Ex parte Sears

Board of Patent Appeals and Interferences

Nov 17, 1998

07996797 (B.P.A.I. Nov. 17, 1998)

Application for patent filed December 24, 1992. According to appellant, this application is a1
continuation-in-part of Application 07/771,402, filed October 2, 1991, now abandoned; which is a
continuation-in-part of Application 07/539,385, filed June 18, 1990, now Patent No. 5,059,622, issued
October 22, 1991; which is a division of Application 07/400,288, filed August 29, 1989, now abandoned;
which is a continuation-in-part of Application 07/251,139, filed September 28, 1988, now abandoned.
1
Paper No. 20
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for
publication in a law journal and (2) is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte BARRY D. SEARS
______________
Appeal No. 94-4461
Application 07/996,7971
_______________
ON BRIEF
_______________
Before WINTERS, CAROFF, and WILLIAM F. SMITH, Administrative Patent Judges.
WILLIAM F. SMITH, Administrative Patent Judge.
Appeal No. 94-4461
Application 07/996,797
2
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 18-33, all
the claims in the application.
Claims 18, 19, 24 and 28 are illustrative of the subject matter on appeal and read
as follows:
18. A method for the reduction of hyperinsulinemia in a person by the control
of insulin and glucagon levels, which method comprises:
a) providing for the oral introduction into the person of a therapeutic, effective
amount of a solid food product having a total calorie value, which solid food product
comprises:
I) a protein source of high biological value having about 20 to 40% of total
calorie value;
ii) a carbohydrate source composed primarily of a low glycemic index
having about 30 to 50% of total calorie value;
iii) a fat source having about 20 to 40% of total calorie value wherein the fat
source comprises a combination of activated Omega 6 essential fatty acids and activated
Omega 3 essential fatty acids in a ratio of Omega 3 acids to Omega 6 acids of greater
than 2:1; and
iv) the protein source to carbohydrate source ratio greater than 0.4:1, but
less than 1:1, to control the insulin and glucagon levels of the person.
19. The method of claim 18 which includes incorporating all or a portion of the fat
source in a separate form for the introduction with the solid food product.
24. The method of claim 18 which includes providing for the oral ingestation by the
person of the fat source in an emulsion, microencapsulated or capsule form.
Appeal No. 94-4461
Application 07/996,797
3
28. A solid food nutritional composition adapted for oral administration to a person
to reduce hyperinsulinemia, which composition comprises:
a) a protein source of high biological value having about 20 to 40% of total calorie
value;
b) a carbohydrate source composed primarily of a low glycemic index having about
30 to 50% of total calorie value;
c) a fat source having about 20 to 40% of total calorie value wherein the fat source
comprises a combination of activated Omega 3 essential fatty acids and activated Omega
6 essential fatty acids in a ratio of Omega 3 acids to Omega 6 acids of greater than 2:1;
and
d) the protein source to carbohydrate source greater than 0.4:1, but less than 1:1, to
control the insulin and glucagon levels of the person.
The references relied upon by the examiner are:
Stewart et al. (Stewart) 4,826,877 May 2, 1989
Merck Manual, 14th Edition, pages 388-89 (1982).
Claims 18-33 stand rejected under 35 U.S.C. § 103 as unpatentable over Stewart
in view of the Merck Manual. We reverse. In addition, we raise other issues for the
examiner to consider upon return of the application.
DISCUSSION
The claims on appeal require the presence or use of a solid food product which
comprises a protein source, a carbohydrate source, and a fat source. Each of these
sources are defined in terms of the percent of the total calorie value of the solid food
Appeal No. 94-4461
Application 07/996,797
4
product as well as in terms of ratios of either protein source to carbohydrate source or a
ratio of Omega 3 acids to Omega 6 acids.
Stewart describes a pharmaceutical and dietetic composition which comprises a
mixture of Omega 3 acids and Omega 6 acids. At best, Stewart describes at column 5,
lines 46-54, that the fatty acid composition of that reference can be incorporated in “a
dietary margarine or other foodstuffs.” There is no explicit disclosure in Stewart that the
fatty acid composition of that reference should be incorporated in foodstuffs having a
protein and carbohydrate content. Thus, Stewart would not have suggested to one of
ordinary skill in the art to prepare a foodstuff as required by the claims on appeal.
The examiner attempts to rectify this deficiency of Stewart by repeatedly chanting
the mantra of “obvious to the skilled artisan.” See, e.g., pages 4-5 of the Examiner’s
Answer. However, it is well settled that a conclusion of obviousness must be based upon
facts, not generalities. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968); In re Freed, 425 F.2d 785, 788, 165 USPQ
570, 572 (CCPA 1970).
The examiner’s rejection is reversed.
OTHER ISSUES
1. Proper dependent claims
Appeal No. 94-4461
Application 07/996,797
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Claim 18 requires a solid food product that contains a protein source, a
carbohydrate source, and a fat source. Claim 19 which depends from claim 18 requires
that all or a portion of the fat source be provided in a separate form. As seen from claim
24, that separate form could be an emulsion, microcapsule, or capsule.
Claims 19 and 24 appear to be improper dependent claims since they do not serve
to further limit independent claim 18. Rather, they require that an element of claim 18 be
eliminated. This is improper.
Upon return of the application, appellant and the examiner should review all the
claims pending and make sure they are in proper form.
2. Effective filing date of claims on appeal
This application is stated to be a continuation-in-part of Application 07/771,402
filed October 2, 1991. That application is stated to be a continuation-in-part of Application
07/539,385, filed June 18, 1990, issued as Patent No. 5,059,622 on October 22, 1991
(`622 Patent).
It does not appear that the examiner has determined whether any of the claims on
appeal are entitled to the effective filing date of the immediate parent application
07/771,402. If any claim pending in this application is not entitled to the benefit of the
earlier filing date under 35 U.S.C. § 120, the `622 patent would be available as prior art
Appeal No. 94-4461
Application 07/996,797
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under 35 U.S.C. § 102(b) since it issued more than one year prior to the filing date of this
application, December 24, 1992.
Upon return of the application, the examiner should determine the effective filing
date of each claim pending in this application. If any claim pending in the application is not
entitled to the benefit of the earlier filing date of parent application 07/771,402, the
examiner should determine whether that claim is patentable over the prior art, including the
`622 patent.
3. Proper search
As seen from the claims on appeal, the subject matter under review pertains to
solid foodstuffs. From the “SEARCHED” section of the administrative file, it does not
appear that the examiner has searched class 426 which is directed to foodstuffs. As set
forth above, one embodiment of the present invention would be to administer a solid
foodstuff which comprises only protein and carbohydrates in a specified ratio in
conjunction with a separate formulation containing the required fatty acids.
As a second matter, it does not appear from the “SEARCH NOTES” portion of the
administrative file jacket that the examiner has searched the available electronic data
bases. Given the technical subject matter under review in this application, the examiner
should consider whether a complete search should include accessing the electronic data
bases.
Appeal No. 94-4461
Application 07/996,797
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4. Claim language
Upon return of the application, the examiner should clarify the following claim
language.
The claims require “a carbohydrate source composed primarily of a low glycemic
index.” According to the specification at page 11, it is the carbohydrate which has a
glycemic index, rather than the carbohydrate being “composed” of a glycemic index.
Should the claims require “a carbohydrate source having a low glycemic index?”
The claims also require that the protein have a “high biological value.” It is not clear
where the specification of this application defines this phrase.
The decision of the examiner is reversed.
REVERSED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
MARC L. CAROFF ) BOARD OF PATENT
Appeal No. 94-4461
Application 07/996,797
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Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
WILLIAM F. SMITH )
Administrative Patent Judge )

Stephan T. Falk
Deckert, Price & Rhoads
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