Ex Parte Damak et al

Patent Trial and Appeal Board

Feb 12, 2016

11996935 (P.T.A.B. Feb. 12, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111996,935 07/28/2008
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
02/17/2016
FIRST NAMED INVENTOR
Sarni Damak
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3712036.00862 1859
EXAMINER
HOWARD, ZACHARY C
ART UNIT PAPER NUMBER
1646
NOTIFICATION DATE DELIVERY MODE
02/17/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMI DAMAK, JOHANNES LE-COUTRE,
CAROLE BEZENCON, and CHRISTINA CARTON!
Appeal2013-002810
Application 11/996,935
Technology Center 1600
Before JEFFREY N. FREDMAN, JOHN G. NEW, and
ROBERT A. POLLOCK, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a method
for identifying a compound that tastes like fat. The Examiner rejected the
claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
reverse.
1 Appellants identify the Real Party in Interest as N estec
S.A. (see App. Br. 2).
Appeal2013-002810
Application 11/996,935
Statement of the Case
Background
"Systems for screening compounds that elicit a fat taste but which are
not themselves fat are needed in the food industry. Such systems could be
used to identify compounds that can replace fat in foods thereby providing
healthier foods having fewer calories but that retain desirable flavor
characteristics" (Spec. i-f 3).
The Claims
Claims 18 and 20 are on appeal. Claim 18 is representative and is
reproduced below:
1. A method for identifying a compound that tastes like
fat, the method comprising:
cloning a gene that expresses a G-protein coupled
receptor 40 ("GPR40"),
expressing a cloned GPR40 protein in an isolated cell,
contacting the cell with a test compound that is not a
fat, determining whether a signal is generated in response to
the presence of the test compound as compared to the
absence of the test compound, and
identifying a test compound that generates a signal as
a fat replacer that has a fat taste or tastes like fat.
The Issue
The Examiner rejected claims 18 and 20 under 35 U.S.C. § 102(b) as
anticipated by Andrews2 (Ans. 2--4).
The Examiner finds that Andrews teaches the steps of "'cloning a
gene that expresses [GPR40]' and 'expressing a cloned GPR40 in an isolated
cell'"; a "screening method involv[ing] contacting the cells with a test
2 Andrews et al., WO 02/057783 A2, published July 25, 2002.
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Application 11/996,935
substance"; and "measuring changes in signal" (Ans. 2-3). The Examiner
finds that the "'identifying' step is simply a mental conclusion based on the
results of the comparison made in the 'determining' step" and concludes that
the "mental conclusion is merely an identification of an intended use" (Ans.
3).
Appellants contend that "that the use of 'any GPR40 agonist identified
by Andrews' would not necessarily identify the test compound as a fat
replacer that has a fat taste or tastes like fat" (Br. 11 ). Appellants contend
that "the Examiner admits 'Andrews does not teach identification of fat
replacers' and attempts to remedy this deficiency of Andrews with respect to
Claim 18 by disregarding the explicitly recited identifying step as 'a mental
conclusion"' (Br. 12).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's position that Andrews teaches "identifying a test
compound that generates a signal as a fat replacer that has a fat taste or tastes
like fat" as required by claims 18 and 20?
Findings of Fact
1. Andrews teaches a "screening method involves the use of
mammalian cells which are transfected to express functional GPR40. The
cells are loaded with an indicator dye that produces a fluorescent signal
when bound to calcium, and the cells are contacted with a test substance
and/or a receptor agonist, such as a fatty acid ligand" (Andrews 10, 11. 26-
29).
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Application 11/996,935
2. Andrews teaches that a "change in the fluorescence signal
pattern generated by the ligand indicates that a compound is a potential
agonist for the receptor" (Andrews 11, 11. 1-3).
3. Andrews teaches "[a]gonists and/or antagonists may be
identified from a variety of sources, for instance, from cells, cell-free
preparations, chemical libraries and natural product mixtures. Such agonists
and/or antagonists may be natural or modified substrates, ligands, receptors,
enzymes" (Andrews 18, 11. 27-30).
Principles of Law
"Inherency ... may not be established by probabilities or possibilities.
The mere fact that a certain thing may result from a given set of
circumstances is not sufficient." MEHL/Biophile Int 'l. Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999).
Analysis
We begin with claim interpretation because before a claim is properly
interpreted, its scope cannot be compared to the prior art. Claim 18 includes
a preamble limitation to "identifying a compound that tastes like fat" paired
with a final method step with co-mingled requirements of "identifying a test
compound that generates a signal as a fat replacer" where the identified
compound "has a fat taste or tastes like fat".
We disagree with the Examiner's conclusion that the final step is
"merely an identification of an intended use that would apply equally to any
non-fat GPR40 agonist identified by Andrews" (Ans. 5). While an intended
use recitation limitation usually fails to distinguish a product claim from
prior art products identical except for the intended use, "[ n Jew uses of old
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Application 11/996,935
products or processes are indeed patentable subject matter." Perricone v.
Medicis Pharmaceutical Corp. 432 F.3d 1368, 1378 (Fed. Cir. 2005). That
is, a new method of using an old product or process may be patentable.
Here, while Andrews evidences that screening cloned GPR 40
receptors with test compounds is an old process (FF 1-3), Andrews does not
teach the physical step of identifying a test compound that "has a fat taste or
tastes like fat" as required by claims 18 and 20. This step is not merely
mental because it requires obtaining a final physical product that "has a fat
taste or tastes like fat" but is not itself a fat. Therefore, we agree with
Appellants that "Andrews fails to disclose or suggest each and every element
of Claim 18" and "each and every element of Claim 20" (Br. 13, 16).
Conclusion of Law
The evidence of record does not support the Examiner's position that
Andrews teaches "identifying a test compound that generates a signal as a
fat replacer that has a fat taste or tastes like fat" as required by claims 18 and
20.
SUMMARY
In summary, we reverse the rejection of claims 18 and 20 under
35 U.S.C. § 102(b) as anticipated by Andrews.
REVERSED
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