Ex Parte Catani et al

Board of Patent Appeals and Interferences

Mar 3, 2010

11128501 (B.P.A.I. Mar. 3, 2010)

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
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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.
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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.
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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
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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
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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
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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.
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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.
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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
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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
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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.
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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

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