Ex parte Takeuchi et al.

Board of Patent Appeals and Interferences

Aug 29, 1997

07919267 (B.P.A.I. Aug. 29, 1997)

Application for patent filed July 27, 1992.1
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was not written for publication in a law journal and (2) is not
binding precedent of the Board.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. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASANORI TAKEUCHI, TAKASHI ONISHI, HIROKI IIDA,
KAZUSHI SAKAUE, TAKASHI OCHI and SHIRO OHASHI
__________
Appeal No. 94-4307
Application 07/919,2671
__________
ON BRIEF
__________
Before JOHN D. SMITH, WEIFFENBACH and WARREN, Administrative
Patent Judges.
WEIFFENBACH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
examiner's final rejection of claims 1-12. We affirm-in-part.
The Claimed Subject Matter
Appeal No. 94-4307
Application 07/919,267
2
The claims on appeal are directed to a method of preventing
a decrease in the sweetness of a solution containing thaumatin
and a substance which decreases the sweetness of thaumatin by
adding chitosan, hydrolyzed chitosan or mixtures thereof. Claim
1, the only independent claim in the application, is illustrative
of the claimed subject matter:
1. A method of preventing a decrease in
sweetness of thaumatin, comprising adding at least one
member selected from the group consisting of chitosan,
hydrolyzed chitosan, and mixtures thereof to an aqueous
solution containing thaumatin and a substance which
decreases the sweetness of thaumatin, in an amount
effective to prevent decrease in sweetness of
thaumatin.
The Prior Art and Rejections
According to the examiner, the following prior art
references are relied upon to support the rejections of the
claims:
Dialog Data Base, File 351 (Derwent World Patent Index),
Dialog Acc. No. 008363662, Abstracting Japanese Laid Open
Application 2-174649.
English translation of Japanese Laid Open Application
2-174649.
Appeal No. 94-4307
Application 07/919,267
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Claims 1-12 stand rejected under 35 U.S.C. § 102(b) as
anticipated by, or in the alternative, under 35 U.S.C. § 103 as
obvious over Japanese Laid Open Application 2-174649.
Claim 10 stands rejected under 35 U.S.C. § 112, first
paragraph, in that “the specification, as originally filed, does
not provide support for the invention as is now claimed” (Answer,
page 3).
Opinion
We have carefully considered the respective positions ad-
vanced by both appellants and the examiner for patentability of
the appealed claims. We will affirm the rejection under 35
U.S.C. § 112. However, we will reverse the examiner’s rejections
under 35 U.S.C. § 102(b) and 103.
Rejection Under 35 U.S.C. § 102(b)
The factual determination of anticipation requires the
disclosure in a single reference of every element of the claimed
invention. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657
(Fed. Cir. 1990); In re Bond, 910 F.2d 831, 832, 15 USPQ2d 1566,
1567 (Fed. Cir. 1990); Diversitech Corp. v. Century Steps, Inc.,
850 F.2d 675, 677-678, 7 USPQ2d 1315, 1317 (Fed. Cir. 1988); In
re Marshall, 578 F.2d 301, 304, 198 USPQ 344, 346 (CCPA 1978); In
re Arkley, 455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972). It
Appeal No. 94-4307
Application 07/919,267
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is incumbent upon the examiner to identify wherein each and every
facet of the claimed invention is disclosed in the applied
reference. Lindemann Maschinenfabrik GmbH v. American Hoist and
Derrick, 730 F.2d 1452, 1458, 221 USPQ 481, 485 (Fed. Cir. 1984).
In the claims on appeal, an effective amount of the
chitosan, hydrolyzed chitosan or a mixture thereof is added to a
solution containing thaumatin and a substance which decreases the
sweetness of thaumatin to prevent the decrease in sweetness of
thaumatin. The examiner rejected the claims under 35 U.S.C.
§ 102(b) as being anticipated by the Japanese Laid Open
Application 2-174649. The reference teaches adding chitosan to a
solution (e.g. apple juice) containing thaumatin to prevent
coagulation and separation of thaumatin when it is used in the
presence of negatively-charged substances (e.g. apple juice).
The reference does not disclose adding hydrolyzed chitosan or a
mixture of hydrolyzed chitosan and chitosan to a solution
containing thaumatin. Nor does the reference disclose that a
substance which decreases the sweetness of thaumatin is present
in a solution containing thaumatin when chitosan is added. Since
the examiner has not established that each and every facet of the
claimed invention is disclosed in the applied reference, we
cannot agree with the examiner that the claimed subject matter
Appeal No. 94-4307
Application 07/919,267
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would have been anticipated by the reference relied upon for the
rejection. Accordingly, the rejection of claims 1-12 under 35
U.S.C. § 102(b) is reversed.
Rejection for Obviousness
In the alternative, the examiner rejected all of the
appealed claims under 35 U.S.C. § 103 as being unpatentable over
Japanese Laid Open Application 2-174649. For substantially the
same reasons as given above, this rejection too must fail. The
examiner has failed to present evidence or any analysis of the
prior art which would have led a skilled artisan to the claimed
subject matter, i.e. to add chitosan or hydrolyzed chitosan or a
mixture thereof to a solution containing thaumatin and a
substance that decreases the sweetness of thaumatin. See In re
Brouwer, 77 F.3d 422, 425, 37 USPQ2d 1663, 1666 (Fed. Cir. 1996);
In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1131 (Fed. Cir.
1995). According to appellants, the sweetness of thaumatin
decreases when an aqueous solution of thaumatin contains coloring
agents or polysaccharides (specification, paragraph bridging
pages 1 and 2). They have discovered that adding chitosan or
hydrolyzed chitosan or a mixture thereof to such a solution will
effectively prevent the decrease in sweetness of thaumatin. The
problem and appellants’ solution of the problem is not addressed
Appeal No. 94-4307
Application 07/919,267
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or suggested by the Japanese reference relied upon by the
examiner. We find that the examiner has not made out a prima
facie case of obviousness over the prior art. Accordingly, the
examiner’s rejection of claims 1-12 under 35 U.S.C. § 103 is
reversed.
Rejection Under 35 U.S.C. § 112
The examiner rejected claim 10 on the ground that the
expression “ascorbic acid is substantially absent from said
aqueous solution” does not have descriptive support in the
specification as originally filed. Appellants argue that support
for the expression can be found at page 1, lines 12-19 of the
specification wherein appellants state that
[t]he present inventors have formerly found that, when
[a] negatively-charged substance (e.g. fruit juice and
anionic surface active agent) is present in aqueous
solution of thaumatin, precipitates are formed and that
it is effective to use chitosan for preventing such
precipitation and also to use ascorbic acid and
chitosan together for preventing unpleasant after-taste
of aqueous solution of thaumatin (cf. Japanese Laid-
Open Publication 02/174,649).
According to appellants, this disclosure plus the discussion of
the invention in the specification coupled with the fact that
none of the examples in their specification include ascorbic acid
“establishes that [the] absence of ascorbic acid, from the
Appeal No. 94-4307
Application 07/919,267
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process of the invention, is contemplated, in the application as
filed” (Brief, paragraph bridging pages 6 and 7). We disagree.
The function of the 35 U.S.C. § 112, first paragraph,
written description requirement is to ensure that the inventors
had possession of the specific subject matter later claimed as of
the filing date of the application. In re Edwards, 568 F.2d
1349, 1351, 196 USPQ 465, 467 (CCPA 1978); In re Wertheim, 541
F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976). In order to comply
with this requirement, it is not necessary that the claimed
limitation be described ispis verbis in the specification. In re
Lukach, 442 F.2d 967, 969, 169 USPQ 795, 796 (CCPA 1971).
However, the specification must reasonably convey to a person of
ordinary skill in the art that as of the filing date of the
application, the inventors had possession of the subject matter
later claimed. In re Edwards, 568 F.2d at 1351-1352, 196 USPQ at
467; In re Wertheim, 541 F.2d at 262, 191 USPQ at 96. The
determination as to whether the specification provides support
for the newly claimed subject matter is primarily factual and
depends on the nature of the invention and the amount of
knowledge imparted by the disclosure to those of ordinary skill
in the art. In re Wertheim, 541 F.2d at 262, 191 USPQ at 96.
Appeal No. 94-4307
Application 07/919,267
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The limitation in question is a negative limitation wherein
appellants’ claim 10 is open to the inclusion of compounds other
than ascorbic acid. Appellants’ specification does not
explicitly state that ascorbic acid is excluded from the
thaumatin solution comprising the claimed invention and it fails
to provide any explanation as to why only ascorbic acid should be
excluded from the thaumatin solution as opposed to other
compounds which may have similar chemical properties as ascorbic
acid. The disclosure upon which the appellants rely on for
support of the limitation is limited only to what is known in the
prior art. The prior art did not disclose or suggest a reason
for excluding ascorbic acid from a thaumatin solution containing
a coloring agent or polysaccharide. For the reasons given above,
we find that appellants’ specification, at the time the
application was filed, would not have conveyed to a person having
ordinary skill in the art that ascorbic acid is substantially
absent from appellants’ thaumatin solution. Accordingly, the
examiner’s rejection of claim 10 under 35 U.S.C. § 112, first
paragraph, is affirmed.

Appeal No. 94-4307
Application 07/919,267
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Conclusion
For the foregoing reasons, the decision of the examiner is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge)
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge) APPEALS AND
) INTERFERENCES
)
)
CHARLES F. WARREN )
Administrative Patent Judge)
Appeal No. 94-4307
Application 07/919,267
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