Ex Parte Jager

Board of Patent Appeals and Interferences

Dec 23, 2002

08894193 (B.P.A.I. Dec. 23, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper No. 14

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARTIN JAGER
__________

Appeal No. 2001-2538
Application No. 08/894,193
__________

ON BRIEF
__________

Before SCHEINER, MILLS and GRIMES, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. § 134 from the examiner’s
final rejection of claims 21-38, all of the claims remaining. Claims 21, 27, 32, and
38 are representative and read as follows:
21. A method for visual and sensorial stabilization of a foodstuff
composition, said foodstuff composition containing an amino
component and a food-preserving amount of sorbic acid or at least
one physiologically-acceptable sorbate salt or a combination of
sorbic acid and the sorbate salt, which comprises adding a
discoloration-inhibiting amount of discoloration inhibitor comprising
allantoin to the foodstuff composition.

27. A method as claimed in claim 21, wherein the discoloration inhibitor
comprises allantoin and citrate component, wherein the citrate
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component is citric acid, a physiologically-acceptable citrate salt, or
a combination of citric acid and the citrate salt.

32. A foodstuff composition stabilized against color changes
comprising: an amino component; as at least one preservative, a
food-preserving amount of sorbic acid or at least one
physiologically-acceptable sorbate salt or a combination of sorbic
acid and sorbate salt; and, as a discoloration inhibitor, a
discoloration-inhibiting amount of allantoin.

38. A cosmetic composition stabilized against discoloration,
comprising:

an amino component which accelerates discoloration,
from 0.005 to 5% by weight, calculated as sorbic acid, of
sorbic acid, a sorbate salt, or a combination thereof,

from 0.001 to 10% by weight of allantoin, and

from 0.05 to 5% by weight of citric acid, a salt thereof, or a
combination thereof.

The examiner relies on the following reference:
Hirohata et al. (Hirohata) JP 5-339135 Dec. 21, 1993
Claims 21, 27, 32, and 33 stand rejected under 35 U.S.C. § 112, first
paragraph, as inadequately described in the specification.
Claims 21-38 stand rejected under 35 U.S.C. § 103 as obvious in view of
Hirohata.
We reverse both rejections.
Background
“Sorbic acid (2,4-hexadienoic acid) and its salts . . . have been used
worldwide for many years for preserving foodstuffs.” Specification, page 1. “In
the solid form, sorbic acid and sorbates are stable. In aqueous solutions, in
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foodstuffs and in cosmetic compositions, however, sorbic acid is subject to
oxidative influences.” Id., page 2. The oxidation of sorbic acid can produce off-
flavors and brown discoloration of food or cosmetic products. See id.
Attempts have been made to prevent sorbate-induced discoloration using,
for example, EDTA or citrates. See the specification, page 4. In addition, the
specification cites Hirohata as disclosing the use of allantoin to inhibit sorbate-
induced discoloration in mouthwashes, toothpastes, and denture-cleaning
compositions, but expresses doubt whether this solution would be generally
applicable. See pages 4-5. That is, “since they generally comprise no amino
components which accelerate discoloration, oral hygiene compositions do not
make too high a demand on the browning-inhibiting substance.” Id. See also
page 8 (“Amino groups precisely are regarded as an additional ‘risk factor’ with
respect to sorbate-induced discolorations.”).
The specification discloses “a method for visual and sensorial stabilization
of foodstuffs and cosmetic compositions containing sorbate preservative, which
comprises adding allantoin or allantoin and citrates to these products as
browning inhibitors.” Page 5. The specification discloses that allantoin inhibits
browning even in compositions containing both sorbates and an amino acid. See
page 11, lines 10-15 (“As expected, with the addition of an amino acid, for
example alanine, the discoloration of the control (without allantoin and citrates) is
accelerated, while the protective action of allantoin and the synergistic mixture of
allantoin and citrate is documented again (see Table 4).”).
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Discussion
The claims are directed to a method of stabilizing food containing sorbic
acid and/or a sorbate salt, by adding allantoin, either alone or in combination with
citric acid and/or a citrate salt. The claims also encompass food and cosmetic
products so treated. The examiner rejected some of the claims as lacking an
adequate written description, and rejected all of the claims as obvious over
Hirohata.
1. Written description
The examiner rejected claims 21, 27, 32, and 33 under 35 U.S.C. § 112,
first paragraph, on the basis that they were not adequately described by the
specification. The rejected claims all recite either (a) sorbic acid, a sorbate salt,
or a combination of the two, or (b) citric acid, a citrate salt, or a combination of
the two. The examiner’s rejection is based on the claims’ recitation of a
combination of sorbic acid and a sorbate salt, or the combination of citric acid
and a citrate salt. See the Examiner’s Answer, pages 4-5:
The appellant originally claimed a method for visual and sensorial
stabilization applied to a foodstuff composition comprising adding
sorbate or sorbic acid. . . . The appellant also originally claimed a
method for visual and sensorial stabilization applied to a foodstuff
composition comprising adding citrate or citric acid. . . . [T]he
specification as originally filed does not suggest that appellant had
possession of the concept of the invention that is now claimed, a
combination of sorbic acid and sorbate, and a combination of citric
acid and citrate.

The examiner “‘bears the initial burden . . . of presenting a prima facie
case of unpatentability.’ In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). Insofar as the written description requirement is
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concerned, that burden is discharged by ‘presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description of
the invention defined by the claims.’ . . . If . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the identical
words), then the examiner . . ., in order to meet the burden of proof, must provide
reasons why one of ordinary skill in the art would not consider the description
sufficient.” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996).
We agree with Appellant that the examiner has not met the initial burden
of proof. Appellant points to several passages of the originally filed specification
as supporting the disputed limitation, including original claim 2 and page 6, lines
7-10 of the specification. See the Appeal Brief, pages 8-10.
Original claim 2 reads as follows (emphasis added): “2. The method
according to claim 1, wherein the foodstuffs and cosmetic compositions
containing sorbate preservative comprise the preservative both in the form of
sorbic acid and as a physiologically acceptable salt thereof, in particular
potassium sorbate or calcium sorbate.” Page 6, lines 7-10 of the specification
reads as follows (emphasis added): “If citrates (for example citric acid or
disodium citrate) are additionally employed as complexing agents, sorbate-
induced discolorations can be prevented virtually entirely.” We also note page 5,
lines 30-33, which reads (emphasis added): “The foodstuffs and cosmetic
compositions containing sorbate preservative can comprise the preservative here
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both in the form of free sorbic acid and as the physiologically acceptable salts
thereof.”
The examiner has not adequately explained why these passages would
not have been read, by a person skilled in the art of food chemistry, to support
the claim limitation allowing the use of a combination of sorbic acid and a sorbate
salt, or a combination of citric acid and a citrate salt. The rejection under 35
U.S.C. § 112, first paragraph, is reversed.
2. Obviousness
The examiner rejected all of claims 21-38 as obvious in view of Hirohata.
The examiner characterized Hirohata as
describ[ing] the method for visual and sensorial stabilization of a
cosmetic composition containing sorbic acid or its salt, and allantoin
for use as a browning inhibitor. He also describes the addition of a
citrate. . . . Optimization of amounts is considered within the skill of
the artisan, absent evidence to the contrary.

Examiner’s Answer, page 5. The examiner concluded that
Hirohata describes all of the limitations of appellant[’]s claims
except for the presentation of the sorbate concentration calculated
as a sorbic acid. . . .
. . .
It would have been obvious to one of ordinary skill in the art at the
time of the invention to use the composition of Hirohata to meet
appellant[’]s composition as claimed. The motivation for using
Hirohata is that he provides similar active ingredients, sorbates,
citrates and allantoins in a cosmetic composition for the same
purpose of inhibiting discoloration. The reasonably expected result
is an improved method of inhibiting discolorations that is effective in
guarding against bacteria as well as enhancing the cosmetic
appearance of the dentifrice.

Id., page 6.
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Appellant argues that the examiner has not made out a prima facie case
of obviousness. Appeal Brief, pages 11-14. Appellant also argues that the
degree of synergism observed between allantoin and citrate is unexpectedly
great. Appeal Brief, pages 14-15.
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial
burden of presenting a prima facie case of obviousness. Only if that burden is
met, does the burden of coming forward with evidence or argument shift to the
applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). The prima facie case must account for all the limitations of the claims.
See In re Angstadt, 537 F.2d 498, 501, 190 USPQ 214, 217 (CCPA 1976) (“[W]e
must give effect to all claim limitations.” (emphasis in original)).
Here, the examiner has not shown that the prior art would have taught or
suggested all of the limitations of the instant claims. First, the examiner
concedes that the product disclosed by Hirohata is not a “foodstuff composition,”
as required by most of the claims. Rather, Hirohata discloses compositions for
cleaning dentures. The examiner provides no explanation of how this admittedly
“cosmetic composition,” Examiner’s Answer, page 5, would have suggested the
“foodstuff compositions” and related methods defined by appealed claims 21-37.
Claim 38 is the only claim on appeal that is directed to a “cosmetic
composition.” That claim, however, also contains a limitation that was not
addressed in the examiner’s rejection. Claim 38 defines a cosmetic composition
comprising, inter alia, “an amino component which accelerates discoloration.”
The instant specification states that oral hygiene compositions like those
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Application No. 08/894,193

disclosed by Hirohata “generally contain no amino components that accelerate
discoloration.” Page 5. The examiner has pointed to no evidence to the
contrary, nor provided any evidence or scientific reasoning to show that such
compositions would have been suggested by Hirohata’s disclosure.
Claims 21-37 also require that the claimed foodstuff compositions
comprise “an amino component.” The examiner argues that this claim limitation
reads on the allantoin present in all of Hirohata’s disclosed oral hygiene
compositions, as well as the EDTA present in the exemplary mouthwash
composition shown in Table 1.1 We disagree with the examiner’s claim
construction. Although claims are given their broadest reasonable interpretation
during examination, a construction that vitiates an express limitation is
unreasonably broad. See Texas Instruments, Inc. v. International Trade Comm.,
988 F.2d 1165, 1171, 26 USPQ2d 1018, 1023 (Fed. Cir. 1993) (“[T]o construe
the claims in the manner suggested by TI would read an express limitation out of
the claims. This we will not do.”).
Here, the claims define a method that comprises adding allantoin to a
“foodstuff composition containing an amino component.” It is true that allantoin
contains three secondary amino groups and one primary amino group.
Specification, page 8. However, if “an amino component” were construed to
include the allantoin added to the claimed composition, the limitation requiring

1 The examiner also argues that “amino acids are present in a wide variety of foodstuffs so that
the leftovers and contaminants from eating, as shown on p. 4 of Hirohata, would reasonably be
expected [to] remain in the oral cavity when sorbate and allantoin are administered.” Examiner’s
Answer, page 8. We need not dwell on this line of argument; Appellant’s Reply Brief (pages 5-7)
ably points out the deficiencies in the examiner’s reasoning.
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Application No. 08/894,193

that the composition contain an amino component would be rendered
meaningless. Such a construction is unreasonably broad and we decline to
adopt it.
The examiner’s argument that EDTA should be considered an “amino
component” is a closer call, but ultimately unpersuasive. In the examiner’s favor,
EDTA (ethylene diamine tetraacetic acid), comprises amino groups and there is
nothing in the claim language to prevent construing “amino component” to
include EDTA. In addition, the specification does not provide an express
definition of “amino component” that would exclude EDTA. See Optical Disc
Corp. v. Del Mar Avionics, 208 F.3d 1324, 1334, 54 USPQ2d 1289, 1295 (Fed.
Cir. 2000) (“Without evidence in the patent specification of an express intent to
impart a novel meaning to a claim term, the term takes on its ordinary
meaning.”). The ordinary meaning of “amino component” would seem to
encompass all amines, not just primary and secondary amines.
Appellant, however, argues that the “amino component” recited in the
claims refers to primary or secondary amino groups.2 See the Appeal Brief, page
11. In Appellant’s favor, the specification emphasizes the interactions between
allantoin and primary or secondary amino groups. See, e.g., page 2
(“[A]ldehydes and ketones . . . can be formed by oxidative cleavage of the double
bonds [of sorbic acid]. Polymerization products of these aldehydes, like the
reaction products of these aldehydes with amino acids or other primary and

2 The amino groups in EDTA, by contrast, are tertiary amino groups. See the Appeal Brief, page
12.
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Application No. 08/894,193

secondary amino groups, can also be responsible for color changes.”); page 5
(“[D]egradation products of sorbic acid formed oxidatively can react to a
particular extent with foodstuff constituents of high nutritional physiology value,
such as amino acids.”); and page 8 (“The fact that allantoin, although it contains
three secondary amino groups and one primary amino group, is capable of
preventing sorbate-induced discolorations in cosmetic compositions and
foodstuffs seems particularly surprising. Amino groups are regarded as an
additional ‘risk factor’ with respect to sorbate-induced discolorations.”).
We find it unnecessary to precisely construe this claim term, however,
because the rejection must be reversed even under the examiner’s claim
construction. The only composition disclosed by Hirohata that contains EDTA is
the exemplary mouthwash composition shown on page 11 of the English-
language translation. See Table 1. The examiner does not dispute that the
disclosed mouthwash is not a “foodstuff composition” as required by claims
21-37. See the Examiner’s Answer, page 5: “Hirohata describes the method for
visual and sensorial stabilization of a cosmetic composition containing sorbic
acid” (emphasis added). Thus, Hirohata does not inherently meet the limitations
of the claims, and the examiner has provided no clear rationale why Hirohata
would have led a person skilled in the art to modify an EDTA- and sorbate-
containing foodstuff composition by adding a discoloration-inhibiting amount of
allantoin to it.
Nor does the mouthwash composition meet the limitations of claim 38.
Even if a mouthwash is a cosmetic composition, the evidence shows that EDTA
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is not an “amino component which accelerates discoloration,” as required by the
claim. Rather, EDTA inhibits sorbate-induced discoloration. See the
specification, page 4 (“[C]omplexing agents (EDTA or citrates) . . . slow down
sorbate-induced brown discolorations by complexing pro-oxidative metal ions.”).
Since we conclude that the examiner has not made out a prima facie case
of obviousness, we need not address Appellant’s allegation of unexpected
results.
Summary
The claimed invention is adequately described by the specification and
would not have been rendered obvious by Hirohata. We therefore reverse the
rejections under 35 U.S.C. §§ 103 and 112, first paragraph.

REVERSED

Toni R. Scheiner )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Demetra J. Mills )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Eric Grimes )
Administrative Patent Judge )

EG/dym
Appeal No. 2001-2538 Page 12
Application No. 08/894,193

Connolly and Hutz
P.O. Box 2207
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