Ex Parte Sewall et al

Patent Trial and Appeal Board

Apr 19, 2016

13315559 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/315,559 12/09/2011
48219 7590 04/21/2016
PA TENT ADMINISTRATOR
FMC CORPORATION
1735 MARKET STREET
PHILADELPHIA, PA 19103
FIRST NAMED INVENTOR
Christopher J. Sewall
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.
60812-USA 6272
EXAMINER
WATTS, JENNA A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
patents@fmc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. SEW ALL,
WILLIAM R. BLAKEMORE, and ERICK I. ASK
Appeal2014-009728
Application 13/315,559
Technology Center 1700
Before CATHERINE Q. TIMM, JACQUELINE WRIGHT BONILLA, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-009728
Application 13/315,559
Appellants appeal, 1 under 35 U.S.C. § 134, from the Examiner's
decision2 finally rejecting claims 1-22. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
The claims are directed to a liquid formulation containing protein and
lambda carrageenan from seaweed of the taxonomic order Halymeniales.
Claim 1, reproduced below, is illustrative of the claims on appeal.
1. A liquid formulation comprising protein and lambda
carrageenan, wherein said lambda carrageenan comprises
lambda carrageenan from at least one seaweed of the
taxonomic order Halymeniales.
App. Br. 20 (Claims Appendix).
Claims 1-22 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Mutilangi3 in view of Briones,4 and as evidenced by Self Nutrition
Data. 5 Final 3.
Appellants argue that the Examiner's obviousness rejection "is based
on the vie\v that all lambda carrageenans are equivalent." See App. Rr. 5, 8;
see also Reply Brief filed August 27, 2014 ("Reply Br."), 2. Appellants
1 Appellants identify the real party in interest as FMC Corporation. Appeal
Brief filed May 12, 2014 ("App. Br."), 2.
2 Final Office Action mailed October 8, 2013 ("Final").
3 Mutilangi et al., US 2008/0260908 Al, published Oct. 23, 2008
(hereinafter "Mutilangi").
4 Briones et al., USP Grade Lambda-Like Carrageenan From Halymenia
Durvillaei Bory De Sainte Vincent (Short Communication), 129 Philippine
Journal of Science 15-17 (2000) (hereinafter "Briones").
5 Self Nutrition Data know what you eat, "Milk, nonfat, fluid, without added
vitamin A (fat free or skim)," http://nutritiondata.self.com/facts/dairy-and-
egg-products/139/2 (last visited June 4, 2013) (hereinafter "Self Nutrition
Data"). Self Nutrition Data is only relied upon by the Examiner to show the
amount of protein in fat free or skim milk (recited in appealed claim 4).
Final 7.
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Appeal2014-009728
Application 13/315,559
contend that the data in the Specification (Spec. 11-13; Figures 1--4)
demonstrates that lambda carrageenans differ chemically and functionally
from one another and based on those differences, "one skilled in the art
would not find [a] suggestion ... to use the specific lambda carrageenan of
[Briones] in a protein containing liquid formulation [of Mutilangi]." See
App. Br. 10. We do not find Appellants' arguments to be persuasive.
Where two known alternatives are interchangeable for a desired
function, an express suggestion to substitute one for the other is not needed
to render a substitution obvious. In re Fout, 675 F.2d 297, 301 (CCPA
1982). In this case, the Examiner finds that the lambda carrageenan from
Halymeniales of Briones would have been viewed as a suitable substitute for
the lambda carrageenan of Mutilangi because both references teach that
lambda carrageenan has non-gelling properties which are useful in the food
industry, for example, to extend shelf life stability (Ans. 4---6). See
Mutilangi i-fi-17, 16 (teaching gelling is undesirable in protein beverages, and
teaching lambda-carrageenan is a stabilizer with non-gelling properties that
extends the shelf life of food and beverages) and Briones Abstract, 15-1 7
(teaching the unique non-gelling property of lambda carrageenan makes it
indispensable in the food industry, Halymenia species contains lambda-like
carrageenan, and that the obtained lambda carrageenan conforms with the
USP specifications for carrageenan).
Appellants argue that testing in the Specification demonstrates that all
lambda carrageenans are not "functionally equivalent," and thus, there
would have been no reasonable expectation of success in using Briones'
lambda carrageenan from Halymenia durvillaei in Mutilangi' s protein
containing beverage. See App. Br. 8. We do not find this argument to be
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Appeal2014-009728
Application 13/315,559
persuasive. Obviousness does not require absolute predictability; all that is
required is a reasonable expectation of success. In re 0 'Farrell, 853 F.2d
894, 903-04 (Fed. Cir. 1988). One must consider what the prior art suggests
and what properties would have been expected. See Pfizer, Inc. v. Apotex,
Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must
be unexpected to be considered as evidence of non-obviousness," and a
proper evaluation considers what properties were expected). Briones
teaches that lambda carrageenan from Halymenia durvillaei has similar non-
gelling and physicochemical properties to commercial sources of lambda
carrageenan. See Briones Abstract, 17. Moreover, as the Examiner points
out, the data in Appellants' Specification tends to establish that the lambda
carrageenan ofMutilangi, Viscarin® GP 209F (Formulation A), and lambda
carrageenan of Briones, extract from Halymenia durvillaei (Formulations B
and C), at concentrations of 0.02 wt% would function similarly as a non-
gelling stabilizer (e.g., smooth pour indicating no gelation present) in
reduced sugar chocolate milk formulations after 2 weeks of storage (Ans.
12). Spec. iTiT 22-24, 28, 33.
Appellants argue that Briones "teaches the use of lambda carrageenan
from Halymenia durvillaei as non-gelling in a water (non-protein containing)
environment." App. Br. 9. This statement also appears at iT 4 of the
Specification. Neither Appellants nor the Specification, however, cite to any
portion of Briones to support the statement, and we find no such supporting
disclosure in Briones. Briones, in fact, more generally suggests using
lambda carrageenan for its non-gelling properties in the food,
pharmaceutical and cosmetic industries without disclosing any restrictions
on the presence of protein. Briones, p. 15, col. 2 iT 1.
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Appeal2014-009728
Application 13/315,559
In sum, for the reasons discussed above, a preponderance of the
evidence supports the Examiner's finding that the lambda carrageenan of
Briones would have been viewed by one of ordinary skill in the art as a
suitable substitute for the lambda carrageenan of Mutilangi for stabilizing
protein-containing beverages without gelling. Accordingly, Appellants have
not shown reversible error in the Examiner's finding that lambda
carrageenan from Halymenia durvillaei disclosed in Briones would have
been a suitable substitute for lambda carrageenan in Mutilangi.
Appellants argue Mutilangi discloses a total solids content of
sweetener that is "significantly higher" than the ranges recited in claims 7
and 8. App. Br. 9. Appellants further argue "there are considerable
challenges in the field associated with reducing the solids [content] in
protein containing beverages," and thus, there is no motivation to modify the
total solids content of sweetener in Mutilangi's beverage to arrive at the
claimed ranges. See id. at 9-10.
Claims 7 and 8 depend indirectly from claim 1, and require that the
formulation comprise a total solids content from 0 to 5 wt% (claim 7) or
from 0 to 4 wt% (claim 8) of sweetener. Mutilangi discloses a protein
beverage containing 7.0 wt% sucrose. Mutilangi i-f 49; Example 2. It is
unclear whether 7 .0 wt% in Example 2 in Mutilangi is a total solids content
of sucrose in the beverage, and the total solids content of sucrose in the
beverage may be lower once the ingredients in Example 2 are combined. Id.
Nevertheless, absent evidence to the contrary, it is normally expected that a
change in concentration would be an unpatentable modification over the
prior art. In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("Normally, it is to be
expected that a change in temperature, or in concentration, or in both, would
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Appeal2014-009728
Application 13/315,559
be an unpatentable modification."). Therefore, when patentability is
predicated upon a change in a concentration of a component of a prior art
composition, the burden is on Appellants to establish with objective
evidence that the change is critical, i.e., it leads to a new unexpected result.
See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants have
not provided sufficient evidence in this regard.
Under the heading "Unexpected Results," Appellants argue the
claimed formulation exhibits "significant benefits" when compared with
formulations including other lambda carrageenans. See App. Br. 10.
Appellants point to test results in their Specification showing different
results (e.g., in viscosity, mouthfeel, and gelation) obtained with four
different lambda carrageenan products in reduced sugar chocolate milk
formulations at multiple use levels for up to three months. See App. Br. 10-
18; see also Spec. 11-13 and Figures 1--4. However, as pointed out by the
Examiner, at 0.02% by weight all the formulations exhibited the same "Pour
observations" of "smooth" and Formulations A, B, and Chad the same
mouth feel score. Ans. 12; Spec. 12-13. Although there are differences at
higher concentrations and longer time periods, Appellants have not
established sufficiently that the differences would have been unexpected to
the ordinary artisan. "[A ]ny superior property must be unexpected to be
considered as evidence of nonobviousness." Pfizer, 480 F .3 d at 13 71; In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (arguments of counsel
cannot take the place of evidence). Moreover, the advantages disclosed in
the Specification are limited to reduced sugar chocolate milk formulations
whereas claim 1 is not so limited. Accordingly, as the Examiner correctly
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Application 13/315,559
finds, Appellants' data is not commensurate adequately in scope with
claim 1. See Ans. 13.
Appellants argue that the testing of unexpected results in the
Specification is commensurate in scope with claims 4--8. 6 App. Br. 18. We
do not find this argument to be persuasive because those claims encompass
concentrations of lambda carrageenan at which there was little or no
difference in results between the comparative and inventive examples.
Moreover, Appellants have not established sufficiently with evidence that
the results would have been unexpected to the ordinary artisan.
For the above reasons, we sustain the Examiner's rejection of
claims 1-22.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
6 Because Appellants did not show good cause under 37 C.F.R.
§ 41.41 (b )(2), we will not consider the new argument that the results are
commensurate in scope with claims 19, 20, and 22. Reply Br. 3.
7