Ex Parte TAN et al

Patent Trial and Appeal Board

Mar 6, 2018

14056402 (P.T.A.B. Mar. 6, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/056,402 10/17/2013 Barrie TAN 36088-000 ICON 7980
46273 7590
KIRK HAHN
14431 HOLT AVENUE
SANTA ANA, CA 92705
03/06/2018 EXAMINER
CHEN, CATHERYNE
ART UNIT PAPER NUMBER
1655
MAIL DATE DELIVERY MODE
03/06/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRIE TAN and JOSE LLOBRERA1
Appeal 2017-001177
Application 14/056,402
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and RYAN H. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a composition comprising annatto seed oil extract and
plant oil extract. Claims 1, 2, 4, and 6—20 are on appeal as rejected under 35
U.S.C. §§ 101, 102, and 103. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification states, “[tjocopherol and tocotrienol are believed to
have beneficial effects because they act as antioxidants.” Spec. 4, 43.
The Specification further states, “[tjocols, which includes tocopherols and
1 Appellants identify the Real Party in Interest as “AMERICAN RIVER
NUTRITION, INC.” Appeal Br. 2.
Appeal 2017-001177
Application 14/056,402
tocotrienols, have several sources, including several vegetable oils, such as
rice bran, soybean, com and palm.” Id. 1 5. The Specification further states,
“[tjocotrienols (including delta- and gamma-tocotrienols) and geranyl
geraniols have been discovered in the seeds of Bixa orellana Linn, otherwise
known as the achiote tree,” where “[tjypically, annatto [seed oil extract] is
extracted from dehusked [achiote] seeds in an aqueous caustic solution,” and
the resulting “[a]nnatto extracts contain predominantly tocotrienols.” Id.
11 6—7, 9, 42-43.
Independent claim 1 is representative and is reproduced below:
1. A composition comprising:
an annatto seed oil extract from an annatto seed, wherein
the annatto seed oil extract comprises tocotrienol; and
a plant oil extract from a plant, wherein the plant oil extract
comprises tocotrienol, and wherein the plant is selected from the
group consisting of soy, com, rice bran, palm, olive, wheat germ,
oat bran, sunflower seed, cottonseed, cranberry seed, and litchi
seed.
Appeal Br. 15 (Claims App’x).
The following rejections are appealed:2
Claims 1, 2, 4, and 6—20 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter without significantly more.
Answer 2.
2 The Examiner identifies each rejection as “NEW GROUNDS” in the
Answer (at 2); however, each rejection set forth in the Answer is the same as
the respective rejection in the Final Action (at 5, 7, and 8). A double
patenting rejection was withdrawn. Answer 11.
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Application 14/056,402
Claims 1, 2, 4, and 6—19 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Tan.3 Id. at 8.
Claims 1, 2, 4, and 6—20 stand rejected under 35 U.S.C. § 103(a) over
Tan and Kalla.4 Id. at 9.
DISCUSSION
We adopt the Examiner’s findings of fact, reasoning on scope and
content of the claims and prior art, and conclusions set out in the Final
Action and Answer. Final Action 5—10; Answer 2—17. Only those
arguments made by Appellants in the Appeal Brief and properly presented in
the Reply Brief have been considered in this Decision. Arguments not so
presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015);
see also Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010)
(informative) (“Any bases for asserting error, whether factual or legal, that
are not raised in the principal brief are waived.”). Statements in a brief that
“merely mention [a] claim . . . and lack any type of separate, substantive
argument concerning the claim” are not sufficient to constitute separate
argument regarding that claim under 37 C.F.R. § 41.37(c)(l)(iv). In re Kao,
639 F.3d 1057, 1065 (Fed. Cir. 2011). “A statement which merely points
out what a claim recites will not be considered an argument for separate
patentability of the claim.” 37 C.F.R. § 41.37(c)(l)(iv); see also In re
Dance, 160 F.3d 1339, 1340 n.2 (Fed. Cir. 1998) (“Although Dance
mentions the content of the dependent claims, he does not argue their merits
separately from those of independent claim 33, or attempt to distinguish
3 US 6,350,453 B1 (issued Feb. 26, 2002) (“Tan”).
4 US 2003/0003064 A1 (pub. Jan. 2, 2003) (“Kalla”).
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Application 14/056,402
them from the prior art. Nor were the dependent claims argued separately
before the Board. Therefore, all claims stand or fall together with claim
33.”).
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Patent Eligibility
“Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.” Mayo Collaborative Servs. v.
Prometheus Labs, Inc., 566 U.S. 66, 71 (2012) (quoting Gottschalkv.
Benson, 409 U.S. 63, 67 (1972)). Claims directed to nothing more than
abstract ideas (such as mathematical algorithms), natural phenomena, and
laws of nature are not eligible for patent protection. Diamond v. Diehr, 450
U.S. 175, 185 (1981); accordMPEP § 2106 (II) (discussing Diehr).
In analyzing patent-eligibility questions under 35 U.S.C. § 101, the
Supreme Court instructs us to “first determine whether the claims at issue
are directed to a patent-ineligible concept.” Alice Corp. Pty Ltd. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2355 (2014). If the initial threshold is met, we
then move to a second step and “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 97).
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Under the above-cited precedent and in view of the facts presented,
we conclude the Examiner’s determination under Alice step one that the
claims are directed to a natural phenomenon/product of nature (annatto seed
oil extract not different from the natural oil and additional oil extract not
differing from natural oil) is reasonable and discern no error therein.
Answer 2—A. Further, we also conclude the Examiner’s determination under
Alice step two that any remaining claimed subject matter, i.e., the mixing of
the two products of nature, considered individually and as an ordered
combination, does not amount to significantly more than the products of
nature, and no inventive concept is claimed, is reasonable and without error.
See id. at 5.
Appellants argue the claimed composition is not a product of nature
because it cannot be found in nature. Appeal Br. 8. Appellants argue the
claimed composition “has different functions than the individual
ingredients.” Id. at 9-10 (citing Tan Declaration, generally).5 Appellants
also argue that the composition of claim 1 “can have percentages of the
tocopherol isomers and tocotrienol isomers, which have never existed before
in nature.” Id. at 10.
We are not persuaded by Appellants’ arguments. Appellants’
arguments concerning the perceived functions of the claimed composition
are not persuasive because recognition of natural properties of patent-
5 Declaration Under 37 C.F.R. § 1.131, signed by Barrie Tan, dated
December 31, 2006. We note that this declaration was filed under 37 C.F.R.
§ 1.131, which allows inventors to predate prior art or disqualify a
commonly owned patent/publication as prior art, not for other reasons
traversing an unpatentability rejection.
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ineligible subject matter does not confer eligibility to composition claims.
Appellants’ arguments as to how much of the claimed natural component
can be present are not persuasive because, regardless of purity or isolation,
the composition is nevertheless a natural product. We agree with the
Examiner’s determination that the claims are directed to a product of nature
that is not materially changed, without significantly more to provide an
inventive concept.
As in Myriad and Funk Bros., the claimed invention combines
isolated, but naturally occurring things, here two plant extracts, and does not
change them other than by purification, isolation, or packaging. See
Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct.
2107, 2117 (2013); Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S.
127, 130—32 (1948). As in Myriad, purifying or isolating a naturally
occurring compound or molecule, DNA in Myriad and tocotrienol-
containing extract here, without altering it in any way (e.g., by creating a
non-naturally occurring molecule like cDNA) is not patent-eligible. Myriad,
133 S. Ct. at 2116—20. As in Funk Bros., a combination of two or several
naturally occurring things that ordinarily would not naturally be so-
combined is also not patent eligible merely because of the combination. For
these reasons, we find the patent-ineligibility exception threshold met.
Turning to the second step under Alice, we review the claims to
ascertain whether the product of nature has been sufficiently transformed, or
in the terminology of Chakrabarty, ultimately possesses “markedly different
characteristics from any found in nature,” so as to become patent eligible.
See Alice, 134 S. Ct. at 2355; see also Diamond v. Chakrabarty, 447 U.S.
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Application 14/056,402
303, 305 (1980). The claims here are drawn to a composition and that is the
focus of our inquiry.
Unlike the facts of Chakrabarty (where the inventor created a
genetically modified bacteria capable of breaking down crude oil
components), the evidence supports that the inventor here has done nothing
more than isolate two extracts of natural plants and bring together these
natural components. Myriad is explicit that purification “is not an act of
invention” and that claims are not necessarily statutory even if isolation
“severs chemical bonds and thereby creates a nonnaturally occurring
molecule.” Myriad, 133 S. Ct. at 2117—2118. Appellants have selected and
paired natural biological chemicals, but have not changed any characteristic
thereof from what they would have been in nature. Thus, Appellants do not
claim significantly more than the product of nature and the claims fail under
the second Alice step.
For the reasons above, we find the preponderance of the evidence
supports the Examiner’s determination that the claims are patent ineligible
and we affirm the rejection (the dependent claims were not argued separately
and fall with claim 1).
Anticipation
“Anticipation requires that all of the claim elements and their
limitations are shown in a single prior art reference.” In re Skvorecz, 580
F.3d 1262, 1266 (Fed. Cir. 2009).
The Examiner determined that claim 1 was anticipated by the Tan
reference because the reference discloses the claimed, “annatto seed oil
extract from an annatto seed, wherein the annatto seed oil extract comprises
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tocotrienol,” at Tan’s claim 1, which states, “forming a tocotrienol
composition, comprising the step of volatilizing a solvent from a byproduct
solution of Bixa orellana seed components to form thereby said tocotrienol
composition,” and because the reference discloses the claimed “a plant oil
extract from a plant, wherein the plant oil extract comprises tocotrienol, and
wherein the plant is . . . rice bran,” at Tan’s claim 9 (dependent from claim
8, 7, and 1), which states “combining said byproduct solution with a
vegetable oil. . . wherein said vegetable oil includes rice bran oil.” Answer
8—9 (citing Tan claims 1, 9). We discern no error in the Examiner’s
determination.
Appellants argue that the rice bran oil of Tan’s examples, which was
combined with the annatto seed oil extract disclosed in the examples, was
actually a cooking oil and would have been understood to be free of
tocotrienols. Appeal Br. 11—12 (citing Tan Decl. 9-10); see also Reply
Br. 9. This argument is not persuasive.
While the Tan Declaration evidences that “[t]he [r]ice bran oil used in
the experiment [disclosed in Tan] was cooking oil” (Tan Decl. 19) and that,
as indicated in the Specification (Spec. 143), “[vegetable cooking oils,
commonly known as triglycerides, . . . are essentially free or free of
tocotrienols,” the Examiner’s determination of anticipation relies on portions
of the Tan reference other than the examples. Claim 9 of Tan, which is not
limited to any example, indicates “rice bran oil,” not rice bran cooking oil,
and Tan is explicit that “[tjocotrienols . . . have been discovered in the seeds
of Bixa orellana Linn [annatto seeds], otherwise known as the achiote tree,”
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and that “rice bran oil generally include[s] both tocotrienols and
tocopherols.” Tan claim 9, 1:32-42 (discussing sources of tocotrienols).
For the reasons set forth above, we affirm the anticipation rejection of
claims 1, 2, 4, and 6—19 (the dependent claims were not argued separately
and fall with claim 1).
Obviousness
In analyzing patentability and determining obviousness “[t]he
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007).
It is prima facie obvious to combine two compositions
each of which is taught by the prior art to be useful for the same
purpose, in order to form a third composition which is to be used
for the very same purpose. . . . [T]he idea of combining them
flows logically from their having been individually taught in the
prior art.
In re Kerkhoven, 626 F.2d 846, 850 (CCPA 1980).
The Examiner determined that the appealed claims would have been
obvious over Tan for the same reasons they were anticipated by Tan (which
teaches and suggests that extracted oil from annatto seed and rice bran
contains tocotrienols and that these oils should be combined), and that claim
20, which recites, “[t]he composition [of] claim 1, further comprising banaba
extract, a lipoic acid, chromium, a B vitamin, or a combination thereof,”
would have been obvious over Tan and Kalla because Tan teaches that
tocotrienols are antioxidants and Kalla teaches that lipoic acid is also an
antioxidant, suitable for combination in a pharmaceutical composition,
therefore, the skilled artisan would have had motivation to combine these
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teachings and would have had a reasonable expectation of successfully
doing so. Answer 9—11.
Appellants generally renew their arguments over Tan, as discussed
supra, relating to the anticipation rejection. Appeal Br. 12—13. Appellants
also argue Kalla does not remedy Tan’s shortcomings regarding the claimed
plant extract comprising tocotrienol. Id. at 13.
We remain unpersuaded. As discussed above, Tan discloses the
composition of claim 1. We find no error, nor is any argued, in the
combination of Tan and Kalla to add another antioxidant component in the
form of lipoic acid to the Tan extract-comprising composition, as recited by
claim 20. Therefore, for the reasons set forth above, we affirm the
obviousness rejection of claims 1, 2, 4, and 6—20 (the dependent claims were
not argued separately and fall with claim 1).
SUMMARY
The rejection of claims 1, 2, 4, and 6—20 as directed to patent-
ineligible subject matter is affirmed.
The rejection of claims 1, 2, 4, and 6—19 as anticipated is affirmed.
The rejection of claims 1, 2, 4, and 6—20 as obvious is affirmed.
TIME PERIOD FOR RESPONSE
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
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