Ex Parte Hiroe et al

Patent Trial and Appeal Board

Jan 11, 2018

11992603 (P.T.A.B. Jan. 11, 2018)

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.
11/992,603 03/26/2008 Mika Hiroe 080079 9330
23850 7590 01/11/2018
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
01/11/2018 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 MIKA HIROE, YOHEI KATAOKA, TAKAHIRO FUNAMI,
TAKASHI KONDA, CHIHIRO TOMITA, SATOSHI TOYOIZUMI,
TOMOHIRO HOSOMI, and SAYAKAISHIHARA1
Appeal 2018-001469
Application 11/992,603
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and
SHELDON M. McGEE, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants appeal from the Examiner’s
rejection of claims 15—25 under 35 U.S.C. § 103(a) as unpatentable over
Nishimoto (JP 2000-014336; Jan. 18, 2000; as translated) in view of Weibel
(US 5,008,254; Apr. 16, 1991). We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
1 “SAN-EI GEN F.F.I., INC.” is identified as the real party in interest (App.
Br. 2).
Appeal 2018-001469
Application 11/992,603
Appellants claim a method of preparing an emulsion composition
comprising, inter alia, heating sugar beet pectin at a relative humidity of 20
to 90% at a temperature of 50 to 150°C for 1 to 48 hours to create a
modified pectin, which is then mixed with other materials and emulsified
(independent claim 15; see also independent claim 18).
A copy of representative claim 15, taken from the Claims Appendix of
the Appeal Brief, appears below.
15. A method of preparing emulsion composition
comprising:
(1) heating sugar beet pectin in powder form in a state
unmixed with proteins at a relative humidity of 20 to 90% at a
temperature of 50 to 150°C for 1 to 48 hours, to create a
modified pectin;
(2) mixing the modified pectin with raw materials for
emulsion compositions;
and
(3) emulsifying the mixture obtained in step (2).
We sustain the Examiner’s rejection for the reasons given in the Final
Office Action, the Answer, and below.
The Examiner concludes that Nishimoto and Weibel evince that it
would have been obvious to prepare emulsion compositions by heating sugar
beet pectin under the relative humidity, temperature, and time conditions
required by representative claim 15 (Final Action 2—5).
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Appeal 2018-001469
Application 11/992,603
Appellants do not dispute that the Examiner has established a prima
facie case of obviousness, but rather argue that their Specification and
Declaration evidence of record establish non-obviousness by showing
unexpected results are obtained when heating sugar beet pectin in particular
under the claimed heat-treatment conditions (App. Br. 12—17).2 More
pointedly, Appellants contend that the particle size data in Table 1 of
Declarations V and VI show the modified sugar beet pectins of their
inventive examples give better emulsifying activity and emulsion stability
than the unmodified sugar beet pectin of the comparative example (id. at 12—
13). According to Appellants, “[this] significant advantageous effect is seen
by treating sugar beet pectin at heat-treatment conditions across the
temperature/humidity/time ranges in the present claims” (id.).
The Examiner considers Appellants’ evidence to be not commensurate
in scope with the broad ranges of relative humidity, temperature, and time
recited in representative claim 15 (Ans. 6—8; see also Final Action 6—7).
Concerning Declarations V and VI specifically, the Examiner states that the
results “show that treatment of pectin at lower temperatures and at lower
values of relative humidity for shorter periods of time as recited produce
emulsions with properties similar to the unmodified pectin” (Ans. 7; see also
Final Action 7).
2 Appellants do not present arguments specifically directed to the dependent
claims under rejection (see generally App. Br.). Therefore, the dependent
claims will stand or fall with their parent independent claims of which claim
15 is representative.
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Appeal 2018-001469
Application 11/992,603
Appellants reply by urging that the combined evidence of their
Specification and Declarations including Declarations V and VI shows
unexpected results across their claimed ranges of relative humidity,
temperature, and time (Reply Br. 2—5). Regarding the Examiner’s position
that the Declaration V results show lower heat-treatment values produce
modified pectin emulsions with properties similar to the unmodified pectin
emulsion, Appellants state that “the result values [achieved by heating at
50°C] for [inventive] Preparation Examples 30-32 [of Declaration V], in
particular the values for ‘After 3 days of storage at 60 °C,’ are considerably
lower than the values for Comparative Preparation Example 1” (id. at 5).
We agree with the Examiner that Appellants fail to carry their burden
of showing unexpected results commensurate in scope with representative
claim 15. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (“After a
prima facie case of obviousness has been established, the burden of going
forward shifts to the applicant.”); In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972) (“[T]he burden of showing unexpected results rests on [the party] who
asserts them.”). See also In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
(“Evidence of secondary considerations must be reasonably commensurate
with the scope of the claims.”).
For example, Declaration V shows results “After 3 days of storage at
60° C” for inventive Preparation Example 6 which are less than 2% better
than Comparative Preparation Example 1. Such modest results also are
shown by inventive Preparation Example 12 which are less than 3% better
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Appeal 2018-001469
Application 11/992,603
and inventive Preparation Example 4 which are less than 6% better.3
Neither Appellants nor Declarant explain why such limited improvements
are considered to be unexpected results as opposed to deviations which are
typical and therefore expected in this art. Indeed, the Declarant does not
describe any of the inventive-example results as unexpected but rather
merely describes them as better, stating “Table 1 clearly shows that the heat-
treated sugar beet pectin (Preparation Examples 1 to 33) has better
emulsifying activity and emulsion stability than the unmodified sugar beet
pectin (Comparative Examples)” (Decl. V 3^4; underlining added).
Declaration VI presents a /-test reproduction of Declaration V
Examples 1,7, 11, 13, and 22, but not the above-mentioned Examples 6, 12,
and 4. Accordingly, Declaration VI fails to provide any clarifying
information as to whether the results of Examples 6, 12 and 4 are merely
typical (i.e., expected) deviations. We emphasize, however, that Declaration
VI reflects that deviations occur in this art, for example, by showing an
average improvement “After 3 days of storage at 60°C” of greater than 10%
for reproduced inventive Example 7, whereas Example 7 of Declaration V
shows an improvement of less than 8%. Additionally, we observe that
Declaration VI states “the emulsifying properties were improved in all of the
Preparation Examples in . . . Declaration [V] to an extent equivalent to or
even greater than that in Preparation Examples 1,7, 11, 13, and 22 [of
3 Consistent with the Examiner’s earlier quoted criticism of Declaration V
(see Ans. 7), the Examples 6, 12, and 4 involve heating at 60°C which is a
relatively lower temperature in the 50 to 150°C range claimed by
Appellants.
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Appeal 2018-001469
Application 11/992,603
Declaration VI]” (Decl. VI 6). However, this statement appears to be
contradicted by the less than 2% improvement in emulsifying properties
shown by Preparation Example 6 of Declaration V.
Finally, we emphasize that Appellants fail to identify any data in their
Specification and Declaration evidence wherein all three of the humidity,
temperature, and time conditions recited in claim 15 simultaneously occupy
values at the extreme ends of the claimed ranges. For this additional reason,
Appellants’ evidence is not commensurate in scope with their claimed
subject matter.
For the reasons given above and expressed by the Examiner, the
arguments and evidence before us weigh most heavily in favor of an
ultimate conclusion of obviousness. We, therefore, sustain the § 103
rejection of claims 15—25 as unpatentable over Nishimoto in view of Weibel.
DECISION
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 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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