Ex parte Fujita

Board of Patent Appeals and Interferences

Mar 29, 2000

08120194 (B.P.A.I. Mar. 29, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 42
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte KEISUKE FUJITA
__________
Appeal No. 1996-2413
Application 08/120,194
__________
HEARD: March 20, 2000
__________
Before GARRIS, PAK, and LIEBERMAN, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1,
2, 6 through 8 and 12 through 15 which are all of the claims
pending in the application.
The subject matter on appeal relates to a vacuum freeze-
Appeal No. 1996-2413
Application No. 08/120,194
2
dried mass consisting essentially of freeze dried ingredients
of the entire leaf of a plant belonging to the genus Aloe.
Further details of this appealed subject matter are set forth
in representative independent claim 1 which reads as follows:
1. A vacuum freeze-dried mass made by homogenizing an
entire leaf of a plant belonging to the genus Aloe of the
family Liliaceae to produce a crushed Aloe liquid and then
freeze-drying said crushed Aloe liquid in a vacuum to produce
said vacuum freeze-dried mass, said mass consisting
essentially of freeze dried ingredients of said entire leaf.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Tovey 4,493,822 Jan. 15, 1985
McAnalley 4,966,892 Oct. 30, 1990
Grossman et al. 4,976,960 Dec. 11, 1990
(Grossman)
Dennis et al. 5,137,730 Aug. 11, 1992
(Dennis) (filed May 28, 1991)
Hanada 40012390 Jun. 17, 1965
(Japanese ‘390)(translation copy attached)
Marsh 693,391 May 12, 1969
(South Africa ‘391)
Marsh 1,199,887 Jul. 22, 1970
(Great Britain ‘887)
Kobayashi et al. 60109526 Jun. 15, 1985
(Japanese ‘526)(translation copy attached)
On the record before us, claims 1, 2 and 12 are rejected
Appeal No. 1996-2413
Application No. 08/120,194
On page 3 of the brief, the appellant states that1
“[c]laims 1, 2, 6-8 and 12-15 stand or fall together”. See 37
CFR
§ 1.192(c)(7)(1995).
3
under 35 U.S.C. § 103 as being unpatentable over Japanese ‘526
in view of Great Britain ‘887, South Africa ‘391 in view of
McAnalley and Japanese ‘390, and claims 6 through 8 and 12
through 15 are correspondingly rejected over these references
and further in view of Tovey in view of Dennis and Grossman.1
We refer to the brief and reply brief and to the answer
for a thorough exposition of the opposing viewpoints expressed
by the appellant and by the examiner concerning the above
noted rejections.
OPINION
For the reasons which follow, we will sustain the
rejections before us on this appeal.
We share the examiner’s conclusion that the applied
references establish a prima facie case of obviousness with
respect to the subject matter defined by, for example,
independent claim 1 on appeal. Concerning this issue, the
appellant argues that Japanese ‘526 “does not disclose vacuum
freeze-drying an entire leaf of an aloe plant” and indeed that
Appeal No. 1996-2413
Application No. 08/120,194
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in the disclosure of this reference “[t]here is no freeze-
drying step at all” (brief, page 9). This argument is
unpersuasive.
Contrary to the appellant’s belief, Japanese ‘526
discloses “aloe (leaf, stem)” as an example of the plant
materials envisioned for treatment by the process of this
reference (see the second full paragraph on translation page
7) and discloses freeze-drying to a dried powder the liquid
obtained from the plant material (see the last sentence in the
paragraph bridging translation pages 9 and 10). From our
perspective, the teachings of Japanese ‘526 including the
aforementioned disclosures would have suggested a vacuum
freeze-dried mass consisting essentially of freeze dried
ingredients of an entire leaf from an aloe plant in accordance
with the appellant’s independent claim 1. Moreover, it is
reasonable to consider the freeze dried powder obtained from
an aloe leaf in accordance with the Japanese reference as
corresponding to the here claimed freeze dried mass
particularly in view of the correspondence between the process
steps by which these respective products are made (e.g.,
compare the Japanese grinding step to the appellant’s claimed
Appeal No. 1996-2413
Application No. 08/120,194
5
homogenizing step and the Japanese freeze-drying to the
appellant’s claimed freeze-drying step).
Under these circumstances, it is appropriate to require
the appellant to prove that the freeze dried powder obtained
from an aloe leaf in accordance with Japanese ‘526 does not
necessarily or inherently possess the characteristics of the
here claimed product. Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on prima facie obviousness
under 35 U.S.C. § 103, jointly or alternatively, the burden of
proof is the same, and its fairness is evidenced by the
inability of the Patent and Trademark Office to manufacture
products or to obtain and compare prior art products. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-434 (CCPA 1977).
On this record, the appellant has not carried his above
mentioned burden. Although a section 1.132 declaration was
filed October 30, 1992 in the appellant’s parent application
(i.e., 07/713,052) as pointed out in the brief, this
declaration compares products in accordance with the
appellant’s invention and products in accordance with the
invention disclosed in the McAnalley (not Japanese ‘526)
reference. It follows that the reference evidence adduced by
Appeal No. 1996-2413
Application No. 08/120,194
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the examiner establishes a prima facie case of obviousness
with respect to the subject matter defined by, for example,
appealed claim 1 which has not been successfully rebutted by
the appellant with objective evidence of nonobviousness.
Similar reasoning applies to the other claims on appeal
including, for example, independent claim 6. With respect to
the Tovey, Dennis and Grossman references applied against this
last mentioned claim, the appellant seems to believe that no
reason exists for combining these references with the other
applied references. In our view, however, it would have been
obvious for one with ordinary skill in the art to combine the
references in question in order to obtain the freeze dried
powder of Japanese ‘526 in the desirable form of a tablet as
required by appealed claim 6.
In light of the foregoing, we hereby sustain each of the
section 103 rejections advanced by the examiner on this
appeal.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
Appeal No. 1996-2413
Application No. 08/120,194
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AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Chung K. Pak ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Paul Lieberman )
Administrative Patent Judge )
tdl
Appeal No. 1996-2413
Application No. 08/120,194
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