Ex Parte Schlegel et al

Patent Trials and Appeals Board

May 11, 2016

12571321 - (D) (P.T.A.B. May. 11, 2016)

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)
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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
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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.
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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
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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).
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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.
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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
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