Ex Parte Rohner

Patent Trial and Appeal Board

Dec 12, 2014

12086083 (P.T.A.B. Dec. 12, 2014)

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.
12/086,083 06/05/2008 Markus Rohner 080160 5511
23850 7590 12/12/2014
KRATZ, QUINTOS & HANSON, LLP
1420 K Street, N.W.
4th Floor
WASHINGTON, DC 20005
EXAMINER
LEITH, PATRICIA A
ART UNIT PAPER NUMBER
1655
MAIL DATE DELIVERY MODE
12/12/2014 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 MARKUS ROHNER1
__________

Appeal 2012-006310
Application 12/086,083
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a weight
reduction method. The Examiner has rejected the claims as obvious. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm-in-part.

1 Appellant identifies the real party in interest as Energy4life AG (App.
Br. 3).
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STATEMENT OF THE CASE
Claims 1, 3, 5–14, 31, 33, and 35–44 are on appeal (App. Br. 5).2
Claim 1 is representative and reads as follows:
1. A method for weight reduction in a mammal, comprising:
the mammal following a diet wherein no food containing calories is
taken in between all principal meals, and
while following the diet, intaking a composition comprising at least a
component selected from L-carnitine, a physiologically acceptable
derivative of L-carnitine and a salt of L-carnitine.
Claims 1, 5–13, 31, and 35–43 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Jacobs3 in view of Welch4 (Ans. 6).5
Claims 1, 3, 5–14, 31, 33, and 35–44 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Jacobs in view of Consumer Reports6 and Grace7
(Ans. 12).8
I
The Examiner relies on Jacobs for disclosing “weight loss
supplements to combat obesity and for maintaining normal blood glucose

2 Claim 15 is also pending but has been withdrawn from consideration (App.
Br. 5).
3 Jacobs et al., US 2005/0130933 A1, June 16, 2005.
4 Tricia Welch, Diet & Slimming: Bodyworks – Eat Loads More But Weigh
Less, Sunday Mirror, July 25, 2004, at 50.
5 The Examiner also lists claims 4, 32, and 34 as rejected on this basis
(Ans. 6). However, claims 4, 32, and 34 have been cancelled (App. Br. 5;
see also Ans. 3).
6 The Truth About Dieting, Consumer Reports, June 2002, at 26–31.
7 Grace et al., US 6,426,077 B1, July 30, 2002.
8 The Examiner also lists claims 4, 32, and 34 as rejected on this basis
(Ans. 12). However, claims 4, 32, and 34 have been cancelled (App. Br. 5;
see also Ans. 3).
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levels” (Ans. 6). In particular, the Examiner finds that Jacobs “describes a
clinical trial which demonstrated the weight-loss effect of a composition
comprising L-carnitine, green tea, yerba mate, and caffeine (inter alia)” (id.
at 7). The Examiner also finds that Jacobs teaches “not to snack after
dinner” (id. at 10). However, the Examiner finds that Jacobs “did not
specifically teach wherein the diet included taking in no calories between all
principal meals” (id.).
The Examiner relies on Welch for disclosing that “[s]nacking between
meals is one of the major causes of weight gain” (id. at 11). The Examiner
finds that, “[a]lthough Welch suggests replacing high calorie snacks with
more healthy snacks, it is well-known that refraining from eating between
meals is a common dieting practice (as also disclosed by Jacobs et al. who
suggest not to eat after dinner)” (id.). The Examiner concludes:
One of ordinary skill in the art would have the understanding
that eating snacks between meals will increase the total amount
of calories consumed per day. Thus, one would have been
motivated to refrain from eating in between meals in order to
lose weight. This is considered a matter of choice in dieting
which would have been obvious to add to any diet-regimen.
(Id.)
Principles of Law
“[I]t is well settled that unexpected results must be established by
factual evidence. ‘Mere argument or conclusory statements in the
specification does not suffice.’” In re Geisler, 116 F.3d 1465, 1470 (Fed.
Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984)).
“Synergism, in and of itself, is not conclusive of unobviousness in that
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synergism might be expected.” In re Kollman, 595 F.2d 48, 55 n.6 (CCPA
1979).
Analysis
Jacobs discloses a weight-loss supplement comprising L-carnitine
(Jacobs ¶ 60). Welch discloses that “SNACKING between meals is one of
the major causes of weight gain” (Welch 50). We understand Appellant’s
position that Welch’s suggestion to not eat snacks between meals “is based
entirely on the fact that snacks lead to consumption of too many calories”
(App. Br. 20). However, even so, we conclude that the evidence supports
the Examiner’s position that it would have been prima facie obvious to not
eat snacks between principal meals during a diet regimen that includes
Jacobs’ L-carnitine-containing supplement (Ans. 11).
Appellant argues, however, “that there are unexpected results . . .
with the combination of 1) following a diet wherein no food containing
calories is taken in between all principal meals; and 2) intaking a
composition comprising L-carnitine (or a derivative [of] L-carnitine or a salt
of L-carnitine) while following the diet” (App. Br. 13). In particular,
“Applicant submits that there is a synergy between these claim limitations,
and that the result of following both method limitations results in weight loss
that is greater than what would be expected from the additive effects of these
two method limitations performed separately” (id.). We are not persuaded.
Appellant presents a Declaration9 demonstrating that more weight loss
occurs when both 1) no food containing calories is taken in between all
principal meals and 2) L-carnitine is taken in as compared to a) when no

9 Declaration of Markus Rohner, submitted Jan. 12, 2011.
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food containing calories is taken in between all principal meals without
intaking L-carnitine or b) when L-carnitine is taken in while intaking food
containing calories between all principal meals (Decl. 2–9). We provide no
comment as to whether or not this evidence is sufficient to demonstrate
synergy. Instead, we conclude that Appellant has not adequately shown that
any synergy (if established) is unexpected.
We note that the Declaration states that it is “surprising” that the
“weight loss method does show in experiment 1a a weight loss for non-
obese women even during energy balanced conditions” (Decl. 9).10
However, in response, the Examiner refers to the teachings of Jacobs, as
well as Hastings11 and Grace (Ans. 18–19).
Jacobs discloses that “Acetyl-L-carnitine, a precursor of Acetyl-CoA
in the tricarboxylic cycle, serves as a shuttle for fatty-acid transport into the
mitochondria for beta oxidation (for energy production)” (Jacobs ¶ 53).
Hastings discloses that its “composition burns fat by . . . the use of
L-carnitine which transports fat from storage to be burned for energy”
(Hastings, col. 2, ll. 14–18). Hastings also discloses:
The primary role of L-carnitine in the body is as a
biocatalyst. Fats are burned for energy inside muscle cells in
the cell organelle known as the mitochondria. Fats are stored in

10 We note that, in Experiment 1a, the subjects were given a composition
containing L-carnitine, as well as Mate tea extract and green tea extract
(Decl. 2). Thus, this Experiment alone does not indicate whether
L-carnitine, in particular, increases weight loss. However, given that similar
results were obtained in Experiment 2 (id. at 7–9), we are assuming that the
Declarant similarly considers the weight loss during the second part of
Experiment 2 to be “surprising.”
11 Hastings et al., US 5,626,849, May 6, 1997.
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adipose cells and cannot pass through the mitochondria unless
they are transported by L-carnitine. Thereupon, the amount of
fat burned in the body depends on the level of L-carnitine in the
muscle. The higher the level of L-carnitine in the body, the
greater the amount of body fat used for fuel.
For those who do find it appropriate to diet, L-carnitine
accelerates the loss of body fat without sacrificing excessive
loss of lean mass. . . . Studies of athletes supplementing their
diet with L-carnitine showed a significant increase in the use of
fat during exercise.
(Id. at col. 3, ll. 46–60.) Grace identifies L-carnitine as a fat burner (Grace,
col. 4, ll. 55–60). In view of these disclosures, we conclude that Appellant’s
conclusory statement that the weight loss is “surprising” is insufficient to
show that weight loss and/or synergy would have been unexpected by one of
ordinary skill in the art.
Moreover, even if we assume that it would have been “surprising” that
L-carnitine increases weight loss, Appellant has not adequately shown that
this would not have been an inherent property of the method described in
Jacobs. “It is a general rule that merely discovering and claiming a new
benefit of an old process cannot render the process again patentable.” In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
In addition, we conclude that Appellant has presented insufficient
evidence that it would have been unexpected that L-carnitine would not
increase weight loss while intaking food containing calories in between
principal meals. In fact, the Declaration states:
It is expected that the intermittent snacking of
carbohydrates leads to an inhibition of the carnitine-
palmitoyltransferase (CPT-1) according to the model (method)
and under these conditions, the fatty acid oxidation does not
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work accordingly. This leads to a too low energy status that is
compensated by carbohydrate ingestion by snacking. The fat in
the food cannot be oxidized sufficiently and is stored.
(Decl. 4 (emphasis added).) This statement does not indicate that it would
have been unexpected that L-carnitine would not increase weight loss while
intaking food containing calories in between principal meals. Therefore, we
conclude that the evidence fails to indicate that any synergy would have
been unexpected.
We note that the Appeal Brief states that the “results of the present
invention are unexpected” (App. Br. 18 (emphasis omitted)). However,
“Attorneys’ argument is no substitute for evidence.” Johnston v. IVAC
Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989).
Conclusion
The evidence supports the Examiner’s conclusion that Jacobs and
Welch, in view of Hastings and Grace, suggest the method of claim 1. We
therefore affirm the obviousness rejection of claim 1 over Jacobs and Welch
in view of Hastings and Grace. However, because our reasoning differs
somewhat from the Examiner’s reasoning and in an effort to avoid any issue
with regard to the Examiner’s reliance on Hastings and Grace, we designate
the affirmance as a new ground of rejection. Claims 5–13, 31, and 35–43
have not been separately argued and therefore fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).
II
In the second rejection, the Examiner relies on Jacobs as discussed
above (Ans. 12). As discussed above, the Examiner finds that Jacobs “did
not specifically teach wherein the diet included taking in no calories between
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all principal meals” (id. at 10). However, the Examiner failed to establish
that Consumer Reports and/or Grace make up for this deficiency in Jacobs
(id. at 13–14). Thus, in the context of the second rejection, which does not
include Welch, we conclude that the Examiner has not set forth a prima facie
case that it would have been obvious to take in no food containing calories
between all principal meals.
Conclusion
The Examiner has not set forth a prima facie case that Jacobs,
Consumer Reports, and Grace suggest taking in no food containing calories
between all principal meals. We are therefore compelled to reverse the
obviousness rejection over Jacobs, Consumer Reports, and Grace.
SUMMARY
We affirm the obviousness rejection of claims 1, 5–13, 31, and 35–43
over Jacobs and Welch in view of Hastings and Grace, but designate it a new
ground of rejection. We reverse the obviousness rejection of claims 1, 3, 5–
14, 31, 33, and 35–44 over Jacobs in view of Consumer Reports and Grace.
Thus, claims 3, 14, 33, and 44 are not currently subject to a rejection.
TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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