Ex Parte Gaddy et al

Board of Patent Appeals and Interferences

May 4, 2010

10945505 (B.P.A.I. May. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/945,505 09/20/2004 James M. Gaddy 2027.603083/RFE 5500
79138 7590 05/05/2010
WILLIAMS, MORGAN & AMERSON, P.C.
10333 RICHMOND, SUITE 1100
HOUSTON, TX 77042
EXAMINER
WHITE, EVERETT NMN
ART UNIT PAPER NUMBER
1623
MAIL DATE DELIVERY MODE
05/05/2010 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES M. GADDY and PENELOPE A. PATTON
__________

Appeal 2009-014712
Application 10/945,505
Technology Center 3600
__________

Decided: May 5, 2010
__________

Before ERIC GRIMES, DEMETRA J. MILLS, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a xanthan
gum. The Examiner has rejected the claims as anticipated. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 44, 46, and 49-51 are on appeal. Claim 44, the only
independent claim, is directed to a xanthan gum prepared by a process that
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comprises preparing, via specified process steps, “a first dried xanthan gum
product; wherein the first dried xanthan gum product, when rehydrated in
water at a concentration of 0.25%, has a viscosity in excess of 800 cps
[centipoise] when measured on a Brookfield viscometer with a #4 spindle at
60 rpm and 75°F” (claim 44).
ANTICIPATION
Issue
The Examiner has rejected claims 44, 46, and 49-51 under 35 U.S.C.
§ 102(e) as being anticipated by Talashek.1 The Examiner finds that
Talashek “discloses powdered xanthan samples being rehydrated in
synthetic tap water at xanthan concentrations of 0.25%” and a “low shear
rate viscosity (LSRV) for xanthan, which are measured to be in excess of
800 cP … which anticipate[s] the instantly claimed xanthan gum” (Ans. 3).
Appellants contend that the xanthan gum disclosed by Talashek would
not have a viscosity in excess of 800 cps when measured under the
conditions required by the claims (Appeal Br. 6).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner’s conclusion that the xanthan
gum disclosed by Talashek meets the viscosity limitation recited in claim
44?

1 Talashek et al., US 6,391,596 B1, May 21, 2002
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Findings of Fact
1. Talashek discloses “a process for increasing viscosity of a
xanthan” and “high viscosity xanthan prepared by the [disclosed] processes”
(Talashek, col. 4, ll. 39-40, 55-56).
2. Talashek discloses the viscosity for various samples of xanthan
(Tables 3-1 to 10-1); the highest viscosity disclosed is 3085 centipoises (id.,
col. 13, l. 10).
3. Talashek discloses that the “viscosity at 25±2°C. was measured
using a Brookfield Model LV Viscometer at 3 rpm using a No. 1 Spindle.…
[I]f the viscosity is out of range, a No. 2 spindle is used for the viscosity
determination. The viscosity in centipoise (‘cP’) was recorded after
allowing the spindle to rotate for 3 minutes” (id. at col. 9, ll. 21-29).
4. Talashek discloses that the xanthans “preferably have a low shear
rate viscosity greater than 2000 cP, more preferably greater than 3000 cP
and most preferably greater than 3500 cP at 3 revolutions per minute as
measured on a Brookfield Model LV viscometer equipped with a No. 2
spindle” (id. at col. 7, l. 67 to col. 8, l. 6).
5. Appellants have provided a declaration under 37 C.F.R. § 1.132 of
Penelope A. Patton (filed March 12, 2007 (“Patton I Declaration”)).
6. Dr. Patton declares that “[x]anthan gum is well known to be
pseudoplastic, also known as shear thinning. Shear thinning, as the name
implies, means the viscosity of a solution of xanthan gum is inversely related
to the shear rate of the solution. In other words, the lower the shear rate of a
xanthan gum solution, the higher its viscosity.” (Patton I Declaration, ¶ 6.)
7. Dr. Patton declares that “[f]or a Brookfield #4 spindle at 60 rpm, as
recited by the present claims, the shear rate is about 10.7 sec-1” (id. at ¶ 7),
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while “[f]or a Brookfield #1 spindle at 3 rpm, as used by Talashek in
measuring the LSRV of Talashek’s xanthan solutions, the shear rate is about
0.6 sec-1” (id. at ¶ 8).
8. Dr. Patton concludes that “[q]ualitatively, the skilled artisan would
understand that the xanthan solutions of Talashek, if they were measured
using a Brookfield #4 spindle at 60 rpm, would have lower viscosities than
those reported by Talashek” (id. at ¶ 9).
9. Dr. Patton declares that, based on the results of experiments that
are described in the Patton I Declaration (id. at ¶¶ 10, 11),
the LSRV values for the xanthan compositions reported by
Talashek at Tables 3-1 to 10-1 would be at least about 5-fold
lower if measured according to the technique recited by the
present claims. The greatest LSRV value reported by Talashek
in these tables is 3085 cP (Table 8-11), from which I predict the
viscosity of the same solution, if it were measured according to
the technique recited by the present claims, would be about 620
cP.
(Id. at ¶ 12.)
10. Appellants have provided a second declaration under 37 C.F.R.
§ 1.132 of Penelope A. Patton (filed Aug. 2, 2007 (“Patton II Declaration”)),
which states that some of the numerical data cited for shear rates in the
Patton I Declaration is wrong (Patton II Declaration ¶ 4) and that the 3085
cp value reported by Talashek would actually correspond to “less than about
514 cP” under the conditions recited in the claims (id. at ¶ 10).
11. Appellants have provided a declaration under 37 C.F.R. § 1.132
of Mitchell Hull (filed Aug. 2, 2007).
12. Mr. Hull declares that
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[f]luid viscosity is typically determined by measuring the stress
(force per unit area) to shear a fluid at fixed rate of shear. From
this relationship, viscosity is calculated:
viscosity = (shear stress) / (shear rate).
(Hull Declaration, ¶ 5.)
13. Mr. Hull declares that for
so-called Newtonian fluids, (examples include water …), shear
stress goes up linearly with shear rate and thus viscosity is
independent of shear rate. However, many commercially
interesting fluids, including xanthan solutions, do not follow
this behavior. For these so-called non-Newtonian fluids,
viscosity must refer to a specific, defined shear rate. Many
non-Newtonian fluids, including aqueous xanthan solutions,
follow a power-law relationship:

(Shear stress) = K * (shear rate)n

where K is called the Consistency Coefficient, and n is
called the flow behavior index (or simply flow index). For
values of n < 1, viscosity goes down with higher shear rate and
the material is called shear-thinning or pseudo-plastic. Xanthan
solutions are highly shear-thinning.
(Id. at ¶ 6.)
Principles of Law
“To anticipate a claim, a reference must disclose every element of the
challenged claim and enable one skilled in the art to make the anticipating
subject matter.” PPG Indus. Inc. v. Guardian Indus. Corp, 75 F.3d 1558,
1566 (Fed. Cir. 1996).
Analysis
Claim 44 is directed to a xanthan gum prepared by a particular
method, that, when rehydrated in water at a concentration of 0.25%, has a
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viscosity in excess of 800 cps when measured on a Brookfield viscometer
with a #4 spindle at 60 rpm.
Appellants argue that Talashek does not disclose the invention of
claim 44 because a “xanthan solution having a viscosity of about 3085 cP
(the highest viscosity reported by Talashek) when measured under
Talashek’s measurement conditions would be expected to have a viscosity of
no more than about 514 cP when measured under the presently recited
measurement conditions” (Appeal Br. 8; citing the Patton II Declaration).
The Examiner responds that the submitted Declarations were not
sufficient to overcome the stated rejection, for several reasons. First, the
Examiner points out that Talashek “discloses xanthans having a viscosity
value preferably greater than 3500 cP … which is higher than the 3085 cp
used by Appellant for comparison” (Ans. 5). Second, Examiner faults the
Declarations for “only recit[ing] values obtained from predictions of
viscosity values” (id. at 4), not “true experimental data of the viscosity of the
xanthan gum obtained by the process of … Talashek … using the claimed
Brookfield viscometer with a #4 spindle at 60 rpm” (id. at 5). Finally, the
Examiner finds that the Declarations fail to show “how the shear rate values
were determined” or to disclose temperatures, which may affect the viscosity
(id. at 5).
We conclude that Appellants have provided sufficient evidence to
show that the product disclosed by Talashek does not inherently have the
viscosity required by claim 44. The Patton Declarations and the Hull
Declaration collectively provide persuasive evidence that the viscosity
values disclosed by Talashek would correspond to viscosities well below
800 cps if they were measured under the conditions recited in claim 44.
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The Examiner’s reasoning as to the inadequacy of the declarations is
not persuasive. Although Talashek discloses that the viscosity of its
xanthans is preferably greater than 3500 centipoises, it provides no actual
compositions with that viscosity. In addition, the Patton II Declaration
provides evidence that the ordinary artisan would expect that the viscosities
disclosed by Talashek would be six- to ten-fold lower if measured as
specified in claim 44. Thus, based on the relationships as set forth in the
Patton II Declaration, the ordinary artisan would expect that Talashek’s
viscosity of 3500 cps would correspond to a viscosity of 350-583 under the
conditions of claim 44, values that are still well below the 800 cps required
by the claim.
We disagree with the Examiner’s statement that the declarations do
not disclose how the shear rates were determined, as the Hull Declaration
(¶¶ 4-16) describes in detail how the shear rate values were determined.
Further, the Examiner has not adequately explained why a difference in
temperature would be expected to affect the results disclosed in the
Declarations. Dr. Patton declares (Patton II Declaration, ¶ 10) that
Talashek’s viscosity values (measured at 25±2°C) “would be at least about
6-fold lower if measured according to the technique recited by the present
claims” (Patton II Declaration, ¶ 10), which includes a temperature of 75°F.
In addition, as Appellants have noted, Talashek’s 25°C and the claims’ 75°F
(23.9°C) are more or less equivalent. Finally, the Examiner’s argument that
the comparison between the claimed viscosity and Talashek’s viscosity was
accomplished theoretically versus experimentally by preparing Talashek’s
compositions is not persuasive because the Examiner has not set forth any
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convincing reasoning for concluding that the ordinary artisan would consider
the theoretical approach set out in the Declarations to be unreliable.
Appellants’ arguments are persuasive that the Examiner has not
adequately shown that Talashek discloses the composition of claim 44. The
rejection of claim 44, and dependent claims 46 and 49-51, as being
anticipated by Talashek is reversed.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that the xanthan gum product disclosed by Talashek meets the viscosity
limitation recited in claim 44.
SUMMARY
We reverse the rejection of claims 44, 46, and 49-51 under 35 U.S.C.
§ 102(e).

REVERSED

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WILLIAMS, MORGAN & AMERSON, P.C.
10333 RICHMOND, SUITE 1100
HOUSTON TX 77042