Ex Parte Catani et alDownload PDFBoard of Patent Appeals and InterferencesMar 3, 201011128501 (B.P.A.I. Mar. 3, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _________________ Ex parte STEVEN J. CATANI, CAROLYN M. MERKEL, AND NICHAOLAS M. VERNON Appellants ________________ Appeal 2009-009720 Application 11/128,501 Technology Center 1600 _________________ Decided: March 4, 2010 _________________ Before RICHARD TORCZON, SALLY GARDNER LANE, AND MICHAEL P. TIERNEY, Administrative Patent Judges. LANE, Administrative Patent Judge. DECISION ON APPEAL I. STATEMENT OF THE CASE The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of Appellants’ claims 17-30, the only claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2009-009720 Application 11/128,501 2 Claims 17-30 were rejected under 35 U.S.C. § 102(b) and 35 U.S.C. § 103(a) in view of Jackson, US patent 4,918,182, issued 17 April 1990 (“Jackson”).1 The Appellants argued separately for the patentability of claims: (1) 17-22 (2) 23-28 (3) 29 (4) 30 We focus on claims 17, 23, 29, and 30. See 37 C.F.R. § 41.37(c)(1)(vii). II. FINDINGS OF FACT The record supports the following findings of fact as well as any other findings of fact set forth in this Decision by a preponderance of the evidence. Representative claims: 1. Appellants’ claim 17 is directed to: A composition comprising stable sucralose crystals, each of at least a portion of the sucralose crystals comprising a plurality of crystalline sucralose domains. (App. Br., Claims App’x). 2. Claim 30 depends on claim 17 and requires that the crystals having the plurality of crystalline domains comprise “agglomerates of sucralose”. 3. Independent claim 23 is directed to: 1 “Jackson” appears to have the same real-party-in-interest as the application on appeal. Appeal 2009-009720 Application 11/128,501 3 A composition comprising stable sucralose crystals, wherein the sucralose crystals are generally tapered. 4. Independent claim 29 is directed to “stable sucralose crystals” prepared by a recited method. Appellants’ specification: 5. According to Appellants’ specification, crystals having a plurality of domains are those that result from additional crystal growth on existing crystals or the agglomeration of crystals. (Specification at 16:1-7). 6. Appellants’ crystal composition is said to be stable. (Specification at 1:1-5). 7. Appellants’ crystal composition is said to have a particle size less than from about 30 microns to about 150 microns, more typically from about 40 microns to about 100 microns in 90% of the composition. (Specification at 14:6-19). 8. The other 10% of the composition is said to have a particle size less than from about 3 microns to about 40 microns, more typically from about 4 microns to about 9 microns. (Specification at 14:10-11). Jackson: 9. Jackson teaches a sucralose crystal composition that is said to be stable. (Jackson at 1:33-36). 10. Jackson teaches that crystals of a reduced size and limited size distribution account for the enhanced stability. (Jackson at 1:33-36). 11. Jackson teaches crystals of a mean particle size of “desirably no more than 10 microns” (Specification at 1:35-38),“preferably 5 microns or less at a maximum particle size of at most 10 microns” and “most preferably Appeal 2009-009720 Application 11/128,501 4 2 to 3 microns at a maximum particle size of at most 6 microns.” (Jackson at 2:20-24). 12. Jackson teaches that the particles are formed by jet milling that uses fluid energy to break larger crystals into fine particles. (Jackson at 2:3-6). 13. Appellants’ real party-in-interest is said to be Tate and Lyle Technology Ltd. (App. Br. 1). Issues Has the Examiner set forth a reasonable basis for finding that the sucralose crystal composition of Jackson is the same as the claimed sucralose crystal composition? Have the Appellants’ presented evidence sufficient to show that the claimed sucralose crystal composition is different from the Jackson sucralose crystal composition? Analysis: Claims 17 and 30 Appellants’ claims are directed to a composition comprising sucralose crystals. In claim 17 and claim 30 at least some of the crystals within the composition comprise a plurality of sucralose domains. Crystals having a plurality of domains are those that result from additional crystal growth on existing crystals or the agglomeration of crystals. (Specification at 16:1-7). In claim 30 there is a further requirement that some of the crystals comprise “agglomerates of sucralose.” The Examiner relied upon Jackson. Jackson teaches a sucralose crystal composition but does not recite explicitly that some of the crystals have a plurality of crystalline domains or agglomerates of sucralose. (Answer at 3-4). The Examiner found that the crystal composition of Appeal 2009-009720 Application 11/128,501 5 Jackson inherently contains crystals having a plurality of crystalline domains or agglomerates of sucralose noting that : (1) like Appellants, Jackson teaches that its sucralose crystalline composition is stable, and (2) Jackson teaches sucralose crystals having particle sizes that fall within the crystal sizes disclosed by Appellants. (Answer at 4). The Examiner reasoned that at least some of the crystals of Jackson would have a plurality of crystalline domains given their similarity to those claimed by Appellants. The Examiner has set forth a reasonable basis for the finding of inherency. Given the Examiner’s reasonable finding, it is Appellants’ burden to provide sufficient evidence to show that no portion of the crystals of Jackson’s crystal composition has a plurality of crystalline domains or agglomerates. In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971). (After the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to “prove that the subject matter shown to be in the prior art does not possess the characteristic relied on."). The Appellants argue that the Examiner has not provided evidence to show the existence of multiple domains or agglomerates in Jackson and thus that the Examiner’s position is based on a finding that some of the crystals of the Jackson composition “might” have a plurality of domains or agglomerates. Appellants argue that the Examiner has improperly shifted the burden to Appellants. (App. Br. at 5-6). While the Examiner explains that the PTO does not have the resources to undertake testing that would confirm the existence of a plurality domains in the Jackson crystals (Answer at 7-8), we do not understand the Examiner’s finding of inherency to be tentative as Appellant argues. We view the Examiner’s acknowledgement that the finding of inherency could Appeal 2009-009720 Application 11/128,501 6 be challenged with evidence comparing the claimed and Jackson compositions as a correct statement of the law and not as a concession or an improper shifting of the burden of proof. See In re Best, 562 F.2d 1252, 1254-55 (Where claimed and prior art products are identical or substantially identical the burden is upon Appellants to prove that the prior art products do not inherently possess the characteristics of the claimed product since the PTO is unable to perform the necessary comparative testing.) The Appellants direct us to the declaration of Dr. Warren L. Nehmer. 2 Dr. Nehmer, a research scientist for Tate and Lyle, the Appellants’ real- party-interest, testified that he has worked in the area of sucralose crystallization since early 2004. (Nehmer Declaration at ¶ 1). Dr. Nehmer testified that he compared photographs that show sucralose crystals prepared (1) “according to the present invention” (appendices 1a and 1b) and (2) by jet-milling sucralose needles prepared by conventional methods (appendices 2a and 2b). (Nehmer Declaration at ¶ 4). Dr. Nehmer testified that the photographs of the claimed composition show crystals having multiple domains and the photographs of the jet-milled crystals do not “show evidence of multiple crystalline domains within a single particle.” (Nehmer Declaration at ¶¶ 6 and 7). While Dr. Nehmer pointed out where he saw multiple domains in the photographs at appendices 1a and 1b, Dr. Nehmer did not explain 2 We refer to the 3 November 2006 declaration. It appears that a second declaration from Dr. Nehmer was filed on 18 January 2008, after the final rejection, but was not considered by the Examiner who found it to be untimely. (App. Br. at 10). The Appellants did not seek review of the decision not to enter the second declaration. We also have not considered the second declaration. Appeal 2009-009720 Application 11/128,501 7 sufficiently the basis for his conclusion that the jet-milled crystals do not “show evidence of multiple crystalline domains within a single particle.” In contrast to the discussion at paragraph 5 of his declaration where Dr. Nehmer discussed particular crystals and identified where he viewed multiple domains in appendices 1a and 1b, Dr. Nehmer did not discuss any of the particular crystals seen at appendices 2a and 2b or explain why the apparent clustering shown in those photographs does not show multiple domains or agglomerates. We further note Dr. Nehmer testified that the photographs at appendices 2a and 2b “do not show features analogous to those” in appendices 1a and 1b and do not “show evidence of multiple crystalline domains within a single particle.” (Nehmer Declaration at ¶¶ 6 and 7). Dr. Nehmer’s testimony could be interpreted to mean that Dr. Nehmer could not tell conclusively from the photographs at appendices 2a and 2b whether or not the crystals have multiple domains or agglomerates. Such an interpretation is reasonable and consistent with our own evaluation of the photographs given that: (1) due to crystal size differences between the claimed and jet-milled photographed crystals, the jet-milled crystals appear with much less detail than the claimed crystals3, and (2) the photograph at appendix 2b appears to show clustering and might reveal multiple domains if shown in more detail. 3 Appendices 1a and 2a are said to be photographs at a magnification of 150x. Appendices 1b and 2b are said to have to be photographs at a magnification of 800x and 2000x, respectively. (Nehmer Declaration at ¶ 4). Even given the higher magnification for photograph 2b, the particles appear in much less detail than in photograph 1b. Appeal 2009-009720 Application 11/128,501 8 The Examiner’s basis for finding inherency was reasonable. We are not convinced by Dr. Nehmer’s testimony or the Appellants’ arguments that the Examiner’s finding was in error. Based on the evidence before us, we find that Jackson anticipates the claimed invention and affirm the Examiner’s rejection of claims 17 and 30 under 35 U.S.C. § 102(b). As anticipation is the ultimate of obviousness, the subject matter of claims 17 and 30 is necessarily obvious and we affirm Examiner’s rejection of these claims under 35 U.S.C. § 103(a) as well. In re Paulsen, 30 F.3d 1475, 1481 (Fed. Cir. 1994). Analysis: Claims 23 Claim 23 is “a composition comprising stable sucralose crystals” that are “generally tapered.” Claims 23 does not require a plurality of sucralose domains. The Examiner found that the sucralose crystal composition of Jackson inherently anticipates the compositions of claim 23 and 29 for the same reasons that the Examiner found claims 17 and 23 to be anticipated. Again, despite Appellants’ arguments to the contrary, the Examiner has set forth a reasonable basis for the finding of inherency and thus it is upon Appellants to provide evidence to the contrary. Dr. Nehmer’s testimony as it pertains to claims 23 and 29 is no more convincing than as to claims 17 and 30. Dr. Nehmer stated that “[t]he particles shown in appendices 2a and 2b are not generally tapered, but are generally round.” (Nehmer Declaration at ¶ 7). Dr. Nehmer did not explain the basis for the conclusion that the particles are “not generally tapered.” For instance Dr. Nehmer did not Appeal 2009-009720 Application 11/128,501 9 explain what standard was used to determine if a particle is “tapered” or the distinction between “generally tapered” and “generally round.” The photograph at appendix 2b shows particles having a gradually decreasing width toward an end point. Dr. Nehmer did not explain why such particles are not considered “generally tapered.” Based on the evidence before us, we find that Jackson anticipates the claimed invention and affirm the Examiner’s rejection of claim 23 under 35 U.S.C. § 102(b). As anticipation is the ultimate of obviousness, the subject matter of claim 23 is necessarily obvious and we affirm Examiner’s rejection of these claims under 35 U.S.C. § 103(a) as well. Paulsen, 30 F.3d at 1481. Analysis: claim 29 Claims 29 is directed to “[s]table sucralose crystals” made by the recited method. Claim 29 does not require a plurality of sucralose domains. The Examiner reasonably found that Jackson inherently teaches the “stable sucralose crystal composition” of claim 29 even though Jackson does not teach the same method recited in claim 29. The Examiner reasoned that Jackson teaches stable sucralose crystals and that the size of the crystals of Jackson are within the range of sizes disclosed by Appellants. Again the Examiner explained that the PTO is not in the position to do the testing that would be required to confirm the crystal composition of Jackson is the same as the crystal composition that results from following the method of claim 29. When the prior art appears to provide a product identical to the product claimed, the patentee has the burden to bring forth evidence Appeal 2009-009720 Application 11/128,501 10 commensurate in scope with the claim to show that the products are different. In re Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983). The Appellants rely upon the declaration of Dr. Nehmer. However, we are not convinced by Dr. Nehmer’s testimony. As explained above with regard to claims 17 and 30, Dr. Nehmer did not explain adequately how he reached his conclusions regarding the differences between appendices 1a and 1b and appendices 2a and 2b. Moreover, a reasonable interpretation of Dr. Nehmer’s testimony is that Dr. Nehmer could not tell conclusively from the photographs at appendices 2a and 2b whether or not the crystals have multiple domains or agglomerates. Furthermore, Dr. Nehmer testified that the sucralose crystals shown in appendices 1a and 1b were “prepared according to the present invention.” (Nehmer Declaration at ¶ 4). Dr. Nehmer did not provide any detail of the preparation method. Appellants’ specification provides for variables within the claimed method steps and provides for multiple embodiments of the inventive method (See, e.g., Specification at 11:4-8 and 12:1-2). Without having benefit of further detail of the process used to produce the crystals show in appendices 1a and 1b, we cannot determine that the method of claim 29 is fairly reflective of the particular method used to make the crystals shown in appendices 1a and 1b. Based on the evidence before us, we find that Jackson anticipates the claimed invention and affirm the Examiner’s rejection of claims 29 under 35 U.S.C. § 102(b). As anticipation is the ultimate of obviousness, the subject matter of claim 29 is necessarily obvious and we affirm Examiner’s rejection of these claims under 35 U.S.C. § 103(a) as well. Paulsen, 30 F.3d at 148. Appeal 2009-009720 Application 11/128,501 11 III. ORDER Upon consideration of the record and for the reasons given, the rejection of claims 17-30 under 35 U.S.C. § 102(b) as being anticipated by Jackson is AFFIRMED; the rejection of claims 17-30 under 35 U.S.C. § 103(a) as being anticipated by Jackson is AFFIRMED; and FURTHER ORDERED that no time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED ak Ratnerprestia P.O. Box 980 Valley Forge, PA 19482 Copy with citationCopy as parenthetical citation