 27), and also
note the Specification’s disclosure that 800 mg was known to be a suitable
daily phytosterol dosage (FF 1).”)).
Appellants also argue that our Decision “misapprehended the
disclosure of the Sorkin reference (U.S. Patent No. 6,197,832) in its
ANALYSIS when the Board stated . . . that Sorkin was able to form tablets;
however, Appellants assert that there is no evidence that Sorkin actually
formed tablets” (Req. Reh’g 6).
Specifically, Appellants urge, “in the absence of any description of the
process for preparing the tablets or any data describing the physical
properties of the tablets, there is no evidence that Sorkin actually prepared
tablets” (id. at 7). Thus, Appellants reason, “[w]ithout proof that Sorkin
actually prepared tablets, there is no basis for the Board’s conclusion that
simply mixing the phytosterol and silicon dioxide together resulted in partial
coating and that Sorkin formed a tablet containing phytosterols” (id.).
Appellants do not explain where this argument was previously
presented, such that our Decision may have overlooked it.
As to evidence that Sorkin made a tablet that contained a silicon
dioxide absorbent and phytosterols, we note that Sorkin expressly describes
a composition containing those ingredients as a “Tablet Formula” (Sorkin,
col. 3, l. 34). In contrast, Appellants have pointed to no evidence suggesting
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that an ordinary artisan lacked a reasonable expectation that a tablet could be
formed from the ingredients in Sorkin’s tablet formula. We are therefore not
persuaded that our Decision overlooked or misapprehended any point of law
or fact in this regard.
In sum, Appellants’ arguments do not demonstrate that rehearing is
proper in this appeal. While Appellants disagree with the Decision’s
findings and conclusions, Appellants have not shown that the Decision failed
to appreciate or adequately address any arguments Appellants presented.
Thus, because Appellants’ arguments do not persuade us that the Decision of
February 25, 2011 misapprehended or overlooked any point of fact or law,
we decline to modify our original Decision.

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

REHEARING DENIED

FCP

cdc