Ex Parte Geiss

Patent Trial and Appeal Board

Feb 26, 2013

10665394 (P.T.A.B. Feb. 26, 2013)

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.
10/665,394 09/17/2003 Kurt-Reiner Geiss 7390-X03-018 4213
27317 7590 02/26/2013
Fleit Gibbons Gutman Bongini & Bianco PL
21355 EAST DIXIE HIGHWAY
SUITE 115
MIAMI, FL 33180
EXAMINER
MAEWALL, SNIGDHA
ART UNIT PAPER NUMBER
1612
MAIL DATE DELIVERY MODE
02/26/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte KURT-REINER GEISS
________________

Appeal 2011-003316
Application 10/665,394
Technology Center 1600
________________

Before, TONI R. SCHEINER, DEMETRA J. MILLS, and JOHN G. NEW,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

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Application 10/665,394

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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 14-15, 17-19 and 23-46
1
as
unpatentable under 35 U.S.C. § 103(a) as being obvious over the
combination of Buchholz et al. (US 6,514,973 B1, February 4, 2003)
(“Buchholz”) and Lang et al. (US 2003/0161861 Al, August 28, 2003)
(“Lang”).
2

We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is directed to a food item, preferably a bar of
chocolate, that has a phosphatidyl serine content of 100 mg to 300mg and a
relatively high carbohydrate content. Abstract.

GROUPING OF CLAIMS

Appellant does not present separate arguments for claims 14-15, 17-
19 and 23-42. App. Br. 8 We therefore select claim 14 as representative of
this group. 37 C.F.R. § 41.37(c)(1)(vii). Claim 14 recites:
Claim 14. A food for improving cognitive functional
capacity of a consumer of the food comprising a minimum of
100mg to about 200mg of phosphatidyl serine and a minimum
of 10g to about 20g of carbohydrates.

1
Claims 1-13, 16, and 20-22 are cancelled.
2
Claims 37-39 and 40-46 were rejected by the Examiner as unpatentable
under 35 U.S.C. § 112(b). The rejection was subsequently withdrawn by the
Examiner. Ans. 3.
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App. Br. 29.
Appellant argues that claims 43-46 represent a second, distinctly
patentable group, and we select claim 43 as representative. App. Br. 8.
Claim 43 recites:
Claim 43. A method for improving cognitive
functional capacity of a consumer comprising consuming a
food including a minimum of 100mg to about 200mg of
phosphatidyl serine and a minimum of 10g to about 20g of
carbohydrates, increasing memory, concentration, and
attentiveness in a consumer of the food, and improving the
cognitive functional capacity of the consumer of the food.

App. Br. 32

ISSUES AND ANALYSES

A. Obviousness of Claim 14 under 35 U.S.C. § 103(a).
Issue 1
Appellant argues that the Examiner erred in finding that the
combination of Buchholz and Lang teaches or suggests every feature of the
composition claimed in independent claim 14 and that, further, an artisan of
ordinary skill would be motivated to combine the references. App. Br. 15.
We therefore address the issue of whether the Examiner so erred.

Analysis
The Examiner finds that Buchholz teaches or suggests that
phosphatidyl serine improves brain metabolism and benefits cognitive
functions such as memory, thinking, learning, and the ability to concentrate
via increases in glucose metabolism. Ans. 4, 7 (citing Buchholz, col 2, ll.
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25-32). The Examiner finds that Lang teaches or suggests that
carbohydrates are capable of improving cognitive function and that
“carbohydrates,” without further elaboration or specification, are recited in
the limitation of claim 14 and the Examiner therefore gives the term the
broadest reasonable interpretation. Ans. 9. The Examiner also finds that
Lang teaches that slowly-available glucose content is the preferred
carbohydrate that can be used and that monosaccharides and/or
disaccharides such as glucose, sucrose, fructose and or maltose can also be
employed to improve cognitive function. Ans. 10 (citing Lang ¶¶ [0022],
[0024]. The Examiner notes that these sugars are recited in the limitations
of claim 17, 26, and 36.
The Examiner consequently finds that, since Lang teaches utilization
of the claimed carbohydrates in amounts substantially similar to those
claimed by Appellant for the same claimed cognitive improvement (Ans. 10
(citing Lang, ¶¶ [0019], [0020], [0022], [0029])) and since Buchholz teaches
improvement of cognitive performance due to phosphatidyl serine, an artisan
of ordinary skill in the contemporaneous art would have been motivated to
utilize the two components together to obtain improved cognitive function.
Ans. 10. The Examiner also finds that the allegedly conflicting results
taught by Lang, Buchholz, and Appellant’s other submitted prior art with
respect to both carbohydrates and phosphatidyl serine do not constitute
teaching away from the claimed invention. App. Br. 10-11.
Appellant argues that Buchholz does not suggest that glucose, or any
other carbohydrate, would have an effect on the function of his composition,
or would interact with phosphatidyl serine in the composition to improve
cognitive function. App. Br. 16. Furthermore, Appellant argues that Lang
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does not disclose that foods merely containing “starch” or “carbohydrates”
are capable of improving cognitive function, but rather discloses a cereal
product, having a specific ratio of slowly-digestible starch to total starch
content, which is capable of improving cognitive function. Id. According to
Appellant, the positive effects disclosed in Lang are due to the choice of an
appropriate ratio and not simply from an inclusion of carbohydrates. Id.
Appellant contends that neither Buchholz nor Lang, nor any other prior art,
discloses a composition including a synergistically-interacting combination
of phosphatidyl serine and carbohydrates which improves cognitive
functional capacity. Id. Therefore, argues Appellant, the combination of
Buchholz and Lang cannot be said to disclose every feature of claimed 14.
Appellant also argues that a person of ordinary skill in the
contemporary art would not be motivated to combine the teachings of
Buchholz and Lang. App. Br. 16. Specifically, Appellant maintains that the
prior art does not provide a reasonable expectation of success of obtaining
the claimed composition from simply combining the starch of Lang with the
phosphatidyl serine of Buchholz. App. Br. 17. Appellant argues that both
Buchholz and Lang teach that the prior art does not unequivocally disclose
that phosphatidyl serine and carbohydrates improve cognitive performance.
App. Br. 17-18 (citing Lang, ¶ [0071]; Appellant’s App’xs E, F, G).
Appellant contends that, when faced with these allegedly conflicting results,
an artisan of ordinary skill could not be certain what to expect regarding
changes in cognitive function, and that there would, therefore, be no
reasonable expectation of success of obtaining the claimed composition from
simply combining the starch of Lang with the phosphatidyl serine of
Buchholz. App. Br. 18.
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We are not persuaded by Appellant’s arguments. Buchholz teaches
that ingestion of phosphatidyl serine improves cognitive performance. Ans.
4, 7 (citing Buchholz, col 2, ll. 25-32). Moreover, Lang teaches or suggests
that the administration of slowly-available carbohydrates, including mono-
or disaccharides, also improves cognitive function. Ans. 10 (citing Lang, ¶¶
[0019], [0020], [0022], [0029]). Moreover, we are not persuaded by
Appellant’s characterization of Lang. App. Br. 18. Contrary to Appellant’s
argument, we find that Lang teaches that it is the rate at which carbohydrates
become biologically available that determines their influence on cognitive
function. Reply Br. 7; see contra Lang ¶ [0075]; Tables 2, 3. We therefore
find that the combination of Lang and Buchholz teaches or suggests all of
the limitations of claim 14.
Furthermore, we agree with the Examiner’s reasoning that an artisan
of ordinary skill would have been motivated to combine the teachings of
Buchholz and Lang and adopt it as our own. We are not persuaded by
Appellant’s argument that the conflicting results taught or suggested by
Lang with respect to carbohydrates and with respect to phosphatidyl serine
taught or suggested by Buchholz and Appellant’s submitted prior art
constitute teaching away from the claimed invention. “A reference may be
said to teach away when a person of ordinary skill, upon reading the
reference, would be discouraged from following the path set out in the
reference, or would be led in a direction divergent from the path that was
taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
We find that the existence of conflicting prior art references does not rise to
the level of this standard; indeed, conflicting prior studies may well be the
impetus to increased research, rather than the discouragement of it. We
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therefore conclude that the Examiner did not err in finding that the
combination of Buchholz and Lang teaches or suggests every feature of the
composition claimed in independent claim 14 and that an artisan of ordinary
skill in the contemporaneous art would be motivated to combine the
references to arrive at the claimed invention.

Issue 2
Appellant argues that the Examiner erred in finding that Appellant’s
submission of secondary evidence of non-obviousness was not persuasive.
We therefore address the issue of whether the Examiner so erred.

Analysis
Appellant argues that the Declarations submitted by the inventor, Dr.
Kurt-Reiner Geiss, and filed on December 19, 2008 (Evidence Exhibit C)
(“Declaration 1” and on June 12, 2009 (Evidence Exhibit D) (Declaration 2),
respectively demonstrate a synergistic effect on cognitive functional
capacity from the claimed combination of phosphatidyl serine and
carbohydrates over the effect of each ingredient alone (i.e., phosphatidyl
serine alone and carbohydrates alone). App. Br. 19. Appellant submits that
the allegedly synergistic effects on cognitive function present secondary
considerations of non-obviousness. Id.
Appellant relates that, in the first study presented in both Declarations,
volunteers were evaluated in various cognitive tasks both prior to, and after,
twelve weeks of consuming one IQPLUS Brain Bar (an embodiment of the
claimed invention) per day for the first two weeks, followed by half an
IQPLUS Brain Bar for the next ten weeks. App. Br. 19 (citing Declaration
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1, Tables 2 and 3). Appellant asserts that the IQPLUS Brain Bar contains
200 mg of phosphatidyl serine and 20 g of carbohydrates, within the scope
of the limitations of claim 14. App. Br. 19. Appellant argues that a
comparison of the results, after twelve weeks consumption, with results after
an additional twelve weeks without any further supplementation showed a
decline in performance in both concentration and attention (see Declaration
1, Table 2) and memory and attention. (See Declaration 1, Table 3). App.
Br. 19.
Appellant also submits the results of a second study presented in the
Declarations as evidence of secondary considerations of non-obviousness.
App. Br. 21. In this latter study, the influence of the claimed food bar on
cognition during golfing (tee-off accuracy) was tested and compared to the
influence of the ingredients (phosphatidyl serine and simple carbohydrates)
alone. Id. After the first test, the golfers consumed a combination of 200
mg phosphatidyl serine and 20 g of simple carbohydrates (as IQPLUS Golf
Bar, n=10) (another embodiment of the claimed invention), 20 g of simple
carbohydrates (as a nutrition bar, n=10), or 200mg of phosphatidyl serine (as
soft gel capsules, n=2) for six weeks. App. Br. 21. After six weeks, the ball
flight test was repeated. Id. Appellant asserts that the data clearly reflect a
measurable difference in performance between pre- and post-carbohydrate
levels. Id. (citing Declaration 1, at 6). According to Appellant:
The combination of phosphatidyl serine and simple
carbohydrates resulted in a significant improvement of good
ball flights (plus 22%: mean: pre-test 8.3 +/- 3.5) post-test
10.1+/- 3.0), whereas simple carbohydrate intake (mean: pre-
test 7.8 +/- 2.4, post-test: 7.9 +/- 3.6) or phosphatidyl serine
intake (mean: pre-test 6.5 +/-0.5, post-test: 6.5 +/- 1.5) did not
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improve performance. The improvement was statistically
significant (p < 0.05).

Declaration 2, at 6. Appellant argues that these data are evidence of an
unexpected synergistic effect which negates any reason to combine the
teachings of the references. App. Br. 23.
Appellant further argues that the requirement for a control for the
study was provided by ball flights measured at the beginning of the study in
order to establish a baseline performance (pre-test). Id. According to
Appellant, the anterior baseline performance is used for comparison against
performance measured after a time period of consuming the assigned food
such that any improvements can be determined. Id.
Appellant also points to a third study, in golfers (n=2), under
conditions identical to the experiment described supra, consumed 150 mg of
phosphatidyl serine and 15 g of carbohydrates on average per day for a
period of eight weeks. App. Br. 23. Appellant asserts that this group
showed a 14% improvement in good ball flights (pre 6.5; post 7.4;
difference 0.9 = 14%). Id. (citing Declaration 2, at 6).
The Examiner responds that, with respond to the first study cited
supra, there is no comparison of statistical results provided for subjects who
consumed IQPLUS bar with subjects who consumed food bar comprising
only carbohydrate or a food bar comprising phosphatidyl serine itself. Ans.
15. Therefore, the Examiner finds, the experimental data as provided is
insufficient to provide statistically significant results. Id.
The Examiner also finds that the data submitted to provide synergistic
results is insufficient to overcome the obviousness rejection. Ans. 13-14.
The Examiner finds that the study lacks adequate controls, and that the graph
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on page 7 of Declaration 1 shows standard deviation so high that one cannot
determine the statistical significance of the data. Ans. 14 (citing Declaration
1, at 7). The Examiner finds that the results do not appear to show even an
additive effect and that the improvement in cognitive performance is not to
an unexpected degree. Id. The Examiner therefore finds that the results of
the study are obvious in view of the teachings of prior art; Buchholz teaches
cognitive improvement due to ingestion of phosphatidyl serine and Lang
teaches cognitive improvement due to carbohydrate ingestion. Ans. 16. The
Examiner finds that claim 14 recites the minimum effective amount for
improving cognitive performance is 100 mg; the study recited in the
Declarations recognize that there is no difference in pre- and post-test results
when only phosphatidyl serine or only carbohydrate was consumed. Id.
We are not persuaded by Appellant’s arguments. We agree with the
Examiner that the first study does not provide any data whatever with
respect to the alleged synergistic effect of phosphatidyl serine and
carbohydrates because there are no groups consuming either carbohydrates
or phosphatidyl serine alone, nor is there a control group consuming
neither.
3
Ans. 15.
With respect to the second study presented in Appellant’s
Declarations, we agree with the Examiner’s finding that the results do not
show surprising or unexpected results. Ans. 14. We agree with the

3
We do not agree with the Examiner that the study provided “results of
subjects who consumed the IQPLUS bar and subjects who did not consume
the IQPLUS bar for showing improvement in concentration/attention,
memory and attention.” Ans. 15 (emphasis added). We can find no mention
of the latter group in the Declarations; however, this does not alter our
analysis.
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Examiner’s finding that the cited study lacks adequate controls. Id.
Moreover, although Declaration 2 avers that the improvement seen in the
phosphatidyl serine-carbohydrate is statistically significant (p < 0.05)
(Declaration 2, at 6), the statistical method employed is not revealed.
Moreover, we agree with the Examiner’s finding that the large difference in
subjects between the phosphatidyl serine and carbohydrate groups (n=10
each) and the combined group (n=2) undermines statistical confidence in the
results. Ans. 15. Finally, we are persuaded by the Examiner’s finding that,
since both phosphatidyl serine and carbohydrates are known in the art to
promote cognitive function, the combination of the two would predictably
result in an increased in cognitive function. Ans. 16.
We therefore conclude that Appellant has not met the burden of
demonstrating unexpected and unpredictable results arising from the claimed
invention. Consequently, we conclude that the Examiner did not err in
concluding that claim 14 is obvious over the combination of Buchholz and
Lang.

B. Obviousness of Claim 43 under 35 U.S.C. § 103(a).
With respect to claim 43, Appellant makes substantially the same
argument presented supra with respect to the alleged synergistic effect of the
combination of phosphatidyl serine and carbohydrates on cognitive function.
App. Br. 26-27. For the reasons set forth above, we conclude that the
Examiner did not err in concluding that claim 43 is obvious over the
combination of Buchholz and Lang.

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DECISION
The Examiner’s rejection of claims 14 and 43as unpatentable under 35
U.S.C. §103(a) is affirmed. Pursuant to 37 C.F.R. § 41.37(c)(1)(vii), the
rejection of claims 15, 17-19, 23-42, and 44-46 is affirmed as well, as these
claims were not separately argued.
TIME PERIOD FOR RESPONSE
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

cdc