Ex Parte Fox

Board of Patent Appeals and Interferences

May 13, 2003

09428261 (B.P.A.I. May. 13, 2003)

The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARY M. FOX
___________
Appeal No. 2002-2146
Application No. 09/428,261
__________
ON BRIEF
_________
Before KIMLIN, GARRIS, and WALTZ, Administrative Patent Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 1, 23, 47 and 64 through 91, which are
the only claims remaining in this application. We have
jurisdiction pursuant to 35 U.S.C. § 134.
According to appellant, the invention is directed to a
calcium supplement that comprises a primary calcium source of
calcium carbonate, a sufficient amount of a secondary calcium
source to provide from 0% to 30% of the supplement’s total
Appeal No. 2002-2146
Application No. 09/428,261
2
soluble calcium ions in solution, and an edible acid component
comprising a mixture of citric acid and malic acid in specified
amounts so that at least 75% of the supplement’s soluble calcium
ion remains in solution for at least about 2 days (Brief, page
2).
Appellant states that the claims should be grouped into
three groups and presents reasonably specific, substantive
reasons for the separate patentability of each group (Brief,
pages 2 and 4-5). Accordingly, we select one claim from each
grouping (i.e., claims 1, 23 and 69), with all other claims in
each group standing or falling together, and limit our
consideration to these selected claims to the extent they have
been separately argued. See In re McDaniel, 293 F.3d 1379, 1383,
63 USPQ2d 1462, 1465 (Fed. Cir. 2002), and 37 CFR
§ 1.192(c)(7)(2000). Claim 1 is representative of the invention
and is reproduced below:
1. A calcium supplement comprising:
(a) a primary calcium source comprising calcium
carbonate and, optionally, a sufficient amount of a
secondary calcium source to provide from 0% to 30% of
the supplement’s total soluble calcium ions when said
supplement is placed in solution;
(b) less than an effective amount of a material
selected from the group consisting of sucrose, glucose,
fructose, high fructose corn syrup, invert sugar, sugar
alcohols pectin, algins, hydrolyzed starches, edible
Appeal No. 2002-2146
Application No. 09/428,261
1The references to Gailley and Boncy et al., as applied in
the final Office action dated Aug. 28, 2001, Paper No. 13, have
not been repeated in the Answer (see pages 2-3). Accordingly, we
consider that the examiner has withdrawn these references.
3
gums, and mixtures thereof to keep at least 75% of the
supplement’s soluble calcium ion in solution for at
least about 2 days after said supplement is placed in
solution; and
(c) an edible acid component comprising a mixture of
citric acid and malic acid;
wherein the percentage of citric acid to total acid is at least
23% and not more than 75%; the weight ratio of acid equivalents
to base equivalents is from 0.5 to 1.8; and at least 75% of the
supplement’s soluble calcium ion remains in solution for at least
about 2 days after said supplemant is placed in solution.
The examiner relies upon Mehansho et al. (Mehansho), U.S.
Patent No. 4,992,282, issued Feb. 12, 1991, as evidence of
obviousness. Accordingly, the claims on appeal stand rejected
under 35 U.S.C. § 103(a) as unpatentable over Mehansho (Answer,
page 3).1 We affirm the examiner’s rejection essentially for the
reasons stated in the Answer, the reasons set forth in the
decision in related Appeal No. 1995-1058 (Paper No. 23 in
Application No. 07/906,638), and those reasons discussed below.
OPINION
A. Background
This application is a continuation of Application No.
07/906,638, now abandoned, where a merits panel of this Board
Appeal No. 2002-2146
Application No. 09/428,261
4
issued a decision dated Sep. 18, 1997, Paper No. 23, in Appeal
No. 1995-1058, affirming the examiner’s rejection of claims 1-14
under 35 U.S.C. § 103 over Mehansho (Paper No. 23, pages 1-3).
For comparison purposes, a copy of illustrative independent claim
1 from Appeal No. 1995-1058 is reproduced below:
1. An effervescent calcium supplement comprising a unit
dosage mixture of:
(a) a primary calcium source comprising calcium carbonate;
and
(b) an edible acid component comprising a mixture of citric
acid and malic acid;
wherein the percentage of citric acid to total acid is at
least 23% and not more than 75% and the weight ratio of acid
equivalents to base equivalents is from 0.8 to 1.8; and whereby
when said effervescent calcium supplement is deposited in aqueous
medium at least 75% of the soluble calcium ion remains in
solution for at least about 2 days.
B. The Rejection
The examiner finds that Mehansho discloses a carbonated soft
drink which contains a combination of calcium carbonate, citric
acid and malic acid, where the calcium carbonate, citric acid and
malic acid are premixed in dry form (Answer, page 3). The
examiner finds that this formulation acts as a calcium
supplement, either alone or in combination with a beverage (id.).
The examiner adopts the reasoning from the decision in Appeal No.
1995-1058 to establish that the particular weight ratio of
Appeal No. 2002-2146
Application No. 09/428,261
5
acid:base equivalents recited in claim 1 on appeal is taught by
Mehansho (id.; see the decision in Appeal No. 1995-1058, pages 4-
5). The amount of citric acid and malic acid taught by Mehansho
overlaps the claimed ranges (see the decision in Appeal No. 1995-
1058, page 4).
With respect to claim 1 on appeal, the examiner finds that
this claim differs from the reference by requiring “less than an
effective amount” of a premix stabilizer to keep at least 75% of
the supplement’s soluble calcium ion in solution for at least
about 2 days (Answer, page 3). However, the examiner finds that
Mehansho teaches that 1 to 14% of these stabilizers, if used,
should be present in the beverage (id., citing col. 11, ll. 9-
20), while the amounts of sugar premix stabilizers taught by
appellant that are “less than an effective amount” include the
same range, i.e., 1 to 14% (specification, page 11, ll. 10-15).
Therefore the examiner concludes that since the same composition
has been taught by the reference as recited in claim 1 on appeal,
it would have been obvious that at least 75% of the supplement’s
soluble calcium ions would have stayed in solution for at least
about 2 days (Answer, page 4).
Claims 23 and 69 exclude the use of various sugars as premix
stabilizers through the term “consisting of” and a negative
Appeal No. 2002-2146
Application No. 09/428,261
6
limitation, respectively. We note that the term “consisting of”
closes the claim language to only the recited components or
ingredients. See Vehicular Techs. v. Titan Wheel Int’l, Inc.,
212 F.3d 1377, 1383, 54 USPQ2d 1841, 1845 (Fed. Cir. 2000). With
respect to these claims, the examiner finds that Mehansho
discloses a beverage containing calcium carbonate, citric acid
and malic acid, teaching that the sugars used as premix
stabilizers are “optional,” although “preferred” (Answer, pages
4-5; see col. 12, ll. 34-37; col. 13, ll. 8-9 and 29-30). From
these findings, the examiner concludes that it would have been
obvious to exclude the sugar stabilizers of Mehansho (Answer,
page 5). We agree.
Appellant argues that the examiner has not shown that the
cited art teaches or suggests the claimed limitation that at
least 75% of the supplement’s soluble calcium ions are kept in
solution for at least about 2 days (Brief, page 3). This
argument is not persuasive since, as discussed by the examiner
(Answer, pages 3-5), Mehansho teaches the same calcium supplement
composition as recited in the claims and thus it would have been
reasonably expected that the calcium ions would have been kept in
solution to the same extent as the claimed supplement. See In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
Appeal No. 2002-2146
Application No. 09/428,261
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1990)(Discovery of a new property of a previously known
composition cannot impart patentability to claims to the known
composition); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
(CCPA 1977)(Where the claimed and prior art products are
identical or substantially identical, the PTO can require an
applicant to prove that the prior art products do not necessarily
possess the characteristics of the claimed product). On this
record, there is no objective evidence that the calcium
supplement of Mehansho differs from the claimed calcium
supplement.
Appellant argues that the claims now contain premix
stabilizer limitations that exclude or limit the amounts of such
stabilizers, and such limitations are not taught or suggested by
the cited art (Brief, page 3). This argument is not persuasive.
As discussed above, claim 1 limits the amounts of recited sugar
premix stabilizers to “less than an effective amount” to keep at
least 75% of the calcium ions in solution for at least about 2
days (see the Brief, page 4), but this amount is defined in the
specification as including from 1 to 14% of the listed sugar
stabilizers (see the specification, page 11, ll. 11-12). Since
this is the same amount of premix stabilizers taught by Mehansho
(col. 11, ll. 14-15), this limitation recited in claim 1 on
Appeal No. 2002-2146
Application No. 09/428,261
8
appeal does not distinguish over the cited reference. With
regard to the exclusion of such sugar stabilizers from claims 23
and 69 (see the Brief, page 5), we repeat our remarks supra that
the use of premix stabilizers in Mehansho is “optional” (see col.
13, ll. 8-9). See col. 13, ll. 52-55, where Mehansho teaches
that the dry mixture of calcium carbonate, citric acid and malic
acid may be added to the sugar or water solution to produce a
calcium supplement.
Appellant also argues that, according to Mehansho, “a premix
stabilizer is required if calcium malate and calcium citrate
species are to remain in solution for more than a few hours”
(Brief, page 3, citing Mehansho, col. 12, ll. 27-29). This
argument is not well taken since Mehansho does not teach the
above quoted requirement. Mehansho teaches that “[w]ithout added
stabilizers, the highly soluble calcium citrate species are
stable in the premix solution for periods up to only about a few
hours.” See col. 12, ll. 27-29. Mehansho does not teach that
the calcium malate species will become insoluble but only that
the highly soluble citrate species will “tend to
disproportionate” to the corresponding acid and more insoluble
calcium citrate salts (col. 12, ll. 29-33). Therefore, even if a
portion or all of the calcium citrate species becomes insoluble
Appeal No. 2002-2146
Application No. 09/428,261
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in the water solution, one of ordinary skill in this art would
have reasonably expected that high amounts of calcium ions within
the scope of the claims would still remain in solution due to the
malate species, with or without a premix stabilizer (see the
amounts of citric acid and malic acid taught by Mehansho at col.
11, l. 55-col. 12, l. 7, and Example II at cols. 15-16).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness in view of the reference evidence. Based on the
totality of the record, including due consideration of
appellant’s arguments, we determine that the preponderance of
evidence weighs most heavily in favor of obviousness within the
meaning of section 103(a). Accordingly, we affirm the examiner’s
rejection of claims 1, 23, 47 and 64-91 under 35 U.S.C. § 103(a)
over Mehansho.
Appeal No. 2002-2146
Application No. 09/428,261
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Edward C. Kimlin )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Bradley R. Garris ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Thomas A. Waltz )
Administrative Patent Judge )
TAW/tdl
Appeal No. 2002-2146
Application No. 09/428,261
11
The Procter & Gamble Company
Intellectual Property Division
Winton Hill Technical Center - Box 161
6110 Center Hill Avenue
Cincinnati, OH 45224