Ex Parte Tominaga et alDownload PDFPatent Trial and Appeal BoardMay 22, 201512768159 (P.T.A.B. May. 22, 2015) Copy Citation 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. 12/768,159 04/27/2010 Kumi TOMINAGA 943_012 5076 25191 7590 05/22/2015 BURR & BROWN, PLLC PO BOX 7068 SYRACUSE, NY 13261-7068 EXAMINER THAKUR, VIREN A ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 05/22/2015 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 KUMI TOMINAGA, MARIKO KARATO, NOBUKO HONGO, and EIJI YAMASHITA ____________ Appeal 2013-007726 Application 12/768,159 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1‒4 of Application 12/768,159 under 35 U.S.C. § 103(a) as obvious. Final Act. (June 12, 2012). Appellants1 seek reversal of these rejections pursuant to 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 Fuji Chemical Industry Co., Ltd. is identified as the real party in interest. App. Br. 1. Appeal 2013-007726 Application 12/768,159 2 BACKGROUND Carotenoid pigments are a family of pigments, ranging in color from yellow to red, that are widely found in plants and animals. Spec. ¶ 3. Due to their chemical structure, these pigments have poor stability against oxygen, heat, and light. Id. at ¶ 5. The ’159 Application describes a method for suppressing discoloration of a carotenoid pigment due to light and containers that use this method. Id. at ¶ 2. Claim 1 is representative of the ’159 Application’s claims and is reproduced below: 1. A method of suppressing discoloration of an astaxanthin- containing product comprising storing an astaxanthin- containing product that is an external preparation, cosmetic, a quasi drug or a drug in a container that has an average spectral transmittance of 0.01 to 45.0% only between a wavelength of 535 to 695 nm within the visible region, the container allowing the amount of product stored therein to be determined from outside of the container. App. Br. 16 (Claims App’x). REJECTIONS On appeal, the Examiner maintains the following rejections: 1. Claims 1‒4 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Ford,2 Sundram,3 Kiso,4 and either 2 US 5,607,707, issued March 4, 1997. 3 US 6,630,192 B2, issued October 7, 2003. 4 US 7,001,611 B2, issued February 21, 2006. Appeal 2013-007726 Application 12/768,159 3 Christophersen5 or Chen,6 as evidenced by Inooka7 and the definition of the term “drug.” Final Act. 2; Ans. 4. 2. Claims 1‒4 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Sundram, Ford, Kiso, and either Christophersen or Chen, as evidenced by Inooka and the definition of the term “drug.” Final Act. 3; Ans. 8. DISCUSSION Rejection 1. The Examiner rejected claims 1‒4 as obvious over the combination of Ford, Sundram, Kiso, and either Christophersen or Chen, as evidenced by Inooka and the definition of the term “drug.” Ans. 4. We affirm this rejection for the reasons set forth in the Examiner’s Answer. We add the following. Appellants claim to have discovered that exposure of astaxanthin to light with a wavelength between 535 nm and 695 nm causes cleavage of one of astaxanthin’s linear double bonds and results in discoloration. See App. Br. 5‒6. Appellants argue that the Examiner’s rejection should be reversed because none of the references cited by the Examiner describes the 5 A.G. Christophersen et al., Photobleaching of astaxanthin and canthaxanthin: Quantum-Yields Dependence of Solvent, Temperature, and Wavelength of Irradiation in Relation to Packaging and Storage of Carotenoid Pigmented Salmonoids, 192 Z. LEBENSM. UNTERS. FORSCH. 433‒39 (1991). 6 H.-M. Chen & S.P. Meyers, Effect of Antioxidants on Stability of Astaxanthin Pigment in Crawfish Waste and Oil Extract, 30 J. AGRIC. FOOD CHEM. 469‒73 (1982). 7 US 2007/0197648 A1, published August 23, 2007. Appeal 2013-007726 Application 12/768,159 4 sensitivity of astaxanthin to light with wavelengths between 535 nm and 695 nm. See id. at 8‒9, 12. We are not persuaded by this argument because the prior art need not contain such a teaching to render Appellants’ claims unpatentable. In this case, we conclude that the combination of references cited by the Examiner would have suggested to a person of ordinary skill in the art that discoloration of an astaxanthin-containing product could be prevented by taking steps that result in the practice of Appellants’ claimed process. In rejecting Appellants’ claims, the Examiner explained that, at the time of the invention, a person of ordinary skill in the art would have known that astaxanthin photobleaches when it absorbs light with wavelengths of about 313 nm and between 436 nm and 470 nm. Ans. 7 (citing Ford, Christophersen, and Chen). Thus, it would have been obvious to a person of ordinary skill in the art that the long-term stability of an astaxanthin- containing product would be enhanced by storage in containers that did not transmit light in these wavelengths. One way to accomplish this goal would have been to wrap the container in cellophane as described in Sundram. Id. The data in Sundram’s Table VI reveal that green cellophane permits transmission of an average of 0.6% of light having wavelengths between 300 nm and 320 nm and an average of 7.1% of light having wavelengths between 440 nm and 480 nm.8 Thus, it would have been obvious to a person of ordinary skill in the art to store the astaxanthin-containing product in a green cellophane- 8 We note that one of the embodiments of the claimed invention described in Appellants’ Specification uses green cellophane. See Spec. ¶¶ 118‒125. Appeal 2013-007726 Application 12/768,159 5 wrapped container. Although the person of ordinary skill in the art would have chosen the container to reduce exposure of the astaxanthin-containing product to light with wavelengths of 470 nm or less, nevertheless the container would have an average transmittance of about 3.25% for wavelengths between 540 nm and 700 nm. The skilled artisan, therefore, also would be practicing Appellants’ claimed method inherently. Appellants also argue that the Examiner ignored the use of the word “only” in their claims. Reply Br. 2‒3. For example, claim 1 is directed to a method comprising storing the astaxanthin-containing product in “a container that has an average spectral transmittance of 0.01 to 45.0% only between a wavelength of 535 to 695 nm.” (emphasis added). Appellants, however, do not explain how their use of the word “only” patentably distinguishes their claims over the prior art. In particular, Appellants do not point to any disclosure in their Specification (or elsewhere) that requires interpreting the phrase “only between a wavelength of 535 to 695 nm” as excluding the prior art wavelengths of 470 nm or less. In the absence of a persuasive argument of this sort, we conclude that the Examiner’s implicit interpretation of the phrase as meaning that the claim limits the transmittance of the container over the recited range of wavelengths and is silent regarding the container’s transmittance of other wavelengths of light is reasonable. Rejection 2. The Examiner also entered a second rejection of claims 1‒4 as obvious over the combination of Sundram, Ford, Kiso, and either Christophersen or Chen, as evidenced by Inooka and the definition of the term “drug.” Ans. 8. Appeal 2013-007726 Application 12/768,159 6 This rejection relies upon the same references as Rejection 1. The Examiner also used analogous reasoning to support this rejection. See Ans. 11. Appellants argue that this rejection should be reversed for same reasons advanced with respect to Rejection 1. For the reasons discussed above, therefore, we also affirm this rejection of claims 1‒4. CONCLUSION We affirm the rejection of claims 1‒4 of the ’159 Application. 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 cdc Copy with citationCopy as parenthetical citation