Ex Parte Sato et al

Patent Trial and Appeal Board

Feb 29, 2016

12518519 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/518,519 06/10/2009 Hitoshi Sato
22850 7590 03/03/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
342316USOPCT 6087
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HITOSHI SATO, HIDEAKI UEOKA, and KEIJI SHIBATA
Appeal2014-001075
Application 12/518,519
Technology Center 1700
Before ADRIENE LEPIANE HANLON, BEYERL YA. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-19 under 35 U.S.C. § 103(a) as being
unpatentable over at least the basic combination ofinaoka2 and Ogura. 3' 4
We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 The real party in interest is stated to be the Kao Corporation (App. Br. 1 ).
2 Inaoka et al., US 2003/0096050 Al, published May 22, 2003.
3 Ogura et al., US 2005/0095342 Al, published May 5, 2005.
4 The Examiner also relies upon additional prior art in the rejections of
dependent claims 2--4, and 8-10, but does not rely upon this prior art to cure
any deficiencies in the rejection of the sole independent claim 1 (Final Act.
6-8; Ans. 6-8).
Appeal2014-001075
Application 12/518,519
Claim 1, the sole independent claim, is illustrative of the claimed
subject matter:
1. A purified tea extract, comprising non-polymer catechins;
wherein
a content of the non-polymer catechins in a solid content of
the purified tea extract is from 45 to 90 wt.%,
per cent by weight of gallate body in the non-polymer
catechins is from 0.001 to 35 wt.%, and
a weight ratio of gallic acid/non-polymer catechins is not
greater than 0.07.
As a preliminary matter, we note that the claims were also
provisionally rejected on the grounds of non-statutory obviousness-type
double patenting over claims 13 and 17 of copending application
12/281,402. Claims 13 and 17 are withdrawn in that application. The
rejection of other claims (not withdrawn claims 13 and 17) in copending
application 12/281,402 is currently on appeal (Appeal No. 2015-003008).
Appellants also contend that this rejection should be withdrawn as this is the
earlier-filed application (App. Br. 10).
In light of these circumstances, we do not reach the merits of the
Examiner's provisional double patenting rejection. Ex parte Jerg, 2012 WL
1375142 at *3 (BPAI 2012) (informative) ("Panels have the flexibility to
reach or not reach provisional obviousness-type double-patenting
rejections.") (citing Ex parte Moncla, 95 USPQ2d 1884 (BPAI 2010)
(precedential)).
2
Appeal2014-001075
Application 12/518,519
OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
"[R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware "of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning."
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a "temptation to read into the prior art the teachings
of the invention in issue")).
i\fter revie\v of the respective positions provided by i\.ppellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellants'
assertions that the Examiner's rejection is de facto based on improper
hindsight in proposing to modify Inaoka to have the claimed ranges and
ratios required by claim 1 (Ans. 4; App. Br.; Reply Br., generally).
As detailed by the Appellants in the Briefs, the Examiner confuses the
amount of gallic acid taught in Inaoka with the amount of gallate body
required in the claim (App. Br. 5; Reply Br. 5; e.g., Inaoka iii! 24, 27-29).
Furthermore, as pointed out by the Appellants, Ogura teaches that the
minimum amount of gallate body in the non-polymer catechins should be
40% versus the claimed maximum amount of 35% (App. Br. 4). Appellants
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Appeal2014-001075
Application 12/518,519
further discuss that the claimed minimum ratio taught in Inaoka for gallic
acid to non-polymer catechins is greater than the maximum required in claim
1 (App. Br. 5, 6; Reply Br. 2).
A preponderance of the evidence supports Appellants' assertions.
Notably, the Examiner does not direct us to any evidence on this record that
any of the applied prior art teaches or suggests the claimed range for the
percent by weight of gallate body in the non-polymer catechins. 5 Notably,
the Examiner has not adequately addressed the Appellants' contention that
the Examiner is confusing gallate body with gallic acid discussed in Inaoka
(Reply Br. 5). Furthermore, the fact that the ratio for gallic acid/non-
polymer catechins taught in Inaoka is outside the instantly claimed range
militates against the Examiner's conclusion that it would have been obvious
to use amounts in the Inaoka/Ogura combination so as to result in the
Appellants' claimed ratio. In re Sebek, 465 F.2d 904, 906--07 (CCP A 1972).
Accordingly, we agree with Appellants that the Examiner has not
articulated a sufficient reason for modifying Inaoka with Ogura so as to
result in the claimed invention, absent the use of impermissible hindsight.
KSR, 550 U.S. at 421.
Thus, we reverse the Examiner's§ 103 rejection on appeal.
5 It is noted that Hosoya teaches that the minimum gallate based on all non-
polymer catechins may be 35% in a green tea extract (Hosoya if 38; App.
Br. 6). However, the Examiner did not rely upon Hosoya for this feature. In
any event, the Examiner has not adequately explained why one would have
optimized the ratio of gallic acid/non-polymer catechins in a direction
opposite that described in Inaoka.
4
Appeal2014-001075
Application 12/518,519
CONCLUSION
In summary, the appealed § 103 rejections are reversed.
REVERSED
5