Ex Parte Khare

Board of Patent Appeals and Interferences

Sep 28, 2006

10236111 (B.P.A.I. Sep. 28, 2006)

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for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANIL BHAGWAN KHARE
____________

Appeal 2006-2130
Application 10/236,111
Technology Center 1700
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Decided: September 28, 2006
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Before GARRIS, KRATZ, and GAUDETTE, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the Examiner’s final rejection of claims 1-20.
We have jurisdiction pursuant to 35 U.S.C. § 134.

Appeal 2006-2130
Application 10/236,111

Appellant’s invention is directed to a sterol ester composition, a
confectionary product containing such a composition, and a method for
producing such a composition. Claim 1 is illustrative and reproduced below:
1. A composition comprising a steryl ester, wherein the sterol moiety
of said steryl ester is a phytosterol and the ester moiety of said steryl ester
comprises a blend of fatty acids, wherein said blend of fatty acids comprises
at least 80% oleic acid.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Schul US 2002/0016317 Feb. 7, 2002
Daniel Swern, Bailey’s Industrial Oil and Fat Products, Vol. 1, 4th edition,
John Wiley & Sons, New York, p. 370 (1979)
Dimitrios Boskus, Olive Oil Chemistry and Technology, AOCS, Press,
Champaign, Illinois, p. 52-53 (1996)

Claims 1-20 stand rejected under 35 U.S.C. § 103 (a) as being
unpatentable over Schul as further evidenced by Baileys and Olive Oil
Chemistry.1
OPINION
We have reviewed each of Appellant’s arguments for patentability.
However, we are in agreement with the Examiner that the claimed subject

1 The Examiner omits an introductory sentence listing the rejected claims (by
claim number) and identifying the references relied upon in the statement of
the rejection in the Answer. However, that error is harmless in that
Appellant recognizes the evidence relied upon by the examiner in the Brief
and Appellant identifies claims 1-20 as the claims subject to the sole ground
of rejection before us on appeal. Moreover, the Examiner furnishes a listing
of the relied upon evidence at page 3 of the Answer that corresponds with
the evidence referred to by Appellants and is the same evidence employed in
the final Office action rejection and the body of the rejection in the Answer.
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Appeal 2006-2130
Application 10/236,111

matter would have been obvious to one of ordinary skill in the art within the
meaning of § 103 in view of the applied prior art. Accordingly, we will
sustain the Examiner’s rejection for essentially the reasons expressed in the
Answer. We add the following for emphasis.
Appellant does not argue the claims separately. Thus, we select
claim 1 as the representative claim on which we shall decide this appeal.
Schul discloses or suggests compositions comprising a sterol ester
wherein the sterol moiety of the sterol ester is a phytosterol (plant sterol) and
the ester moiety is a blend of fatty acids comprising oleic acids in amounts
that overlap the representative claim 1 range of at least 80 percent oleic acid.
See, for example, paragraphs 0016, 0045, 0046 and 0048 of Schul. In this
regard, we note that the Examiner cites Baileys and Olive Oil Chemistry to
evidence that olive oil is known to contain up to 82 percent oleic acid.
Moreover, we note that Schul (para. 0045) teaches the use of high oleic
sunflower oil as a suitable fatty acid ester.2 Consequently, we agree with the
Examiner that the evidence relied upon makes out a prima facie case of
obvious for the subject matter of representative claim 1. See In re Peterson,
315 F.3d 1325, 1329-30, 65 USPQ2d 1379, 1382 (Fed. Cir. 2003) (“A
prima facie case of obviousness typically exists when the ranges of a
claimed composition overlap the ranges disclosed in the prior art…”); In re
Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); and
In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir.
1990).

2 Appellant acknowledges (Specification, p. 4, ll. 7-18) that known high oleic
sunflower oils contain oleic acid contents within the claimed range of at
least 80 percent oleic acid.
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Appeal 2006-2130
Application 10/236,111

Appellant argues that the most preferred range of monounsaturated
fatty acids (MUFAs) disclosed by Schul has an upper limit of 75 percent
MUFAs, which would represent a value of oleic acid content outside the
claimed range. Such argument is unpersuasive in that Schul’s teachings are
not limited to the most preferred range described therein. Concerning this
matter, it is well settled that a reference must be considered in its entirety,
and it is well-established that the disclosure of a reference is not limited to
preferred embodiments or specific working examples contained therein. See
In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (CCPA
1982); In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA
1976). In this regard, we are bound to consider the disclosure of each
reference for what it fairly teaches one of ordinary skill in the art, including
not only the specific teachings, but also the inferences which one of ordinary
skill in the art would reasonably have been expected to draw therefrom. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966); and In re
Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968).
In the case before us, there is ample direction in the applied prior art
for reasons set forth above and in the Answer that would have suggested the
use of an ester moiety with an oleic acid content within the claimed range in
formulating the sterol ester composition of Schul. In this regard, the mere
fact that Schul may suggest sterol ester compositions having an oleic acid
content outside of the here claimed oleic acid content range does not detract
from Schul’s teachings using sterol ester compositions that include oleic
acid moiety contents within the here claimed range. Indeed, Schul (para.
0017) notes expected health benefits are associated with high levels of
MUFAs. While solubility of the sterol compositions is a concern noted by
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Appeal 2006-2130
Application 10/236,111

Schul, the patent publication does not teach that providing oleic acid
contents above 80 percent results in an unworkable solubility, as Appellant
seems to suggest (Br. 3-4). Rather, Schul (para. 0010) teaches that
esterification increases plant sterol solubility. Moreover, Schul (para. 0018)
discloses/suggests that the esterified sterol using MUFAs as the ester moiety,
such as those inclusive of the here claimed oleic acid content, has the
additional advantageous property of remaining clear and uncloudy when
mixed with other clear edible oils.
As a final point, we note that Appellant has not argued, much less
furnished persuasive evidence to establish, that the representative claim 1
composition is attended by unexpected results.
On this record, we shall sustain the Examiner’s obviousness rejection.
CONCLUSION
The decision of the Examiner to reject claims 1-20 under 35 U.S.C. § 103
(a) as being unpatentable over Schul as further evidenced by Baileys and
Olive Oil Chemistry is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

sld

JEFFREY J. SKELTON
P.O. BOX 5624
MINNEAPOLIS, MN 55440
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