Ex Parte Stahl et al

Board of Patent Appeals and Interferences

Jan 4, 2010

10148193 (B.P.A.I. Jan. 4, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BERND STAHL, GUNTHER BOHM, BERNDT FINKE,
GILDA GEORGI, JURGEN JELINEK, and JOACHIM J. SCHMITT
____________

Appeal 2009-001128
Application 10/148,193
Technology Center 1700
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Decided: January 4, 2010
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Before ALLEN R. MACDONALD, Vice Chief Administrative Patent Judge,
LINDA M. GAUDETTE, and JEFFREY B. ROBERTSON, Administrative
Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1, 3-7, 12, and 13 (Final Office Action
(“Final”), mailed Apr. 23, 2007, 1), the only claims pending in the
Appeal 2009-001128
Application 10/148,193

Application. (Appeal Brief (“App. Br.”), filed Feb. 25, 2008, 2.) We have
jurisdiction under 35 U.S.C. § 6(b).
The Examiner maintains (Examiner’s Answer (“Ans.”), mailed May
1, 2008, 3-4)1, and Appellants request review of, the following grounds of
rejection (App. Br. 8):
1. claims 1, 3-6, 12, and 13 under 35 U.S.C. § 102(b) as
anticipated by Thurl2;
2. claims 1, 3-6, 12, and 13 under 35 U.S.C. § 103(a) as
unpatentable over Thurl in view of Kobayashi3; and
3. claim 7 under 35 U.S.C. § 103(a) as unpatentable over Thurl
taken with or without Kobayashi and further in view of Prieto4.
Claim 1, the sole independent claim, reads5:
1. An oligosaccharide mixture on the basis of oligosaccharides
obtained from at least one animal milk and which oligosaccharides are
composed of two or more monosaccharide units, wherein said
oligosaccharide mixture contains:

at least two oligosaccharide fractions made up of at least two different
oligosaccharides wherein,

the total spectrum of the oligosaccharides present in the
oligosaccharide mixture differs from that of the animal milk or animal milks
from which the oligosaccharide fractions are obtained, and that

1 The Examiner has withdrawn the final rejection of claim 7 under 35 U.S.C.
§ 112, second paragraph. (Ans. 2.)
2 Thurl et al, “Quantification of Individual Oligosaccharide Compounds
from Human Milk Using High-pH Anion-Exchange Chromotography,”
Analytical Biochemistry 235, 202-206 (1996).
3 Kobayashi et al, US 4,944,952, issued Jul. 31, 1990
4 Prieto, WO 98/43494, issued Oct. 8, 1998
5 Claim 1 is reproduced from the Claims Appendix to the Appeal Brief.

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Application 10/148,193

a) if the oligosaccharides are obtained from only one animal
milk, the ratio of neutral oligosaccharides to acidic oligosaccharides is
90-60: 10-40 % by weight, or

b) if the oligosaccharides are obtained from at least two
animal milks, the oligosaccharides obtained from two different animal
milks each amount to at least 10 % by weight of the oligosaccharides
present in toto in the oligosaccharide mixture, and the ratio of neutral
oligosaccharides to acidic oligosaccharides is 90-60: 10-40 % by
weight, with the proviso that free lactose is not included in the ratios
in a) and b).

Having considered the respective positions of the Examiner and
Appellants, we determine that the Examiner’s rejections cannot be sustained
because they are based on an unsupported finding that a mixture of
oligosaccharide fractions obtained from human milk is the same as, or may
be derived from, a mixture of oligosaccharides obtained from animal milk.
Our findings and analysis follow.
Thurl “discloses that human milk includes an oligosaccharide
mixture” containing “two oligosaccharide fractions composed of at least two
different oligosaccharides, with free lactose not pertaining thereto, in which
the ratio of neutral oligosaccharides to acidic oligosaccharides is 11.62% by
weight to 88.38% by weight.” (Ans. 3 (citing Thurl, Tables 2 and 4).) As
acknowledged by the Examiner, Thurl does not disclose that the
oligosaccharides in the mixture can be obtained from animal milk6. (Id.)
However, the Examiner maintains that “the source of the oligosaccharide
does not patentably distinguish appellant’s composition from that of Thurl.”
(Id.)

6 The Examiner concedes that the term “animal milk,” as used in the claims,
excludes human milk. (Ans. 3.)
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Application 10/148,193

Appellants contend that a composition “obtained by remixing
oligosaccharide fractions from animal milks . . . cannot be the same [] as a
similar composition obtained from human milk.” (App. Br. 6.) Appellants
rely on an article by Stahl7 as evidence that there are significant structural
differences in the oligosaccharide patterns of human milk and animal milk.
(App. Br. 11.) The Specification likewise indicates that there are many
differences in the oligosaccharides obtained from animals and humans,
including differences in concentrations of individual components, structures,
and monosaccharide sequences and linkages. (See Spec. 2:18-28.)
The Specification explicitly states that the inventive mixture is not the
same as the oligosaccharide mixture found in human milk:
[t]he object of the present invention is to provide an
oligosaccharide mixture of oligosaccharides obtained from one
or several animal milks, the positive activity and in particular
the anti-infective activity of which corresponds to that of
oligosaccharides from human milk to the largest possible
extent.

(Spec. 3:15-18 (emphasis added).)
In response to Appellants’ arguments and evidence, the Examiner
makes the unsupported finding that
[a]lthough the oligosaccharides obtained from animal milk may
differ from those obtained from human milk, . . . when said
oligosaccharides are remixed in accordance with appellant's
invention the final resultant product/composition does not
patentably differ from human milk, which contains such a
mixture of oligosaccharides in the ratio claimed by appellant.

7 G. Boehm and B. Stahl, Oligosaccharides, Functional Daily Products,
Section 9.2.2, 204-244 (2003) (cited in the Evidence Appendix to the
Appeal Brief).
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Application 10/148,193

(Ans. 5.)
The Examiner bears the initial burden of establishing a prima facie
case of unpatentbility. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992);
In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984). If that burden is met,
the burden of coming forward with evidence or argument shifts to the
applicant. Id.; see also, In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990)
(“[W]hen the PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the burden of
showing that they are not.”).
Both the Specification and Stahl article support Appellants’
contention that the claimed oligosaccharide mixture is made up of structures
and/or components which differ from those in the mixture of
oligosaccharides found in human milk, i.e., the oligosaccharide mixture
disclosed in Thurl. By contrast, the Examiner has not identified persuasive
evidence which supports a finding that mixing oligosaccharide fractions
from animal milk will necessarily result in the same oligosaccharide mixture
found in human milk. Nor has the Examiner explained why this is a
reasonable belief given the many differences between animal and human
oligosaccharides described in the Specification and Stahl article.
In sum, Appellants have persuasively argued that the Examiner’s
rejections cannot be sustained because they are based on an unsupported
finding that a mixture of oligosaccharide fractions obtained from human
milk is the same as, or may be derived from a mixture of oligosaccharides
obtained from animal milk.
REVERSED
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tc

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