Ex Parte Wassenaar

Board of Patent Appeals and Interferences

Feb 1, 2010

10273854 (B.P.A.I. Feb. 1, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLEM WASSENAAR
__________

Appeal 2009-011844
Application 10/273,854
Technology Center 1600
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Decided: February 1, 2010
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to a
sweetener composition. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.

Appeal 2009-011844
Application 10/273,854

Statement of the Case
Background
“N-acetylglucosamine is a major constituent of glycoproteins
(proteins with a few sugars attached) and proteoglycans (sugar chains with a
few proteins attached)” (Spec. 1, ll. 16-17). According to the Specification,
“N-acetylglucosamine also has important regulatory functions” (Spec. 1, ll.
19-20). The Specification teaches that the “University Department of
Paediatric Gastroenterology at the Royal Free Hospital in London used N-
acetylglucosamine in the treatment of inflammatory bowel disease” (Spec. 6,
ll. 21-22). According to the Specification, “N-acetylglucosamine in this
small trial was an effective treatment in chronic inflammatory bowel
disease” (Spec. 7, ll. 5-7).
The Claims
Claims 25, 30, and 31 are on appeal. Claims 25, 30, and 31 read as
follows:
25. A sweetener composition consisting essentially of N-
acetylglucosamine and one or more additional component,
wherein the one or more additional component is a
sweetener and wherein the composition is packaged in
single serving packets or cubes.

30. The sweetener composition of claim 25, wherein the
one or more additional component is selected from the group
consisting of sugar, saccharin, aspartame, cyclamate,
acesulfame K, sucralose, alitame, and neotame.

31. A single serving composition consisting essentially of
from about 0.1 grams to 20 grams of N-acetylglucosamine
per single serving portion packaged in single serving packets
or cubes.
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The prior art
The Examiner relies on the following prior art references to show
unpatentability:
Stone US 6,432,929 B1 Aug. 13, 2002
Martin et al. US 6,660,308 B1 Dec. 9, 2003
Burton CA 1,318,592 Jun. 1, 1993

The issue
The Examiner rejected claims 25, 30, and 31 under 35 U.S.C. § 103(a)
as obvious over Burton, Martin, and Stone (Ans. 3-6).
The Examiner finds that “Burton discloses a composition of N-
acetylglucosamine in the amount 1000-6000 mgs which is equal to 1-6
grams, one teaspoon of the N-acetylglucosamine is about 2 gram” (id. at 3).
The Examiner finds that Burton teaches “dissolving N-acetylglucosamine in
fruit juice” (id.). The Examiner finds that “Martin et al. discloses a beverage
composition comprising N-acetylglucosamine in the amount 1000-2000 mg
which is equal to 1-2 grams, within the claimed range herein, with a
pharmaceutical carrier, water, or coffee, tea, fruit or vegetable juice, soda”
(id. at 4). The Examiner finds that
Stone discloses that glucosamine compositions are in the
form of a snack bar or a beverage, a juice drink, as
nutritional bars, a meal replacement bar (see col.7 line 42-43
and energy drinks wherein sugar is present (see abstract,
col.3 line 60-67). These nutritional bars and energy drinks
are packaged into final products (see col.7 line 23-24,
Example 1-17).

(Id. at 5.)
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The Examiner concludes that it would have been obvious “to make N-
acetylglucosamine compositions of the prior art . . . in a nutritional bar, or in
a meal replacement bar, since glucosamine compositions are known in the
form of . . . nutritional bars, a meal replacement bar and energy drinks
according to Stone” (Ans. 5).
Appellant argues that “it is error on the Examiner's part to dismiss
‘consisting essentially of’ as this term is used in claims 25 and 31” (App. Br.
24).
Appellant argues that
What Burton teaches is that various amounts of N-
acetylglucosamine are required when treating patients in the
espoused manner. Because of the need for flexibility in
dosing the amounts, one of skill in the art would not have a
reason to provide the N-acetylglucosamine in a single
serving packet or cube in substitution for the form of Burton
as is proposed in the rejection.

(Id. at 17.) Appellant argues that a “further reason that Burton teaches away
from the invention of claim 25 is Burton’s use of the N-acetylglucosamine
with a pharmaceutical carrier to treat a medical condition” (id.). Appellant
argues that “[i]n the face of the desire of Martin to provide a liquid
containing N-acetylglucosamine, one of skill in the art would be led away
from modifying Martin to create a solid form of N-acetylglucosamine” (id.
at 18).
Appellant argues that “the issue of patentability is not a mere selection
of a packaging form and is it error on the Examiner's part to conclude
obviousness using this reasoning. Rather, it is a question of whether the prior
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art forms of Burton and Martin can be so modified to meet the limitations
found in claims 25 and 31” (App. Br. 21).
In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Has Appellant demonstrated that the Examiner erred in finding that
Martin, Stone, and Burton render obvious a “sweetener composition
consisting essentially of N-acetylglucosamine” which is packaged in “single
serving packets or cubes”?
Findings of Fact (FF)
1. The Specification teaches that “[s]ince N-acetylglucosamine
has a slightly sweetish taste, it can be added to liquids or foods that have a
sweet taste or benefit from sweetening” (Spec. 13, ll. 18-20).
2. The Specification teaches that “[c]ommonly used sweeteners,
such as sugar, saccharin, aspartame, cyclamate, acesulfame K, sucralose,
alitame, neotame and the like are often packaged in packets. The addition of
a quantity of N-acetylglucosamine to such packets or a cube allows the
consumer to obtain their desired daily dose of N-acetylglucosamine” (Spec.
14, ll. 3-6).
3. The Specification teaches that the “desired daily dosage of N-
acetylglucosamine can be added to soups, muffins, bread, banana bread, a
cookie, dried fruit, etc.. N-acetylglucosamine can be added during
preparation . . . or by sprinkling on top (e.g. cereal) or mixing in (e.g. a bowl
of soup) suitable prepared foods” (Spec. 16, ll. 9-12).
4. The Specification teaches that a “nutritional bar containing
between 3 and 6 grams of N-acetylglucosamine can deliver the desired daily
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dosage. A meal-replacement bar containing between 3 and 6 grams of N-
acetylglucosamine can deliver the desired daily dosage” (Spec. 16, ll. 14-
16).
5. The Specification teaches that a “packet of both tea leaves and
N-acetylglucosamine, to be added to hot water, can deliver the desired daily
dosage. A packet of instant coffee crystals containing N-acetylglucosamine,
to be added to hot water, can deliver the desired daily dosage” (Spec. 16, l.
22 to 17, l. 1).
6. Burton teaches that “N-acetyl glucosamine . . . has been found
to be useful in . . . enhancing the formation of protective structures against
erosion in the gut due to Crohn’s disease, ulcerative colitis and
diverticulitis” (Burton 3, ll. 27-33).
7. Burton teaches “a composition useful for promoting integrity
and normal function of mucous membrane in a human being comprising N-
acetyl glucosamine and a pharmaceutically acceptable carrier. The N-acetyl
glucosamine may be present in the composition in the amount of about 1,000
mgs to about 6,000 mgs” (Burton 3, ll. 16-22).
8. Burton teaches a patient who “began taking a daily dose of N-
acetyl glucosamine in an amount approximating one teaspoonful (2 grams)
per day” (Burton 6, ll. 26-28). Burton teaches that the patient “dissolved this
in fruit juice and sipped the juice at frequent intervals over the daytime”
(Burton 6, ll. 28-30).
9. Martin teaches that “a beverage made of a fluid and a dosage
amount in an ingestible amount for treating an inflammatory tissue or
arthritic condition” (Martin, col. 4, l. 39-41).
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10. Martin teaches that the “dosage amount is made from a
glucosamine sulfate, a glucosamine hydrochloride, and an n-acetyl
glucosamine and combinations thereof; a chondroitin sulfate, a chondroitin
hydrochloride and combinations thereof, a member of the family of
araliaceae; and a B3 vitamin” (Martin, col. 4, ll. 43-47).
11. Martin teaches that an “eight ounce or twelve ounce beverage
can contain the single serving daily dose” (Martin, col. 3, ll. 55-57).
12. Stone teaches “a food supplement, for human and/or animal
consumption and methods for making such food supplements. The food
supplement can be either in the form of a beverage or a snack bar, or
preparation for making such beverages or snack bars” (Stone, col. 3, ll. 62-
66). Stone teaches that “dietary cartilage supplements are effective in
reducing the symptoms of joint pain. . . . To date, more than 6,000 patients
have been studied in 20 clinical trials. These studies have all reached the
conclusion that glucosamine sulfate supplements relieve pain and stimulate
healing in osteoarthritis patients” (Stone, col. 1, ll. 52-62).
13. Stone teaches that the “food supplement of the present
invention is fortified with one or more cartilage supplements including
glucosamine sulfate” (Stone, col. 3, l. 66 to col. 4, l. 1).
14. Stone teaches that “[w]here the cartilage supplement is
glucosamine, suitable derivatives include but are not limited to, glucosamine
n-alkyl sulfonate, and n-acetyl glucosamine” (Stone, col. 4, ll. 26-29).
15. Stone teaches that “corn syrup, preferably high fructose corn
syrup, is used as a source of carbohydrates. The corn syrup gives the snack a
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moist chewy texture, provides a source of sweetness to the snack bar, and
aids in distributing the dry ingredients” (Stone, col. 6, ll. 15-20).
16. Stone teaches that “[n]utritional bars and energy drinks are
convenient nutritional supplements, particularly for those persons too busy
to eat regular meals and for hikers, cyclists, runners or other athletes who
need prepackaged, ready-to-eat, high-energy snacks while they are
exercising” (Stone, col. 1, ll. 18-22).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007).
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious,” KSR directs that “a court must ask whether
the improvement is more than the predictable use of prior art elements
according to their established functions.” Id. at 417.
We determine the scope of the claims in patent applications not solely
on the basis of the claim language, but upon giving claims their broadest
reasonable construction in light of the specification as it would be
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interpreted by one of ordinary skill in the art. In re Am. Acad. Of Sci. Tech.
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). See, e.g., In re Hyatt, 211 F.3d
1367, 1372 (Fed. Cir. 2000) (“[D]uring examination proceedings, claims are
given their broadest reasonable interpretation consistent with the
specification.”). The properly interpreted claim must then be compared with
the prior art.
Analysis
Claim interpretation - Preamble
We begin by interpreting the claims. Claim 25 is drawn to a
sweetener composition “consisting essentially of” N-acetylglucosamine and
a sweetener, wherein the composition is packaged in single serving packets.
Claim 31 does not require a sweetener.
In Catalina, the Federal Circuit explained that “preambles describing
the use of an invention generally do not limit the claims because the
patentability of apparatus or composition claims depends on the claimed
structure, not on the use or purpose of that structure.” Catalina Marketing
International, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir.
2002). In claim 25, the preamble “sweetener composition” simply describes
a use for the composition and does not change the structure of the claimed
composition. Claim 31 lacks this preamble entirely.
Claim interpretation – Consisting Essentially of
Claims 25 and 31 use the transitional phrase “consisting essentially
of.” “Under well-settled principles, PPG was entitled to provide its own
definition for the terms used in its patent claim, including the transition
phrase ‘consisting essentially of.” PPG Industries v. Guardian Industries
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Corp., 156 F.3d 1351, 1355 (Fed. Cir. 1998). The Court found that “PPG
could have defined the scope of the phrase ‘consisting essentially of’ for
purposes of its patent by making clear in its specification what it regarded as
constituting a material change in the basic and novel characteristics of the
invention. The question for our decision is whether PPG did so.” Id.
In the instant case, the Specification teaches that “[s]ince
N-acetylglucosamine has a slightly sweetish taste, it can be added to liquids
or foods that have a sweet taste or benefit from sweetening” (Spec. 13, ll.
18-20; FF 1). While the Specification does discuss inclusion of N-
acetylglucosamine in sweetener packets (FF 2), the Specification clearly
contemplates the inclusion of N-acetylglucosamine into a wide variety of
compositions including nutrition bars, packets of tea, and other comestibles
(FF 3-5).
Appellant does not identify, and we do not find, any specific
definition of “consisting essentially of” in the Specification. Appellant
points to page 10 of the Specification and argues that “the specification
teaches that the salt form of glucosamine can be troublesome. This alone
demonstrates that other compounds could materially affect the
characteristics of the claimed form of the composition” (App. Br. 23).
Appellant also points to page 14 of the Specification, and argues that “the
specification teaches that the N-acetylglucosamine ‘on its own’ can be used
as a sweetener in the single serving packet or cube” (id.).
We are not persuaded. Neither of the sections of the Specification
identified by Appellant clearly identifies what constitutes a “material change
in the basic and novel characteristics of the invention” as required by PPG.
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In fact, in reviewing the Specification as a whole, it is clear that the
Specification expressly contemplates compositions such as nutrition bars
(FF 3-5). In light of the Specification, nutrition bars are reasonably
interpreted to not constitute a material change in the basic and novel
characteristics of the invention. We therefore interpret the phrase “consisting
essentially of” in claims 25 and 31 to encompass nutrition bars and other
foodstuffs with N-acetylglucosamine, consistent with Appellant’s own
Specification (FF 3-5).
Obviousness
Burton teaches a patient who “began taking a daily dose of N-acetyl
glucosamine in an amount approximating one teaspoonful (2 grams) per
day” (Burton 6, ll. 26-28; FF 8). Burton teaches that the patient “dissolved
this in fruit juice and sipped the juice at frequent intervals over the daytime”
(Burton 6, ll. 28-30; FF 8).
Martin teaches incorporation of N-acetylglucosamine into a fluid
serving to improve human health (FF 9-11).
Stone teaches a food supplement which “is fortified with one or more
cartilage supplements including glucosamine sulfate” (Stone, col. 3, l. 66 to
col. 4, l. 1; FF 13). Stone teaches that “[w]here the cartilage supplement is
glucosamine, suitable derivatives include but are not limited to, glucosamine
n-alkyl sulfonate, and n-acetyl glucosamine” (Stone, col. 4, ll. 26-29; FF 14;
emphasis added). Stone teaches that “corn syrup, preferably high fructose
corn syrup, is used as a source of carbohydrates. The corn syrup gives the
snack a moist chewy texture, provides a source of sweetness to the snack
bar, and aids in distributing the dry ingredients” (Stone, col. 6, ll. 15-20; FF
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15). Stone teaches that “[n]utritional bars and energy drinks are convenient
nutritional supplements, particularly for those persons too busy to eat regular
meals and for hikers, cyclists, runners or other athletes who need
prepackaged, ready-to-eat, high-energy snacks while they are exercising”
(Stone, col. 1, ll. 18-22; FF 16).
Applying the KSR standard of obviousness to the findings of fact,
incorporating N-acetylglucosamine as taught by Burton and Martin into a
food composition such as a single serve packaged nutrition bar as taught by
Stone represents a combination of known predictable elements which would
reasonably be expected to function as a supplement. Such a combination is
merely a “predictable use of prior art elements according to their established
functions.” KSR, 550 U.S. at 417.
Appellant argues that
[w]hat Burton teaches is that various amounts of N-
acetylglucosamine are required when treating patients in the
espoused manner. Because of the need for flexibility in
dosing the amounts, one of skill in the art would not have a
reason to provide the N-acetylglucosamine in a single
serving packet or cube in substitution for the form of Burton
as is proposed in the rejection.

(App. Br. 17.) We are not persuaded. Based upon the teaching of Burton,
the ordinary artisan would have recognized that different preparations,
including different snack bars, could be designed for different populations
which require different amounts of ingredients (FF 7). Further, the ordinary
artisan would have predictably known that a person in need of greater
amounts of N-acetylglucosamine could consume multiple snack bars while a
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person in need of lesser amounts could choose to consume only a portion of
the snack bar.
We are not persuaded by Appellant’s argument that a “further reason
that Burton teaches away from the invention of claim 25 is Burton’s use of
the N-acetylglucosamine with a pharmaceutical carrier to treat a medical
condition” (App. Br. 17). All of the references teach the use of N-
acetylglucosamine to treat medical conditions. Burton teaches that N-
acetylglucosamine is useful in treating Crohn’s disease, ulcerative colitis and
diverticulitis (Burton 3, ll. 31-33; FF 6). Martin teaches that N-
acetylglucosamine is useful in treating inflammatory conditions (FF 9).
Stone teaches that “dietary cartilage supplements are effective in reducing
the symptoms of joint pain. . . . To date, more than 6,000 patients have been
studied in 20 clinical trials. These studies have all reached the conclusion
that glucosamine sulfate supplements relieve pain and stimulate healing in
osteoarthritis patients” (Stone, col. 1, ll. 52-62; FF 12).
None of the references teach away from the use of N-acetylglucos-
amine in food products for use in treating patients. Like our appellate
reviewing court, “[w]e will not read into a reference a teaching away from a
process where no such language exists.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1364 (Fed. Cir. 2006).
Appellant argues that “[i]n the face of the desire of Martin to provide
a liquid containing N-acetylglucosamine, one of skill in the art would be led
away from modifying Martin to create a solid form of N-acetylglucosamine”
(App. Br. 18). We are not persuaded. While Martin prefers a liquid form,
this does not teach away from the solid form which is taught by both Burton
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and Stone. Disclosed examples and preferred embodiments do not constitute
a teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
Appellant argues that the
real issue is whether it would be obvious to alter the form
for delivery of N-acetylglucosamine as taught in the primary
references cited in the rejection, i.e., the teaspoon dosages or
drink used in Burton, or the beverage of Martin and arrive at
the different and improved form of the invention for
ingestion by a user.

(App. Br. 20.) While we do not disagree with this characterization of the
issue, we conclude that in view of Burton, Martin and especially Stone’s
express suggestion of a composition which could comprise N-
acetylglucosamine (FF 14), a sweetener (FF 15) and which could be
packaged in single serving packets (FF 12, 16), the claimed invention is
obvious over these cited references.
Appellant argues that the “Examiner cites Stone for his teachings,
which do not suggest in the least the concept of the single serving packets or
cubes of the claims on appeal” (App. Br. 22). Stone teaches “a food
supplement, for human and/or animal consumption and methods for making
such food supplements. The food supplement can be either in the form of a
beverage or a snack bar, or preparation for making such beverages or snack
bars” (Stone, col. 3, ll. 62-66; FF 12). The snack bar is a single serving
packet, which satisfies the requirements of claims 25 and 31. No specific
packaging is required other than “single serving” and the Examiner has
pointed out that “[a]s to how much is actually consumed, that is a matter of
choice by consumer” (Ans. 6).
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We have already addressed Appellant’s arguments regarding the
scope of “consisting essentially of” previously.

Conclusion of Law
Appellant has not demonstrated that the Examiner erred in finding that
Martin, Stone, and Burton render obvious a “sweetener composition
consisting essentially of N-acetylglucosamine” which is packaged in “single
serving packets or cubes.”
SUMMARY
In summary, we affirm the rejection of claims 25 and 31 under 35
U.S.C. § 103(a) over Burton, Martin, and Stone. Pursuant to 37 C.F.R. §
41.37(c)(1)(vii)(2006), we also affirm the rejection of claim 30 as this claim
was not argued separately.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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