Ex Parte Marritt

Board of Patent Appeals and Interferences

Nov 21, 2003

09357393 (B.P.A.I. Nov. 21, 2003)

1
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not written for publication and is not binding precedent of the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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte WILLIAM ALAN MARRITT
__________
Appeal No. 2003-1010
Application 09/357,393
___________
ON BRIEF
___________
Before KIMLIN, WARREN and OWENS, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal is from the final rejection of claims 1-7, which
are all of the claims in the application.
THE INVENTION
The appellant claims a process for producing polyguluronic
acids wherein, because an organic base rather than an inorganic
base is used to neutralize alginic acid, a solution containing
5 wt% or more of alginic acid is obtained and the polyguluronic
Appeal No. 2003-1010
Application 09/357,393

1 The appellant states that “[t]he expression ‘substantially
free of mannuronic acid contamination’ as used herein means that
the mannuronic acid content is less than about 8 wt.%, and
preferably less than about 5 wt.%” (specification, page 5,
lines 33-36).
2
acid produced has a degree of polymerization of less than 20 and
is substantially free of mannuronic acid contamination.1 Claim 1
is illustrative:
1. A process for producing polyguluronic acids, having
degrees of polymerization less than 20 and substantially free of
mannuronic acid contamination, comprising the steps of:
(a) providing a solution containing 5 wt.% or more of
alginic acid prepared by dissolving alginic acid by
neutralization with an organic base;
(b) hydrolyzing the alginic acid to low molecular weight
components including polyguluronic acids while maintaining the pH
of the solution on the acid side of neutrality;
(c) acidifying the solution to selectivity precipitate
acids; and
(d) separating the polyguluronic acids from the acidified
solution.
THE REFERENCES
Yamada 5,558,973 Sep. 24, 1996
Arne Haug et al. (Haug), “Studies on the Sequence of Uronic Acid
Residues in Alginic Acid”, 21 Acta Chem. Scand. 691-704 (1967).
Doublier and Cuvelier (Doublier), “II. Behavior of
Polysaccharides in Aqueous Solutions - A. Solubilization: A
Critical Step”, in Carbohydrates in Food 287-89 (Ann-Charlotte
Eliasson ed., Marcel Dekker 1996).
Appeal No. 2003-1010
Application 09/357,393

2 The appellant states that it is the use of an organic base
to neutralize the alginic acid which enables the solution to
contain 5 wt% or more of alginic acid and enables the
polyguluronic acid to have a degree of polymerization of less
than 20 and to be substantially free of mannuronic acid
(specification, page 5, lines 1-15).
3
THE REJECTION
Claims 1-7 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Haug in combination with Doublier and Yamada.
OPINION
We reverse the aforementioned rejection. We need to address
only claim 1, which is the sole independent claim.
It is undisputed that Haug, which is discussed in the
appellant’s specification (page 2, line 16 - page 4, line 26),
discloses each step of the appellant’s claim 1 except that Haug
uses, in the appellant’s step (a), an inorganic base rather than
an organic base to neutralize the alginic acid (answer, page 4,
reply brief, page 3).2
The portion of Doublier relied upon by the examiner
discloses that “[t]he less easily soluble polysaccharides are the
more hydrophilic ones” (page 289).
The portion of Yamada relied upon by the examiner discloses
that alginic acid derivatives include salts of alginic acid and
organic bases (col. 12, lines 63-66).
Appeal No. 2003-1010
Application 09/357,393

4
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The examiner argues that in view of Doublier’s disclosure,
“one of skill in the art would recognize that neutralization of a
polysaccharide with an organic base for the formation of an
organic salt would be desired to increase solubility” (answer,
page 5). The examiner, however, has not pointed out where Haug
teaches that increased solubility of his neutralized alginic acid
is desirable. The teaching of that desirability relied upon by
the examiner appears to come from the appellant’s specification.
Also, the examiner has not pointed out where Doublier discloses a
step of rendering a polysaccharide less hydrophillic, much less
doing so by reacting a polysaccharide with an organic base. The
examiner appears to rely upon the appellant’s specification for a
disclosure of such a step and for a disclosure of using an
organic base in that step.
Appeal No. 2003-1010
Application 09/357,393

5
The examiner relies upon Yamada only for a teaching that
forming an alginate by reacting alginic acid with an organic
base is not novel (answer, page 8). Yamada’s alginic acid salt
is a component of a heat-developable color light-sensitive
material (col. 4, lines 16-26). The examiner has not explained
why Yamada would have fairly suggested, to one of ordinary skill
in the art, reacting alginic acid with an organic base to render
the alginic acid less hydrophilic. Nor has the examiner set
forth any other reason why one of ordinary skill in the art would
have been led by Doublier and Yamada to combine their teachings
relied upon by the examiner.
The examiner, therefore, has not carried the burden of
establishing that the applied prior art itself would have fairly
suggested the appellant’s claimed invention to one of ordinary
skill in the art. The record indicates that the examiner used
the appellant’s specification as a template for piecing together
the disclosures of the applied prior art to arrive at the
appellant’s claimed invention, which is improper. See Fritch,
972 F.2d at 1266, 23 USPQ2d at 1784. Accordingly, we reverse the
examiner’s rejection.
Appeal No. 2003-1010
Application 09/357,393

6
DECISION
The rejection of claims 1-7 under 35 U.S.C. § 103 over Haug
in combination with Doublier and Yamada is reversed.
REVERSED
)
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES F. WARREN )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
TERRY J. OWENS )
Administrative Patent Judge )
TJO/ki
Appeal No. 2003-1010
Application 09/357,393

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