Ex Parte Taylor et al

Board of Patent Appeals and Interferences

Jun 29, 2011

11429507 (B.P.A.I. Jun. 29, 2011)

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.
11/429,507 05/05/2006 Jason Arthur Taylor MR3909-3 2232
64276 7590 06/29/2011
Technology Advancement Labs LLC
2710 Calgary Avenue
Kensington, MD 20895
EXAMINER
TRAN LIEN, THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
06/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JASON ARTHUR TAYLOR, REBECCA ANN ZELTINGER,
and JOHN G. COSBY JR.
__________

Appeal 2010-009465
Application 11/429,507
Technology Center 1700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants request rehearing of the decision entered March 28, 2011
(“Decision”). Appellants argue that the Decision erred in several ways (Req.
Rhg. 2-26) and effectively entered new grounds of rejection (id. at 26-29).
We have considered Appellants’ arguments but are not persuaded that they
show that we misapprehended or overlooked any relevant issues of fact or
law in reaching the conclusions set out in the Decision. The request for
rehearing is denied.
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Appellants argue that the Decision overlooked an argument that
“explain[s] how the preamble limits the types or amounts of components in
the composition beyond the limitations stated in the body of the claim” (Req.
Rhg. 3, quoting Decision 6). Appellants point to an argument presented in
the Reply Brief, which stated:
The cases leading to this sort of instruction by the MPEP
actually state that preambles are limiting “where the preamble
to the claim or count was expressly or by necessary implication
given the effect of a limitation.” Kropa v. Robie, 187 F.2d 150,
88 USPQ 478 (CCPA 1951). If “≥50%” is not just such a
limitation, one wonders what is. The limit is a physical
property concerning the invention itself, and, more particularly,
its relative energy density.
(Reply Br. 7.)
As we understand it, the argument in the Reply Brief relies on the
Specification’s definition of “low-calorie” as “≥50% caloric reduction” as a
basis for reading that limitation into the “low-calorie” recitation in the claim
preamble. (Cf. Appeal Br. 40.) That argument, however, does not persuade
us that our claim interpretation is wrong. We concluded that the preamble
states the intended use of the claimed mix, and Appellants have
not provided any evidence or sound reasoning for concluding
that the intended use further limits the structural components of
the mix that are stated in the body of the claim. That is,
Appellants have not explained why a mix that meets the
structural limitations in the body of claim 1 could not be used
as an ingredient in a low-calorie, palatable food.
(Decision 6.) This reasoning applies even if a “low-calorie” food is defined
as one with “≥50% caloric reduction,” as stated in the Specification.
Appellants’ argument still presents no reason why a mix meeting the
structural requirements stated in the body of claim 1 could not be used as an
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ingredient in such a food product. Therefore, Appellants still have not
provided any persuasive basis for concluding that the preamble of claim 1 is
limiting.
Appellants also argue that the Decision erred because the claim
preamble is entitled to patentable weight based on the rationale of Catalina
Mktg. Int’l Inc. v. Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002), and
Appellants’ reliance during prosecution on the preamble to distinguish the
claimed product from the prior art (Req. Rhg. 3-18).
This argument is also unpersuasive. Appellants’ argument that
Catalina Mktg. provides a “separate test[ ]” (Req. Rhg. 4) from that of Rowe
v. Dror, 112 F.3d 473 (Fed. Cir. 1997), for limiting a claim via its preamble,
but without adding structural limitations (Req. Rhg. 5-6), is not supported by
Catalina Mktg. itself. The Catalina Mktg. court cited Rowe for the same
point of law for which it is cited in the Decision. Compare 289 F.3d at 808
with Decision 4-5. The Catalina Mktg. court also cited cases for the
proposition that “preambles describing the use of an invention generally do
not limit the claims because the patentability of . . . composition claims
depends on the claimed structure, not on the use or purpose of that
structure.” 289 F.3d at 809. The Catalina Mktg. court did not cast any
doubt on the viability of this doctrine.
As Appellants have pointed out (Appeal Br. 36), the Catalina Mktg.
court did state that “clear reliance on the preamble during prosecution to
distinguish the claimed invention from the prior art transforms the preamble
into a claim limitation because such reliance indicates use of the preamble to
define, in part, the claimed invention.” 289 F.3d at 808. This statement,
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however, does not persuade us that the preamble of claim 1 limits the
claimed composition, for two reasons.
First, the example provided by the Catalina Mktg. court stated that
“statements of intended use or asserted benefits in the preamble may, in rare
instances, limit apparatus claims, but only if the applicant clearly and
unmistakably relied on those uses or benefits to distinguish prior art.” Id. at
809. The court provided a hypothetical to illustrate: if an inventor patents a
shoe polish composition, another inventor likely could not patent a method
of using it to polish shoes but likely could patent a method of using the same
composition for growing hair by applying it to skin. Id. at 809-810.
Importantly, however, the court made clear that the second inventor
“could not later secure a patent with composition claims on the same
composition because it would not be novel.” Id. at 809. That is precisely
the situation here – the body of claim 1 defines a composition disclosed by
Akkaway, and the fact that Appellants intend to use it as an ingredient in
food products that may (or may not) be more palatable or lower in calories
than food products that might be made with Akkaway’s composition does
not make the claimed composition itself any different from the one in the
prior art.
A second reason for concluding that Appellants’ reliance on Catalina
Mktg. is misplaced is that the court ultimately held that the preamble phrase
at issue was not a limitation of the claims. 289 F.3d at 810. The court’s
discussion of hypothetical circumstances in which a preamble might become
limiting as a result of “clear[ ] and unmistakabl[e] reli[ance]” on it, id. at
809-810, was not necessary to its holding on that point. In other words, it
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was dicta. Therefore, we follow the holding of cases such as Rowe v. Dror,
112 F.3d 473 (Fed. Cir. 1997), rather than the dicta of Catalina Mktg., in this
case.
Appellants’ argument that the Decision does not adequately explain
why the prosecution history is “ambiguous” (Req. Rhg. 6-14) is also
unpersuasive. The Decision rejected Appellants’ argument based on the
prosecution history because “Appellants have not explained how the
preamble limits the types or amounts of components in the composition
beyond the limitations stated in the body of the claim; i.e., how the preamble
allegedly limits the claimed composition structurally.” (Decision 6.) If the
statements cited by Appellants as relying on the preamble to distinguish the
claimed composition from the prior art do not make clear how the preamble
distinguishes the claimed composition from the prior art, those statements
can be reasonably characterized as ambiguous. Cf. Decision 6: “If
Appellants intend to claim a composition that is limited by more than what is
currently stated in the body of clam 1, there would seem to be no reason not
to include the appropriate limitations in the body of the claim, rather than
relying on ambiguous statements in the prosecution history.”
Appellants argue that Akkaway does not anticipate claim 1 (Req. Rhg.
18-20) but do not point to anything that was allegedly overlooked or
misapprehended in the Decision in reaching a contrary conclusion.
Appellants’ new arguments are therefore inappropriate to a Request for
Rehearing, and we decline to consider them. See 37 C.F.R. § 41.52(a)(1)
(“The request for rehearing must state with particularity the points believed
to have been misapprehended or overlooked by the Board. Arguments not
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raised in the briefs . . . are not permitted in the request for rehearing,” with
exceptions not relevant here.).
Appellants allege that they “argued inter alia that claims 2, 8, 15, 37-
57 are non-obvious . . . because the Akkaway reference clearly teaches away
from the use of hydrocolloids and water in at least three ways” (Req. Rhg.
21-22). This argument is unpersuasive because Appellants relied on the
arguments presented with respect to claim 1 as a basis for arguing the
patentability of claims 2, 8, 15, and 37-57. See Appeal Br. 51 (“[C]laims 1
and 58 are not obvious under 35 U.S.C. § 103(a) over Akkaway. Since
dependent claims 2, 8, 15, and 37-57 must inherit the nonobvious elements
of the claims they are dependent from . . . the rejection of claims 2, 8, 15,
and 37-57 under 35 U.S.C. § 103(a) should be reversed.”). Since Appellants
did not present any arguments showing the separate patentability of claims
2, 8, 15, and 37-57, our finding that Akkaway anticipated claim 1 was
dispositive with respect to the obviousness rejection of that claim. Claims 2,
8, 15, and 37-57 were not argued separately and we decline to consider their
separate patentability for the first time on rehearing.
Appellants argue that the Decision improperly shifted the burden to
them to show that certain claim language was supported by the Specification
and improperly weighed the evidence relied on by Appellants (Req. Rhg. 22-
25).
This argument is also unpersuasive. As discussed in the Decision, the
Examiner pointed out that the terms of the claims could not be found in the
Specification (Decision 9), which in such circumstances is the only thing
that can be expected (id. at 10, citing Hyatt v. Dudas, 492 F.3d 1365, 1370
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(Fed. Cir. 2007) (“When no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.”)). Appellants have cited no authority to support
their position that the Decision erred because it did not separately “treat each
alleged non-original limit or other newly added claim element separately”
(Req. Rhg. 23).
The Decision considered Appellants’ response to the Examiner’s
rejection (Decision 11-12) but concluded that the calculations in the Appeal
Brief, which were presented to show that the disputed claim terms were
inherent in the Specification’s disclosure (see, e.g., Appeal Br. 19-23), were
unsupported by evidence that would establish their reliability. The Decision
concluded that the calculations amounted to no more than attorney argument
(Decision 12) and therefore did not satisfy the burden that was properly
shifted to Appellants by the Examiner’s inability to find the claim terms in
the Specification. The Request for Rehearing does not point to any issue of
fact or law that was overlooked or misunderstood in the Decision.
Finally, Appellants argue that the Decision effectively entered new
grounds of rejection because it cited case law that had not been cited in the
Examiner’s final Office Action (Req. Rhg. 26-27) and “[i]f any of these
cases were used to advance a new argument not previously presented by the
Examiner in the Final Rejection for the purposes of affirming a rejection, it
constitutes a new grounds” (id. at 27).
We decline to designate our affirmance of any of the Examiner’s
rejections a new ground of rejection under 37 C.F.R. § 41.50(b). The
standard for determining whether an affirmance amounts to a new ground of
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rejection is whether the applicant has had a “fair opportunity to react to the
thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976)
(“[T]he ultimate criterion of whether a rejection is considered ‘new’ in a
decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection.”). Here, Appellants have pointed to no
way in which the basic thrust of our reasoning for affirming any of the
Examiner’s rejections differed from the Examiner’s reasoning in support of
the rejection.
Likewise, our claim interpretation does not differ substantially from
the Examiner’s. The Examiner interpreted the preamble of claim 1 as an
intended use that does not limit the claim. See Answer 12 (“[T]he feature of
‘low calorie palatable food’ is in the preamble of the claim and is an
intended use of the claim. The preamble and intended use of the
composition does not limit the composition.”). Appellants had, and took, the
opportunity to respond to this reasoning (Reply Brief 6-8). Our citation of
In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989), as supporting the Examiner’s
position does not transform our agreement with the Examiner’s claim
interpretation into a new ground of rejection.
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).

REHEARING DENIED

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