Ex parte SHU et al.

Board of Patent Appeals and Interferences

Mar 24, 1999

07854122 (B.P.A.I. Mar. 24, 1999)

Application for patent filed March 19, 1992. According1
to appellants, this application is a continuation-in-part of
Application No. 07/632,242, filed December 20, 1990, now
abandoned.
-1-
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journal and (2) is not binding precedent of the Board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte CHI-KUEN SHU and BRIAN M. LAWRENCE
________________
Appeal No. 95-0386
Application No. 07/854,1221
________________
ON BRIEF
________________
Before WINTERS, GRON and OWENS, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-0386
Application No. 07/854,122
-2-
This appeal was taken from the examiner's decision
rejecting claims 1 through 24, which are all of the claims
pending in the application.
Claim 1, which is illustrative of the subject matter on
appeal, reads as follows:
1. A process for providing a flavorful and aromatic
composition comprising the steps of:
(a) providing a first component in the form of
at least one non-sulfur containing amino acid, non-
sulfur containing amino acid analog and/or
degradation product thereof;
(b) providing a second component in the form of at
least one sugar, sugar analog and/or degradation product
thereof;
(c) forming a mixture of the first component and the
second component whereby the molar ratio of the first
component to the second component ranges from about 1:1
to about 60:1; and
(d) subjecting the mixture of step (c) to heat
treatment in a pressure controlled environment under
conditions sufficient to form the flavorful and aromatic
composition.
In rejecting the appealed claims under 35 U.S.C. § 103,
the examiner relies on the following reference:
Wu et al. (Wu) Re. 32,095 Mar. 25, 1986
In the Examiner's Answer (Paper No. 15), the examiner
presented the following grounds of rejection: (1) claims
Appeal No. 95-0386
Application No. 07/854,122
-3-
1 through 24 under 35 U.S.C. § 112, first paragraph, as based
on a non-enabling disclosure; (2) claims 1 through 24 under
35 U.S.C. § 112, second paragraph, as indefinite; and (3)
claims 1 through 24 under 35 U.S.C. § 103 as unpatentable over
Wu. However, in the Supplemental Examiner's Answer (Paper No.
17), the examiner does not repeat or refer to the rejection of
claims 1 through 24 under 35 U.S.C. § 112, second paragraph,
as indefinite. See particularly the Supplemental Examiner's
Answer, pages 1 and 2, summarizing the issues and the grounds
of rejection remaining on appeal. There, the examiner refers
to the rejection of all the appealed claims under 35 U.S.C.
§ 112, first paragraph, and 35 U.S.C. § 103, but does not
refer to the rejection under 35 U.S.C. § 112, second
paragraph. These facts permit only one plausible
interpretation, namely, that the examiner has dropped the
rejection of claims 1 through 24 under 35 U.S.C. § 112, second
paragraph, as indefinite. See Paperless Accounting v. Bay
Area Rapid Transit System, 804 F.2d 659, 663, 231 USPQ 649,
652 (Fed. Cir. 1986).
Accordingly, the issues remaining for review are:
Appeal No. 95-0386
Application No. 07/854,122
-4-
(1) whether the examiner erred in rejecting claims 1 through
24 under 35 U.S.C. § 112, first paragraph, as based on a non-
enabling disclosure; and (2) whether the examiner erred in
rejecting claims 1 through 24 under 35 U.S.C. § 103 as
unpatentable over Wu.
Appeal No. 95-0386
Application No. 07/854,122
-5-
DISCUSSION
In rejecting the appealed claims under 35 U.S.C. § 112,
first paragraph, the examiner emphasizes the following claim
recitations: (1) "alkyl and/or hydroxy alkyl group" in claims
5 and 13; and (2) "amino acid analog" in claims 1 and 10.
Apparently, the examiner believes that these terms are "too
broad" and that the claims should be limited to a more
narrowly defined set of alkyl groups and amino acid analogs
set forth in the supporting disclosure (Examiner's Answer,
paragraph bridging pages 3 and 4; and page 7, first full
paragraph).
The examiner's subjective belief that the claims are "too
broad," however, is not supported by evidence or sound
scientific reasoning. As stated in In re Marzocchi, 439 F.2d
220, 224, 169 USPQ 367, 370 (CCPA 1971):
[I]t is incumbent upon the Patent Office, whenever a
rejection on this basis [lack of enablement] is
made, to explain why it doubts the truth or accuracy
of any statement in a supporting disclosure and to
back up assertions of its own with acceptable
evidence or reasoning which is inconsistent with the
contested statement.
This the examiner has not done. In a nutshell, the examiner
has not provided sufficient reasons or evidence, on this
Appeal No. 95-0386
Application No. 07/854,122
-6-
record, which would serve to establish a prima facie case of
non-enablement.
The rejection under 35 U.S.C. § 112, first paragraph, is
reversed.
Turning to the rejection under 35 U.S.C. § 103, we find
that Wu discloses a method for preparing reaction flavors for
smoking compositions wherein a reducing sugar is combined with
a source of ammonia in the presence of a trace amount of an
amino acid
to form a reaction mixture which is heated to a temperature in
the range of about 90EC to 105EC (Wu, column 3, lines 12
through 17 and lines 45 through 48). As stated by Wu, "[t]he
weight ratio of sugar to amino acid will generally be in the
range of
200-300:1 with a ratio of about 235-245:1 being preferred"
(column 3, lines 61 through 63).
The claims on appeal require much greater amounts of
amino acid compared with the amounts disclosed by Wu. This
can be seen from a review of independent claims 1, 10, and 18,
step (c) of each claim. Simply stated, the differences
between the subject matter sought to be patented and the prior
Appeal No. 95-0386
Application No. 07/854,122
-7-
art are substantial. On this record, the examiner has not
explained how Wu's disclosure would have led a person having
ordinary skill from "here to there," i.e., from the prior art
process using trace amounts of amino acid to the claimed
process using much greater amounts of amino acid.
The rejection under 35 U.S.C. § 103 is reversed.
In an effort to meet the molar ratio limitations recited
in step (c) of independent claims 1, 10, and 18, the examiner
refers to the "BACKGROUND OF THE INVENTION" portion of Wu,
column 2, lines 3 through 17. There, Wu refers to U.S. Patent
No. 3,920,026, issued November 18, 1975, to Warfield et al.
(Warfield). As correctly pointed out by appellants, however,
the examiner has not set forth a ground of rejection of any
claim or claims based on Warfield (Reply Brief, page 4, first
full paragraph).
Accordingly, we remand this application with instructions
that the examiner step back and reevaluate the patentability
of claims 1 through 24 in light of U.S. Patent No. 3,920,026
(Warfield). The examiner should engage in a claim-by-claim
analysis. If the examiner believes that any claim or claims
are unpatentable over Warfield, the examiner should set forth
Appeal No. 95-0386
Application No. 07/854,122
-8-
an appropriate prior art rejection and provide appellants with
an opportunity to respond.
For the reasons set forth in the body of this opinion, we
reverse the examiner's prior art and non-prior art rejections.
We remand this application to the examiner with instructions
to reevaluate the patentability of claims 1 through 24 in
light of Warfield.
This application, by virtue of its “special” status,
requires immediate action. See the Manual of Patent Examining
Procedure, § 708.01(d). It is important that the Board of
Patent Appeals and Interferences be informed promptly of any
action affecting the appeal in this case.
REVERSED AND REMANDED
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
)
TEDDY S. GRON ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
TERRY J. OWENS )
Appeal No. 95-0386
Application No. 07/854,122
-9-
Administrative Patent Judge )
clm
Appeal No. 95-0386
Application No. 07/854,122
-10-
August J. Burschke
R.J. Reynolds Tobacco Co.
P.O. Box 1487
Winston-Salem, NC 27102