Ex Parte Schlegel et alDownload PDFPatent Trial and Appeal BoardMay 11, 201612571321 (P.T.A.B. May. 11, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/571,321 0913012009 23117 7590 05/13/2016 NIXON & V ANDERHYE, PC 901 NORTH GLEBE ROAD, 11 TH FLOOR ARLINGTON, VA 22203 FIRST NAMED INVENTOR Bernd Schlegel 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. ES-4804-18 1766 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/13/2016 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): PTOMAIL@nixonvan.com pair_nixon@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERND SCHLEGEL, CHRISTIAN SCHAFER, DAVID SCHAFFNER, BRUNO LEUENBERGER, and SIMONE KOENIG-GRILLO Appeal2014-005838 Application 12/571,321 Technology Center 1700 Before TERRY J. OWENS, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 seek our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-21. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. 1 The Real Party in Interest is stated to be "DSM IP ASSETS B.V." (Br. 3). Appeal2014-005838 Application 12/571,321 Claims 1, 12, and 13 are illustrative of the subject matter on appeal (emphasis added): 2 1. A composition comprising (i) an improved modified starch, (ii) B-carotene and (iii) optionally at least an adjuvant and/or an excipient, wherein a mixture of the composition containing 1 to 20 ppm fJ- carotene mixed with water has a color hue in the range of 48 to 60, and wherein the improved modified starch is obtained by a process comprising the steps of, (a) preparing an aqueous solution or suspension of a modified starch, whereby the temperature of the water is in the range of from 1 to < 100°C; (b) separating parts of the modified starch at atmospheric pressure in water of a temperature in the range of from 1 to < 100°C to obtain the improved modified starch; wherein the parts to be separated are those parts that are not soluble at atmospheric pressure in water at a temperature in the range of from 1 to < 100°C. Br. 21 (Claims Appendix). 12. Process for the manufacture of a beverage by mixing a composition according to claim 1 with further usual ingredients of beverages. 13. Beverage obtained by the process according to claim 12. Br. 23 (Claims Appendix). 2 The other independent claims 14, 16, 17, 18, 19, and 21 either substantially mirror claim 1 with respect to the product limitations, or specify other properties, with claim 14 directed to the process of producing the product of claim 1, and claims 11 and 21 each directed to a method of enriching, fortifying, and/or coloring any one of numerous products (e.g., food or cosmetics) with a composition as in claim 1 (See Claims Appendix, Br. 21- 27) 2 Appeal2014-005838 Application 12/571,321 The following rejections are appealed: A. Claims 1-21under35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. B. Claim 13 under 35 U.S.C. § 102(b) as being anticipated by Cox et al. (US 6,007,856, issued December 28, 1999; hereinafter "Cox"). C. Claims 1-20 under 35 U.S.C. § 103(a) as being unpatentable over Lueddecke et al. (US 4,844,934, issued July 4, 1989; hereinafter "Lueddecke") in view of Eden et al. (EP 0554818 A2, published August 11, 1993; hereinafter "Eden"). D. Claims 11 and 12 under 35 U.S.C. § 103(a) as being unpatentable over Lueddecke, Eden, further in view of Cox. E. Claim 21under35 U.S.C. § 103(a) as being unpatentable over the applied prior art of Cox, Lueddecke, and Eden. ANALYSIS The§ 112, if 2 Rejection The legal standard for definiteness in prosecution is whether a claim reasonably apprises those of skill in the art of its scope. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language employed must be analyzed-not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). The Examiner stated that"[ c ]laim 1 is indefinite for 'a mixture of the composition with water has a color hue range of 48-60" because "[t]he 3 Appeal2014-005838 Application 12/571,321 actual hue values measured appear to be dependent on the amount of water present, therefore the claim limitations do not appear to be reproducible" (Final Rej. 2; Ans. 2). The Examiner likewise stated that similar color and turbidity property recitations in claims 5, 6, 7, 9, 18 and 19 were all indefinite because the properties "appear to be dependent on the amount of water present" and thus are not "reproducible" (Final Rej. 2, 3; Ans. 2, 3). Appellants point out that the recited property of claim 1 (as well as all the remaining claims) is based on a mixture of the composition with a concentration of B-carotene of 1 to 20 ppm with water (Br. 11 ). Because each property recited in each claim is in the context of a mixture of the composition containing 1 to 20 ppm B-carotene with water, the Examiner's position is not well founded. Furthermore, while functional phrases may render the scope of a claim broad, claims are not indefinite on the basis of its breadth alone. See In re Miller, 441F.2d689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788 (CCPA 1970) ("Breadth is not indefiniteness."). Accordingly, we reverse the Examiner's section§ 112, 2nd paragraph rejection. The§§ 102 and 103 Rejections We have reviewed each of Appellants' arguments for patentability. Appellants have not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of anticipation as to claim 13, or that the Examiner failed to establish a prima facie case of obviousness as to all the claims on appeal. Thus, we sustain the Examiner's §§102 and 103 rejections, and we add the following primarily for emphasis. 4 Appeal2014-005838 Application 12/571,321 It is well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). All of the independent claims except claims 12, 14, and 21 are directed to products, not the processes of making the products. It has been well established that, when a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The§ 102 Rejection of Claim 13 There is no dispute that Cox describes a beverage containing a composition of B-carotene and starch as required by claim 13 (Ans. 4; Cox, col. 13, 14, Tables 1, 2, 3). Appellants' argument that the evidence in the Schafer Declaration (left column of table in iJ3) shows that the starch and B- carotene of Cox will have a color hue when mixed with water outside the range of claim 1 (Br. 13, 14) is not persuasive. Indeed, Appellants' evidence shows that the starch of Cox in some preparations of a beverage will have a color hue less than 60, some as low as 57.9 (Schafer Declaration, left column of table in iJ3). Thus, even though Cox does not describe the same process as in claim 1 to prepare the starch used in its B-carotene mixture and beverage, Appellants have not shown that this results in a structural 5 Appeal2014-005838 Application 12/571,321 difference. Accordingly, a preponderance of the evidence supports the Examiner's finding of anticipation of claim 13 based on Cox. The §103 Rejections of claims 1-21 The Examiner finds that Lueddecke describes B-carotene and starch compositions encompassed by Appellants' claims except it does not specify that its starch underwent a purification step/process of separation as recited in claim 1 (or claim 14) (Final Rej. 4, 5; Ans. 4, 5). The Examiner finds that Eden exemplifies that it was known to purify starch for use in food products to improve flavor, odor, and/or color purity using an ultrafiltration process (Final Rej. 5, 6; Ans. 5, 6). Based on these findings, the Examiner reasonably concludes that it would have been prima facie obvious to use known improved purified (ultrafiltrated) starch as exemplified in Eden for the starch component of Lueddecke (Final Rej. 8, iJl 8; Ans. 7, 8, iJl 7). KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416-417 (2007) (the predictable use of prior art elements or steps according to their established functions is normally prima facie obvious). Appellants' main arguments are that Lueddecke describes its additive as having an intense yellow color, whereas the present claims require a red to orange color hue (Br. 15, 16), and that using the improved purified starch of Eden in Lueddecke would not obtain the claimed composition because an ultrafiltration process would not remove insoluble impurities as recited, and/or result in the color hue as recited in claim 1 (Br. 16-18). These arguments are unavailing. Notably, Appellants' Specification describes that ultrafiltration is one of the separation techniques that will improve the starch so as to result in the claimed products (e.g., Spec. 7, 8). 6 Appeal2014-005838 Application 12/571,321 Appellants' Specification also describes that either sedimentation or filtration will separate non-soluble parts (e.g., Spec. 10 "In the case of separation by sedimentation and/or filtration the parts non soluble ... are separated"). In light of this, Appellants' argument that the purification ultrafiltration process of Eden would not have removed some insoluble impurities/parts is not supported by the evidence of record. Thus, the Examiner has established that the products of the applied Luedducke/Eden prior art combination and the claimed invention have the same formulations of ingredients and undergo substantially the same process as described in Appellants' Specification to become a food or cosmetic or pharmaceutical additive, so the burden shifts to Appellants to provide some rationale or evidence why the resulting products do not have similar properties when mixed with water (generally Ans.). See also In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255; In re Thorpe, 777 F.2d at 697. Appellants have not directed us to any persuasive technical reasoning or evidence, or to any difference in formulation, processing, or other treatments that would cause the two substantially similar products to have significantly different properties. In light of these circumstances, Appellants have not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of anticipation as to claim 13, or that the Examiner failed to establish a prima facie case of obviousness as to all the other claims on appeal (noting Appellants rely upon the same arguments for claim 1 as to all the other claims, including those claims separately rejected (Br. 19, 20)). Accordingly, we sustain the§§ 102 and 103 rejections of all of the claims on appeal. 7 Appeal2014-005838 Application 12/571,321 The decision of the Examiner is atlirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 ). AFFIRMED 8 Copy with citationCopy as parenthetical citation