Ex Parte Tan et alDownload PDFPatent Trial and Appeal BoardMay 27, 201612595609 (P.T.A.B. May. 27, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/595,609 03/16/2010 Yew Ai Tan 30542 7590 06/01/2016 FOLEY & LARDNER LLP 3000 K STREET N.W. SUITE 600 WASHINGTON, DC 20007-5109 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. 069359-0301 4784 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 06/01/2016 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): ipdocketing@foley.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YEW AI TAN, RA VIGADEVI A/P SAMBANTHAMURTHI, KAL Y ANA SUNDRAM AIL MANICKAM, and MOHD BASRI BIN W ARID Appeal2015-000850 Application 12/595,609 Technology Center 1700 Before TERRY J. OWENS, JAMES C. HOUSEL, and MONTE T. SQUIRE, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 appeal the Examiner's final rejection of claims 11, 12, and 14. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM. 1 Appellants identify Malaysian Palm Oil Board as the Real Party in Interest. App. Br. 2. Appeal2015-000850 Application 12/595,609 The Claimed Invention Appellants' disclosure relates to antioxidant compounds derived from a plant material, wherein the antioxidant compounds are phenolics comprising phenolic acids and flavonoids extracted from palm oil mill aqueous by-products. Abstract. Claim 11 is representative of the claims on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 12): 11. An antioxidant composition comprising: (i) an aqueous antioxidant extract comprising palm phenolics and flavonoids obtained from palm oil mill aqueous by-products; and (ii) a surface active agent, or solution thereof; wherein the aqueous extract forms an emulsion in the presence of the surface active agent or solution thereof, and further wherein the surface active agent is selected from the group consisting of polysorbate 80, propylene glycol, and lecithin. The References The Examiner relies on the follovving references in rejecting the claims on appeal: Shin et al., us 5,084,289 Sambanthamurthi et al., US 2003/0031740 Al (hereinafter "Sambanthamurthi") Sambanthamurthi et al., US 7,387,802 B2 (hereinafter "' 802 Patent") 2 Jan.28, 1992 Feb. 13,2003 June 17, 2008 Appeal2015-000850 Application 12/595,609 The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 11, 12, and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Sambanthamurthi in view of Shin. 2. Claims 11, 12, and 14 stand rejected on the ground of non- statutory obviousness-type double patenting as unpatentable over claim 23 of the '802 Patent in view of Shin. OPINION2 Rejection 1 Appellants argue claims 11, 12, and 14 as a group. We, therefore, select claim 11 as representative of this group, and the remaining claims stand or fall with claim 11. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds that Sambanthamurthi teaches nearly all of claim 11 's limitations, except that it does not teach "combining the [antioxidant] composition with a surface active agent to form a stable emulsion and the antioxidant extract specifically being dissolved in water," as required by the claim. Ans. 2, 3 (citing Sambanthamurthi, Abstract, i-fi-127, 41, 42, 51, 52). The Examiner, however, relies on Shin for teaching these limitations. Id. at 3. In particular, the Examiner finds that Shin teaches that combining water-soluble antioxidants from plants with surface active agents, including 2 We affirm the Examiner's rejections for the reasons set forth in the Answer, which we adopt as our own. Nevertheless, we highlight and address specific findings and arguments for emphasis as follows. 3 Appeal2015-000850 Application 12/595,609 polysorbate 80 and lecithin, increases the solubility of such compounds in oils and fats, thereby expanding the composition's use in a wide range of food applications. Id. at 3 (citing Shin, col. 3, 11. 27-35, col. 2, 1. 59---col. 3, 1. 10, col. 2, 11. 1-25, and Example 2). The Examiner finds that Shin further teaches that the antioxidants are solubilized in the presence of surfactant (i.e., surface active agent) and water, and that Shin specifically discloses aqueous solutions of antioxidants combined with the surface active agents. Id. (citing Shin, col. 1, 11. 1---6 and Example 2). The Examiner concludes that it would have been obvious to one of ordinary skill in the art at the time of the invention to add a surface active agent as taught by Shin to the aqueous antioxidant extract as taught by Sambanthamurthi in order to obtain a palm phenolic and flavonoid composition that is fat-soluble and may be readily added to fat- and oil- containing foods. Ans. 3, 4. Appellants argue that the Examiner's rejection of claim 11 should be reversed because "the Examiner has failed to establish a prima facie case of obviousness." App. Br. 5. In particular, Appellants argue that the "Examiner's assertion that Sambanthamurthi inherently discloses that [its] compounds have antioxidant activity in oils is erroneous." Id. at 6. We do not find this argument persuasive. Based on the record before us, we do not discern reversible error in the Examiner's finding that Sambanthamurthi inherently discloses a palm phenolic and flavonoid composition having antioxidant activity in oils. As the Examiner found (Ans. 2, 5), Sambanthamurthi explicitly teaches: (a) the same antioxidant compounds (i.e., palm phenolics and flavonoids) extracted from the same source (i.e., palm oil mill effluent) as the claimed invention; (b) that these 4 Appeal2015-000850 Application 12/595,609 phenolics and flavonoids possess antioxidant activity; and ( c) that they may be added to foods and are useful as antioxidant additives. Sambanthamurthi, Abstract, i-fi-127, 41, 42, 51, 52. As the Examiner further found (Ans. 2, 6), because Sambanthamurthi' s antioxidant composition is identical to and produced by the same process as the claimed composition, it follows that it would inherently have the same properties as the claimed composition, including antioxidant activity in oils. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (where the claimed and prior art products are identical or substantially identical in structure, a prima facie case of obviousness has been established). Appellants have failed to identify sufficient evidence in the record to establish that the prior art and claimed compositions are not the same, or to adequately rebut the Examiner's rationale and findings in this regard. Appellants argue that "Sambanthamurthi does not teach or suggest that the antioxidant composition of the current claims would possess antioxidant properties in oils." App. Br. 7. Appellants also argue that Shin does not cure the deficiencies in Sambanthamurthi teachings. Id. We are not persuaded by these arguments. Appellants' naked assertion that Sambanthamurthi fails to teach or suggest a claim limitation is not an argument in support of separate patentability. Cf In re Lovin, 652 F.3d 1349, 1356-57 (Fed. Cir. 2011); 37 C.F.R. § 41.37(c)(l)(iv). In addition, as previously discussed above and contrary to Appellants' argument, Sambanthamurthi does teach that the claimed antioxidant composition possesses antioxidant properties in oils. Sambanthamurthi, Abstract, i-fi-127, 42, 51. 5 Appeal2015-000850 Application 12/595,609 Moreover, considering the teachings of the prior art as a whole, the Examiner's finding that the combination of Sambanthamurthi and Shin teaches all the limitations of the claimed invention and rationale for why one of ordinary skill would have combined these references to arrive at the claimed invention are well-supported by the evidence and based on sound technical reasoning. Sambanthamurthi, Abstract, i-fi-127, 41, 42, 51, 52; Shin, col. 1, 11. 1---6, col. 2, 11. 1-25, col. 2, 1. 59---col. 3, 1. 10, col. 3, 11. 27-35, and Example 2. Appellants' conclusory assertion that Shin "does not cure [the] defect of Sambanthamurthi" (App. Br. 8), without more, is insufficient to establish reversible error in the Examiner's analysis and findings in this regard. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants argue that the Examiner's rejection should be reversed because the claimed invention demonstrates unexpected results. App. Br. 8; Reply Br. 3, 4. In particular, Appellants argue that "the claimed antioxidant composition exhibited superior long-term antioxidant activity when solubilized in oil as compared to the antioxidants disclosed in Shin." Reply Br. 4. We do not find Appellants' argument persuasive. In attempting to overcome a prima facie case of obviousness by showing unexpected results, the burden rests with Appellants to establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of the invention. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (citations omitted); In re Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("the burden of showing unexpected results rests on he who asserts them"). 6 Appeal2015-000850 Application 12/595,609 Appellants have failed to meet their burden. Appellants do not identify sufficient evidence to show that there actually is a difference between the results obtained through the claimed invention and those of the closest prior art. In re Klosak, 455 F .2d at 1080 ("[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference."). The experimental results Appellants rely upon for showing unexpected results are not commensurate with the scope of the claims. In particular, as noted by the Examiner (Ans. 10), the results in Example 5 of the Specification are limited to specific amounts of palm phenolic extract and lecithin. The claims, however, are not so limited and cover compositions comprising components in any amount, and the surface active agent is not limited to lecithin. See claim 11. The proffered results are also not representative of the teachings of the prior art. As the Examiner points out (Ans. 8), the examples in Figure 1 of Shin to which Appellants refer were not prepared according to the invention of Shin to have improved solubility in fats and oils. Moreover, Appellants do not identify sufficient evidence that the difference actually obtained would not have been expected by one skilled in the art at the time of the invention. Accordingly, we affirm the Examiner's rejection of claims 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over the combination of Sambanthamurthi and Shin. Rejection 2 Appellants argue claims 11, 12, and 14 as a group. Accordingly, we select claim 11 as representative of this group, and claims 12 and 14 stand or 7 Appeal2015-000850 Application 12/595,609 fall with claim 11. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner concludes that claim 11 is unpatentable on the ground of non-statutory obviousness- type double patenting over the combination of claim 23 of the '802 Patent and Shin. Ans. 7. In response to this rejection, Appellants rely on the same arguments presented above for the patentability of claim 11 in response to Rejection 1. App. Br. 10, 11. Based on the findings and technical reasoning provided by the Examiner, and for the reasons discussed above for affirming Rejection 1, we find that Appellants have fail to establish reversible error in the Examiner's factual findings and legal conclusions with respect to Rejection 2. Accordingly, we affirm the Examiner's rejection of claims 11, 12, and 14 on the ground of non-statutory obviousness-type double patenting as unpatentable over claim 23 of the '802 Patent in view of Shin. DECISION/ORDER The Examiner's rejection of claims 11, 12, and 14 under 35 U.S.C. § 103(a) as unpatentable over Sambanthamurthi in view of Shin is affirmed. The Examiner's rejection of claims 11, 12, and 14 on the ground of non-statutory obviousness-type double patenting as unpatentable over claim 23 of the '802 Patent in view of Shin is affirmed. It is ordered that the Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 8 Copy with citationCopy as parenthetical citation