Ex Parte Gootenilleke et al

Patent Trial and Appeal Board

Jun 22, 2016

13086298 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/086,298 04/13/2011
27791 7590 06/24/2016
ALLISON JOHNSON, PA
3600 AMERICAN BLVD. W., SUITE 410
MINNEAPOLIS, MN 55431
FIRST NAMED INVENTOR
Laknath Anslem Gootenilleke
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.
208-050US2 3902
EXAMINER
TARAZANO, DONALD LAWRENCE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
patent@ajiplaw.com
allison@ajiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte LAKNATH ANSLEM GOOTENILLEKE, DAVID J. MICHAEL,
and KYLE M. JOHNSON
Appeal2014-004018
Application 13/086,298
Technology Center 1700
Before BRADLEY R. GARRIS, ROMULO H. DELMENDO, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-004018
Application 13/086,298
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1, 4-9, 11-24, and 26-29. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b). Oral arguments were heard in this appeal on June 7, 2016.
We AFFIRM-IN-PART.
Appellants' invention is directed to an effervescent tablet comprising
an oil selected from the group consisting of safflower oil, sesame oil, flax
seed oil, wheat germ oil, and combinations thereof and sweetening agent
(claim 1) or a coloring agent or flavoring agent (claim 2 8) that is insoluble in
water, slightly soluble in water or sparingly soluble in water (Claim App'x,
claims 1 & 28).
Claim 1 is illustrative:
1. An effervescent tablet comprising:
from about 20 % by weight to about 80 % by weight effervescent
agent comprising an acid and a base;
from about 5 % by weight to about 25 % by weight of a first binder;
from 0 .1 % by weight to less than 2 % by weight of an oil selected
from the group consisting of safflower oil; sesame oil; sunflower oil; flax
seed oil, wheat germ oil, and combinations thereof; and
from about 2 % by weight to about 20 % by weight of a sweetening
agent that is insoluble in water, slightly soluble in water, or sparingly soluble
in water, or exhibits delayed solubility in water, the sweetening agent being
other than an oil, the tablet having a hardness of at least 2 kiloponds.
Appellants appeal the following rejection:
Claims 1, 4-9, 11-24, and 26-29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wehling (US 6,811,793 B2 issued Nov. 2, 2004).
Appellants argue the following claim groupings: (1) claim 1, (2)
claim 4, (3), claim 5, (4) claims 8, 9, and 11, (5) claims 14 and 15, (6) claims
20 and 26, (7) claim 27, (8) claim 28, and (9) claim 29 (App. Br. 10-21 ).
2
Appeal2014-004018
Application 13/086,298
For groups (4) and (5), we select claims 8 and 14 as representative of the
groups, respectively. Any claim not argued separately will stand or fall
with our analysis of the rejection of claim 1.
FINDINGS OF FACT & ANALYSIS
CLAIMS 1 AND 8
Appellants argue that Wehling' s mention of vegetable oils as water
insoluble lubricants does not warrant a finding that Wehling teaches
safflower oil, sesame oil, sunflower oil, flax seed oil or wheat germ oil (App.
Br. 11). Appellants contend that Wehling does not teach using one of the
oils recited in claim 1 in an amount of 0 .1 % by weight to less than 2 % by
weight. Id. Appellants argue that Wehling teaches away from including oil
in the effervescent tablets because Wehling teaches that oil lubricants may
reduce the rate of dissolution and leave an opaque scum on top of the liquid.
Id. Appellants contend that Wehling's teaching regarding the addition of
water insoluble oils would not have motivated one skilled in the art to
modify Wehling's composition to arrive at the effervescent tablet of claim 1
(App. Br. 12).
Regarding claim 8, Appellants argue that no evidence is of record that
wheat germ oil is a known substitute for vegetable oils (App. Br. 16).
Appellants contend that even though Wehling discloses using wheat germ in
the tablet composition, wheat germ is a powder that would not have
suggested using wheat germ oil (App. Br. 16-17).
3
Appeal2014-004018
Application 13/086,298
The Examiner's findings and conclusions regarding Wehling are
located on pages 2-4 of the Non-Final Action dated July 25, 2013 1 and pages
2-5 of the Answer.
As found by the Examiner, Wehling teaches a preference for water
soluble lubricants, but does not teach away from using water insoluble oils
including vegetable oils (Ans. 6). In fact, Wehling teaches that water
insoluble vegetable oils may be included in the effervescent tablet in
amounts of 3% by weight or less (col. 4, 11. 31-39, 52). Wehling's
preference for a composition free of oil does not constitute a teaching away
as Wehling's disclosure also includes non-preferred embodiments that
include water insoluble oil (col. 4, 11. 53-60). In re Lamberti, 545 F.2d 747,
7 50 ( CCP A 197 6) (In an obviousness analysis, all disclosures of the prior art
are considered including non-preferred embodiments).
Although Appellants argue that Wehling' s disclosure of vegetable
oils does not warrant a finding that Wehling teaches the oils recited in claim
1, Appellants do not specifically contest the Examiner's finding that
Wehling's vegetable oils include wheat germ oil (Non-Final Act. 3; Ans. 6;
Reply Br. generally). The Examiner further finds that safflower, sesame,
and sunflower oil would have been obvious alternatives to cotton seed oil
(Ans. 2). We understand the Examiner to find that safflower, sesame and
sunflower oils are vegetable oils that are alternatives to cotton seed oil.
Appellants do not contest specifically this particular finding. We accept
these uncontested findings as fact. In re Kunzmann, 326 F.2d 424, 425 n.3
1 The Final Action merely responds to Appellants' arguments but does not
provide a statement of the rejection. The Non-Final Action of July 25, 2013
provides a full statement of the rejection on appeal. Therefore, we refer to
the Non-Final Action in the decision.
4
Appeal2014-004018
Application 13/086,298
( CCP A 1964) ("Since appellant has not shown this finding to be clearly
erroneous, we accept it as fact.").
The Examiner further finds that Wehling teaches that the amount of
insoluble oil in the effervescent tablet may be less than 3% by weight (col. 4,
11. 53-54). This range overlaps with Appellants' range of oil amounts (i.e.,
0 .1 % by weight to less than 2 % by weight) recited in claim 1, which would
have rendered the claimed amounts prima facie obvious. In re Peterson, 315
F.3d 1325, 1330 (Fed. Cir. 2003). Given the overlap in the amounts of
vegetable oils used by Wehling in the effervescent tablet, which are
undisputed to include sunflower, safflower, sesame and wheat germ oil, and
the claimed oil amounts, we find that the preponderance of the evidence
favors the Examiner's obviousness conclusion.
When the Examiner establishes a prima facie case of obviousness,
"[t]he burden then shifts to the applicant, who then can present arguments
and/or data to show that what appears to be obvious, is not in fact that, when
the invention is looked at as a whole." In re Dillon, 919 F.2d 688, 696 (Fed.
Cir. 1990) (en bane). Thus, "the burden of showing unexpected results rests
on he who asserts them." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972).
For the reasons below, Appellants failed to meet their burden of showing
unexpected results.
Specifically, Appellants argue that the evidence in Tables 1 to 3 on
pages 18, 20 and 21 of the Specification allegedly show unexpected results
(App. Br. 12-14). Appellants argue that they discovered that sweetening
agents, flavor agents, and oils can impact the dissolution time of an
effervescent tablet (App. Br. 12). Appellants argue that the tables show that
when wheat germ oil or safflower oil replaces mineral oil as the lubricant in
5
Appeal2014-004018
Application 13/086,298
an effervescent tablet having an orange flavoring agent or stevia sweetener
the tablet has a decreased dissolution time (App. Br. 13). Appellants
contend that Table 2 shows that when effervescent tablet formulations were
developed that did not have a flavoring agent or a sweetener, an increase in
dissolution time occurred (App. Br. 13). Appellants contend that this
increase in dissolution time underscores that the combination of a flavoring
agent or sweetener and oil achieves an unexpected result (decreased
dissolution time). Id.
Appellants' argument, however, does not include an explanation
demonstrating that the evidence is commensurate in scope with the claimed
invention. Appellants evidence does not show unexpected results occur over
the entire range of flavoring agent, sweetener and oil concentrations. Table
1, for example, only uses oil amounts of either 0.69% or 0.70%, flavoring
agent amounts of2.36% or 2.15% and sweetener amounts of 1.04%. Claim
1, however, includes oil amounts from 0.1 % to less than 2% by weight, and
sweeteners from about 2% to about 20% by weight. Appellants have not
explained why their very limited showing evinces unexpected results over
the entire range of oil or sweetener amounts.
On this record, we find that the preponderance of the evidence favors
the Examiner's obviousness conclusion with regard to claims 1 and 8.
CLAIM4
Appellants argue that Wehling fails to teach the claimed amount of
flavoring or coloring agent in combination with an oil and a sweetening
agent as recited in claim 4 (App. Br. 14-15). Appellants argue that Wehling
does not teach the amount of flavoring or coloring agent to add to the tablet
6
Appeal2014-004018
Application 13/086,298
compos1t10n such that there is no basis in the record for optlm1zmg the
amount of Wehling' s flavoring or coloring agent to an amount within the
claimed range (Reply Br. 5).
The Examiner finds that Wehling teaches using a flavoring agent but
is silent regarding the amount of the flavoring agent (Ans. 4). The Examiner
concludes that it would have been obvious to optimize the flavoring agent
amount in Wehling according to the desired taste preference. Id. The
Examiner finds that there is no unexpected result from the amount of
flavoring agent used. Id.
Appellants' arguments in the Reply Brief do not explain why the
Examiner's determination that it would have been obvious to optimize the
amount of flavoring agent to suit a taste preference and in so doing arrive at
a tablet composition with the amount of flavoring agent within the claimed
range constitutes reversible error. Appellants' allegation that there is no
basis in the record to optimize is unpersuasive because Wehling teaches that
flavoring agent may be added to the tablet such that it would have been
obvious to optimize the amount of flavoring agent to suit a desired taste. As
Wehling teaches that flavoring agents may be added to the tablet, such a
teaching would have suggested that flavoring agents are an important
constituent to the composition and the concentration of which is readily
optimizable to suit a desired taste. In re Aller, 220 F.2d 454, 456 (CCPA
1955) ("Normally, it is to be expected that a change in temperature, or in
concentration, or in both, would be an unpatentable modification."). Such
optimization of the flavoring agent amount would include concentrations
inclusive of the claimed flavoring agent amount range. A desired flavoring
7
Appeal2014-004018
Application 13/086,298
agent amount that includes the amount recited in claim 4 would have been
readily determined by the ordinarily skilled artisan to suit a desired taste.
Appellants' allegation of unexpected results with regard to the
amounts of flavoring agent and oil shown by comparison of Control 3 and
Example 3 are not commensurate in scope with the entire range of flavoring
agent concentrations and oil concentrations required by claim 4. Example 3
includes only 2.15% flavoring agent and 0.69% wheat germ oil (Spec. Table
1 ).
On this record, we affirm the Examiner's§ 103 rejection of claim 4.
CLAIM 5
Claim 5 depends from claim 4 and further narrows the amount of
flavoring agent from "4% by weight to about 20% by weight." As with
claim 4, Appellants contend that Wehling does not teach the amount of
flavoring agent to use in the tablet composition such that the Examiner's
obviousness conclusion is based upon impermissible hindsight (App. Br. 15-
16).
Appellants' arguments regarding claim 5 are unpersuasive for the
same reasons discussed above regarding claim 4. The Examiner's rejection
is not based upon impermissible hindsight but rather the teachings of the
references and what they would have suggested to the ordinarily skilled
artisan. Wehling teaches adding a flavoring agent, sweetener and vegetable
oils. The amount of flavoring agent and sweetener would have been readily
optimized based upon the desired taste. The amount of insoluble oil in
Wehling's tablet is disclosed as an overlapping range with that required by
claim 5.
8
Appeal2014-004018
Application 13/086,298
On this record, we affirm the Examiner's§ 103 rejection of claim 5.
CLAIM 14
Appellants argue that claim 14 requires a flavor agent comprising a
solid substrate component and a flavoring agent, and the Examiner has not
shown that Wehling's flavoring agent has the solid substrate (App. Br. 17-
18). Appellants contend that the Examiner improperly relies on the starch
binders to satisfy both the binder limitation of claim 1 and the solid substrate
limitation of claim 14 (App. Br. 17).
The Examiner finds that claim 14 is satisfied because the recited
ingredients in the claim are formed into a single tablet and Wehling' s tablet
contains the components of claim 14 (Ans. 4).
The Examiner, however, finds that the starch in Wehling satisfies both
the binder limitation of claim 1 and the solid substrate limitation of claim 14
(Ans. 3, 4). Claim 14 recites that in addition to the binder of claim 1, which
is included in claim 14 via its ultimate dependency on claim 1 via claim 5,
the flavoring agent contains a solid substrate. In other words, claim 14
includes two separate and distinct components of the tablet composition.
The Examiner has not shown where the tablet of Wehling includes a
flavoring agent having a solid substrate distinct from the binder of the tablet.
On this record, we cannot sustain and thus reverse the Examiner's
§ 103 rejection of claims 14 and 15 over Wehling.
CLAIM20
Appellants argue that Wehling fails to teach that the tablet
disintegrates in less than 150 seconds at 40°C (App. Br. 18). Appellants
9
Appeal2014-004018
Application 13/086,298
contend that Wehling only discloses disintegration of the tablet at 75°C,
which does not convey any information regarding the disintegration of the
tablet at 40°C. Id.
The Examiner finds that Wehling teaches the dissolution times of the
tablet in Table 1 and that the hydrophilic/lipophilic balance (HLB) is an
inherent property of the tablet (Non-final Act. 4-5). In other words, the
Examiner finds that Wehling' s composition that includes the same materials
recited in claim 20 would have the same property such that the tablet
dissolves in less than 150 seconds at 40°F.
Although Appellants argue that Wehling discloses that the tablet
dissolves at room temperature (e.g., 75°F), Wehling's composition having
the same materials as recited in claim 20 would reasonably have been
expected to have the same dissolution time at 40°F as recited in the claims.
In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appellants have the burden
of showing that Wehling' s tablets do not have the claimed property; they
have not satisfied that burden. Id.
On this record, we affirm the Examiner's§ 103 rejection of claims 20
and 26 over Wehling.
CLAIM27
Claim 27 depends from claim 26 and recites that the composition
includes wheat germ oil in an amount of 0.5% and the tablet dissolves in
40°F water in less than 150 seconds.
Appellants argue Wehling does not teach a tablet that contains 0.5%
wheat germ oil and dissolves in 40°F water in less than 150 seconds (App.
Br. 19-20).
10
Appeal2014-004018
Application 13/086,298
Appellants' argument is unpersuasive for the reasons discussed above
regarding claims 1, 8, and 20. We affirm the rejection of claim 27 for the
same reasons noted supra.
Independent CLAIM 2 8
Claim 2 8 includes all the limitations recited in claim 1, except that
instead of a sweetening agent (claim 1) the claim requires a flavoring agent
or coloring agent.
Appellants argue that Wehling does not teach how much flavoring
agent should be included in the effervescent tablet and so does not teach the
range of 2 to 20% flavoring agent or coloring agent recited in claim 28 (App.
Br. 20). Appellants argue that Wehling does not teach the flavoring agent
amount recited in claim 28 in combination with 0.1 % to 2% by weight of oil
(App. Br. 20). Appellants also argue that the same evidence from the
Specification argued with regard to claim 1 shows unexpected results (App.
Br. 21).
We are unpersuaded by these arguments for the same reasons
discussed with regard to claims 1 and 4. As noted above, Appellants'
evidence of unexpected results is not commensurate in scope with the
claims.
On this record, we affirm the Examiner's§ 103 rejection of claim 28
over Wehling.
CLAIM29
11
Appeal2014-004018
Application 13/086,298
Claim 29 depends from claim 28 and recites that the tablet includes at
least one of calcium phosphate, calcium phosphate dibasic, calcium
phosphate tribasic, and lecithin.
Appellants argue that the Examiner has not shown that calcium
phosphate is a well-known source of minerals (App. Br. 21 ). Appellants
further argue that Wehling does not teach the combination of tablet having
0.1 to less than 2 wt.% oil and calcium phosphate as required by claim 29.
(App. Br. 22).
The Examiner finds that Wehling teaches that the tablet may be used
for mineral supplementation and that calcium phosphate may be used at the
source of minerals (Non Final Act. 5). Wehling teaches that nine suitable
minerals include calcium and phosphorus and mixtures thereof (col. 5, 11. 23-
25). Wehling would have suggested that calcium phosphate as a suitable
mineral supplement. Appellants provide no evidence of unexpected results
in using calcium phosphate as the mineral source.
Appellants' argument regarding the amount of oil in combination with
calcium phosphate is unpersuasive for the same reasons discussed regarding
claim 1.
On this record, we affirm the Examiner's§ 103 rejection of claim 29
over Wehling.
DECISION
The Examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
12
Appeal2014-004018
Application 13/086,298
ORDER
AFFIRMED-IN-PART
13