Ex Parte Pak et al

Board of Patent Appeals and Interferences

Mar 25, 2010

11183140 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CHARLES Y.C. PAK, KHASHAYAR SAKHAEE,
and NEILL B. WALSDORF SR.
__________

Appeal 2009-010246
Application 11/183,140
Technology Center 1600
__________

Decided: March 26, 2010
__________

Before TONI R. SCHEINER, RICHARD M. LEBOVITZ, and STEPHEN
WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
composition. The Patent Examiner rejected the claims on the grounds of
anticipation and obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
According to the Specification, potassium citrate and calcium citrate
are commonly prescribed for treatment of kidney stones and osteoporosis,
respectively. (Spec. 1:[0001].) The Specification discloses that “the
combination of commonly used doses of potassium citrate . . . and calcium
citrate . . . , which deliver potassium and calcium at a molar ratio of 2:1, is
better than calcium citrate in averting bone loss, and is better than potassium
citrate in preventing kidney stone formation.” (Id. at 3:[0012].)
Claims 1-15 are on appeal.1 Claim 1 is representative and reads as
follows:
1. A composition consisting essentially of a mixture of potassium citrate,
citric acid and a component selected from the group consisting of
calcium carbonate, calcium hydroxide, calcium oxide and any
combination thereof.

The Examiner rejected the claims as follows:
• claims 1, 2 and 8-10 under 35 U.S.C. § 102(b) as anticipated by
Buddemeyer;2
• claims 1 and 6-9 under 35 U.S.C. § 102(e) as anticipated by Chang;3
and
• claims 1-15 under 35 U.S.C. § 103(a) as unpatentable over
Buddemeyer and Chang.

1 Appellants state that claims 16-27 were withdrawn from examination.
(App. Br. 4.)
2 U.S. Patent No. 6,599,544 B2, issued to Bruce Buddemeyer et al., Jul. 29,
2003.
3 U.S. Patent No. 7,052,725 B2, issued to Pei K. Chang et al., May 30,
2006.
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The claims are not separately argued in the respective rejections, and
we select claim 1 as representative of the claims in each rejection. 37 C.F.R.
§ 41.37(c)(1)(vii).
CLAIM INTERPRETATION
Issue
Claim 1 recites a composition “consisting essentially of” a mixture of
three ingredients, but the Patent Examiner determined that the
“[S]pecification does not support the phrase to exclude additional
ingredients.” (Ans. 6-7.) Accordingly, the Examiner found that prior art
references disclosing compositions including the three recited ingredients
and others, anticipated the claims.
Appellants dispute the Examiner’s broad claim interpretation and
argue that the Examiner’s reasoning
is wrong on two counts: 1) under no circumstances does the
controlling case law require that the transition “consisting
essentially of” is to be construed equivalently to the transition
“comprising,” and 2) the applicants have made sufficiently
clear in the specification, to one of ordinary skill in the art, the
permissible scope of additional components allowable under the
transitional phrase “consisting essentially of.”

(App. Br. 9.)
According to Appellants, one of ordinary skill in the art would
recognize additional ingredients which do not materially affect the
composition, and support for that argument is in the Specification examples
at paragraphs [0053]-[0064] and pending claims 6 and 7. (Reply Br. 5. )
The issue to be decided is whether the Specification identified what
Appellants regard as constituting a material change in the basic and novel
characteristics of the invention.
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Findings of Fact
1. The Specification states: “[i]n one aspect of the present invention,
there is a composition comprising a mixture of potassium citrate, citric acid
and a component selected from the group consisting of calcium carbonate,
calcium hydroxide, calcium oxide and any combination thereof.” (Spec.
4:[0013] (emphasis added).)
2. The Specification states: “[i]n another aspect of the present invention
there is a powder mixture comprising potassium citrate, calcium carbonate
and citric acid which when dissolved in water yields . . . a molar ratio of
potassium:calcium:citrate in the range of 2:1:1.33 to 2:1:2.67.” (Id. at
4:[0014] (emphasis added).)
3. The Specification discloses examples of compositions not listing
phosphate as an ingredient. (Id. at 12-13 (Table 2) and 14 (Table 3).)
4. The Specification states: “the scope of the present application is not
intended to be limited to the particular embodiments of the . . . composition
of matter, means, methods and steps described in the [S]pecification.” (Id.
at 16:[0065].)
5. The original Specification did not use the phrase “consisting
essentially of.”
Principles of Law
“By using the term ‘consisting essentially of,’ the drafter signals that
the invention necessarily includes the listed ingredients and is open to
unlisted ingredients that do not materially affect the basic and novel
properties of the invention.” PPG Industries v. Guardian Industries Corp.,
156 F.3d 1351, 1354 (Fed. Cir. 1998). “It is axiomatic that claims are given
their broadest reasonable construction consistent with the specification. . . .
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Therefore, in construing the phrase ‘consisting essentially of’ in appellants’
claims, it is necessary and proper to determine whether the specification
reasonably supports a construction that would include additives . . . .” In re
Herz, 537 F.2d 549, 551 (CCPA 1976) (affirming anticipation where
“Appellants’ specification states that the composition can contain any of the
well-known additives, including dispersants”); see also PPG, 156 F.3d at
1355 (“PPG could have defined the scope of the phrase ‘consisting
essentially of’ for purposes of its patent by making clear in its specification
what it regarded as constituting a material change in the basic and novel
characteristics of the invention.”).
Analysis
The Specification explicitly describes the compositions of the
invention using the open term “comprising.” (FF1 and 2.) We find nothing
in the Specification that identifies how additional ingredients would affect
the basic and novel characteristics of the invention. Although Appellants
argue that the examples suffice for that purpose, the examples that list
ingredients by name are examples of compositions within the general
disclosure. (FF3.) The examples make no limiting or cautionary statements,
and the Specification states that the scope of the invention is not intended to
be limited to the particular embodiments disclosed. (FF4.) Nor did
Appellants identify what constituted the basic and novel characteristics of
the invention.
In light of the Specification, we agree with the Examiner that the
claims reasonably support the interpretation that would include additives.
See Herz, 537 F.2d at 551. As a limiting transition, “consisting essentially
of” relies for its limiting effect on whatever foundation the Specification
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prepared. An amendment may not necessarily achieve an intended purpose.
“Depending on the nature and purpose of an amendment, it may have a
limiting effect within a spectrum ranging from great to small to zero.”
Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1363 (Fed. Cir. 1983).
We find Appellants’ analogy to In re Garnero, 412 F.2d 276 (CCPA
1969), inapt. In Garnero, the claim at issue defined a panel “consisting
essentially of expanded perlite particles which are interbonded one to
another by interfusion.” 412 F.2d at 277. Prior art that taught binders
between the perlite particles was found to contain additional material that
would have affected the basic and novel characteristic of the claimed
product, i.e., that “the perlite particles are held together without any
additional material.” 412 F.2d at 279. In contrast to the Garnero fact
pattern, Appellants’ Specification describes compositions “comprising”
ingredients, and gives non-limiting examples of compositions that do not
comprise certain prior art ingredients, but does not establish which
ingredients would affect the composition’s basic and novel properties.
Similarly, we find Appellants’ reliance on certain extrinsic evidence
unpersuasive. (App. Br. 12-13, citing the Pak, Schuette, and Sakhaee
articles.) Appellants describe the Pak, Schuette, and Sakhaee articles as
showing that various facts relating to solubility, absorption, or the
desirability of sodium would have been understood by those of ordinary skill
in the art. However, claim 1 recites only ingredients, and has no limitations
concerning solubility, absorption, or the desirability of sodium.
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In sum, we agree with the Examiner that the “[S]pecification does not
support [interpreting ‘consisting essentially of’] to exclude additional
ingredients.” (Ans. 6-7.)
ANTICIPATION
The Issue
The Examiner’s position is that Buddemeyer taught a composition
comprising a source of citrate ions and a source of calcium ions, and that the
source of citrate ions was selected from citric acid, calcium citrate,
potassium citrate, and mixtures thereof. (Ans. 3.) In the second anticipation
rejection, the Examiner’s position is that Chang taught a composition
comprising a calcium source containing such as calcium hydroxide and
calcium carbonate, and that Chang taught adding potassium citrate as a
preservative. (Id. at 4.)
Appellants contend that “because Buddemeyer ‘544 discloses a
composition containing phosphate and possibly sodium,” and “[e]ither or
both of phosphate and sodium ions are additional ingredients which would
materially change the composition,” Buddemeyer cannot anticipate. (App.
Br. 7.) Appellants further contend that the Examiner’s characterization of
Buddemeyer is “incomplete,” because Buddemeyer’s composition included
additional ingredients. (Reply Br. 1-3.)
Appellants contend that “because Chang’725 discloses a composition
containing calcium chloride and phosphate,” and “either or both of
phosphate and calcium chloride are additional ingredients which would
materially change the composition,” Chang cannot anticipate. (App. Br. 7.)
Appellants further contend that the Examiner’s characterization of Chang is
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“incomplete,” because Chang’s composition included additional ingredients.
(Reply Br. 3.)
For both rejections, Appellants contend that claim 1 is limited by the
transitional phrase “consisting essentially of,” and that the compositions
described by Buddemeyer and Chang each have additional ingredients that
would materially affect the basic and novel characteristics of Appellant’s
invention. (App. Br. 12-15.)
The issue with respect to this rejection is whether Appellants have
established that Buddemeyer or Chang described an additional ingredient
that would materially affect the basic and novel characteristics of
Appellants’ invention.
Findings of Fact
We agree with the Examiner’s findings concerning the Buddemeyer
and Chang disclosures.
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Analysis
The Examiner interpreted claim 1 as including the recited ingredients
and as open to additional ingredients. Appellants dispute that the claim is
open to the additional ingredients phosphate and possibly sodium in the case
of Buddemeyer (App. Br. 7), and calcium chloride and phosphate in the case
of Chang (id.).
Appellants’ arguments against the rejections rely on the phrase
“consisting essentially of” to distinguish their composition from the prior art
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compositions, but we have concluded that Appellants’ claim interpretation is
not supported by the Specification. Because a narrow reading of claim 1
would not be reasonable in light of this Specification, we affirm the
anticipation rejections.
OBVIOUSNESS
The Issue
The Examiner’s position is that although Buddemeyer and Chang did
not teach the amounts of each component as claimed, determining the
amounts and ratios of components “having the optimum effectiveness
together is well within the level of one having ordinary skill in the art, and
the skilled artisan would have been motivated to determine optimum
milliequivalents and molar ratios of each component to get the maximum
effectiveness.” (Ans. 6.)
Appellants contend that “Buddemeyer ‘544 is directed to
supplementing calcium in food products, while Chang ‘725 is directed to
fortifying beverages with calcium.” (App. Br. 15.) “In light of the goals of
the references, the [E]xaminer has not provided a reasoned explanation why
one of ordinary skill in the art would combine Buddemeyer ‘544 and Chang
‘725.” (Id.) Appellants rely on the “consisting essentially of” language to
argue that “even if one were to assume that Buddemeyer ‘544 and Chang
‘725 are properly combinable, any such combination does not lead one to the
invention of claim 1 or claim 11.” (Id. at 16.)
The issues with respect to this rejection are:
were the teachings of Buddemeyer and Chang properly combinable;
and
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if the teachings of Buddemeyer and Chang were combined, would
they have led to the inventions in claim 1 or claim 11?
Findings of Fact
We agree with the Examiner’s findings concerning the Buddemeyer
and Chang disclosures.
Principles of Law
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor, regardless
of the problem addressed, and (2) if the reference is not within the field of
the inventor’s endeavor, whether the reference still is reasonably pertinent to
the particular problem with which the inventor is involved.
In re Clay, 966 F.2d 656, 658-9 (Fed. Cir. 1992).
When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teaching of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
Analysis Issue
We find that Buddemeyer and Chang were in the same field of
endeavor as each other, and that their teachings were therefore properly
combinable under the first prong of the Clay test. Although Appellants
observe that “[n]either [Buddemeyer nor Chang] is concerned with treating
or preventing kidney stones or osteoporosis” (App. Br. 15), Appellants’
claim likewise recite no concern with treating or preventing kidney stones or
osteoporosis. We find the contention irrelevant to whether the Buddemeyer
and Chang teachings were combinable. We also find that Buddemeyer and
Chang were properly combinable with regard to Appellants’ field of
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invention as defined in the claims. Because Appellants’ claims relate
broadly to a composition without any field of use limitation, we find that
Buddemeyer and Chang were properly combinable under the second prong
of the Clay test.
We are unpersuaded by Appellants’ “picking and choosing” argument
(App. Br. 16) because it is based on an unduly narrow claim interpretation.
Appellants’ claims are open to the addition of unrecited ingredients.
The Examiner found that the amounts of the ingredients suggested by
combining Buddemeyer and Chang would have been optimized by a person
of skill in the art following Buddemeyer or Chang. Although Appellants
have unpersuasively disputed the ingredients used, Appellants do not dispute
that the optimization would have resulted in the amounts recited in
Appellants’ claims.
CONCLUSIONS OF LAW
The Specification did not identify what it regarded as constituting a
material change in the basic and novel characteristics of the invention.
Appellants did not establish that Buddemeyer or Chang described an
additional ingredient that would materially affect the basic and novel
characteristics of Appellants’ invention.
The teachings of Buddemeyer and Chang were in the same field of
endeavor and were properly combinable.
Appellants’ claims are open to unlisted ingredients; on this record we
conclude that the obviousness rejection should be affirmed.
SUMMARY
We affirm the rejection of claims 1, 2 and 8-10 under 35 U.S.C.
§ 102(b) as anticipated by Buddemeyer;
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we affirm the rejection of claims 1 and 6-9 under 35 U.S.C. § 102(e)
as anticipated by Chang; and
we affirm the rejection of claims 1-15 under 35 U.S.C. § 103(a) as
unpatentable over Buddemeyer and Chang.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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