Ex Parte XuDownload PDFPatent Trial and Appeal BoardMar 22, 201813701046 (P.T.A.B. Mar. 22, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131701,046 11130/2012 22827 7590 03/26/2018 DORITY & MANNING, P.A. POST OFFICE BOX 1449 GREENVILLE, SC 29602-1449 FIRST NAMED INVENTOR YijunXu 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. KING-6-WO-US 2078 EXAMINER NGUYEN, COLETTE B ART UNIT PAPER NUMBER 1732 NOTIFICATION DATE DELIVERY MODE 03/26/2018 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): USDOCKETING@DORITY-MANNING.COM PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YIJUN XU Appeal2017-006106 Application 13/701,046 1 Technology Center 1700 Before BRADLEY R. GARRIS, BRIAND. RANGE, and MICHAEL G. McMANUS, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 2-13. We have jurisdiction. 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE2 Appellant describes the invention as relating to an economically feasible process for manufacturing tagatose and glucose from lactose. Spec. 1 According to Appellant, the real party in interest is WUXI JCANTEK PHARMACEUTICALS LIMITED. Appeal Br. 2. 2 In this opinion, we refer to the Non-Final Office Action dated May 4, 2016 ("Non-Final Act."), the Appeal Brief filed September 30, 2016 ("Appeal Appeal2017-006106 Application 13/701,046 1: 11-12.3 Tagatose is a sweetener that has 92% of the sweetness of sucrose but only 38% of the calories. Spec. 1:15-26. Claim 2, reproduced below, is the only independent claim on appeal and is illustrative of the claimed subject matter: 2. A process for manufacturing tagatose, comprising the step: c) reaction of an aqueous suspension of galactose under the presence of metal ions and alkaline condition to convert galactose into tagatose, wherein step c) is carried out by adding an aqueous slurry of metal hydroxide into an aqueous suspension of galactose. Appeal Br. 10 (Claims App.). REFERENCES The Examiner relies upon the prior art below in rejecting the claims on appeal: Rowe Beadle et al. ("Beadle") Comille et al. ("Comille"4) us 4,067,748 us 5,002,612 WO 2005/066192 Al REJECTIONS Jan. 10, 1978 Mar. 26, 1991 July 21, 2005 The Examiner maintains the following rejections on appeal: Rejection 1. Claims 2-7 and 10-13 under 35 U.S.C. § 103(a) as unpatentable over Beadle in view of Comille. Ans. 2. Br."), the Examiner's Answer dated December 27, 2016 ("Ans."), and the Reply Brief filed February 27, 2017 ("Reply Br."). 3 We refer to the November 30, 2012, Substitute Specification ("Spec."). 4 The Examiner refers to this reference as Fabice. See, e.g, Final Act. 3. The Examiner cites to the machine translation of record, and we do the same. Id. 2 Appeal2017-006106 Application 13/701,046 Rejection 2. Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable over Beadle in view of Comille and further in view of Rowe. Id. at 6. ANALYSIS We review the appealed rejections for error based upon the issues identified by the Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After considering the evidence presented in this Appeal and each of Appellant's arguments, we are not persuaded that Appellant identifies reversible error. Thus, we affirm the Examiner's rejections for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Appellant argues both rejections together and argues all claims as a group. See Appeal Br. 3-8. Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 2, and all other claims on appeal stand or fall together with claim 2. The Examiner finds that Beadle teaches a method of making tagatose from galactose by reacting a solution of galactose with an aqueous mixture of metal hydroxide. Ans. 2 (citing Beadle); see also id. at 7 (clarifying that Beadles uses "an aqueous solution" of galactose ). The Examiner finds that Beadle does not discuss a suspension of galactose. Id. at 7. The Examiner finds, however, that Comille teaches a process of making tagatose from galactose wherein either an aqueous solution or suspension of galactose can be used. Id. The Examiner determines that the subject matter of claim 2 3 Appeal2017-006106 Application 13/701,046 would have been obvious because a person of skill in the art would have understood, based on the teaching of Comille, that either a solution or suspension of galactose could be used in the process of Beadle and therefore would have substituted a galactose suspension for Beadle's galactose solution as an effective alternative for accomplishing the desired reaction. Id. at 3, 7. Appellant first argues that Beadle discloses a galactose solution rather than a galactose slurry. Appeal Br. 3. As explained above, the Answer clarifies the Examiner's position on this point. The Examiner agrees that Beadle teaches a solution and relies on an obviousness rationale based on Comille to reach the recited suspension. Ans. 7. Appellant argues that Comille teaches away from the use of a hydroxide because, for example, such a process gives poor yields. Appeal Br. 4 (citing Comille ). The Examiner, however, relies on Beadle rather than Comille as teaching the use of hydroxides. Ans. 2-3. Comille does not disparage Beadle's specific process and does not disparage use of an aqueous suspension in conjunction with use of hydroxides. Cf In re Young, 927 F.2d 588, 591 (Fed. Cir. 1991) ("When prior art contains apparently conflicting references, the Board must weigh each reference for its power to suggest solutions to an artisan of ordinary skill" and, in so doing, "consider the degree to which one reference might accurately discredit another."). Accordingly, Appellant's teaching away argument does not persuasively establish error. Appellant also argues that Comille and Beadle teach "completely different" processes for converting galactose to tagatose and that a person of skill in the art therefore would not consider applying the Comille suspension 4 Appeal2017-006106 Application 13/701,046 to the process of Beadle. Appeal Br. 5---6. The Examiner, however, finds that Comille teaches the general proposition that a solution or suspension of galactose can be used in a process for conversion to tagatose. Ans. 8. Appellant does not persuasively argue why a person of skill in the art would not consider use of a suspension in Beadle's process given that Comille teaches such a possibility for another tagatose production process. Rather, there are a finite number of ways to combine galactose with a reactant, and Comille establishes that it would have been within the technical grasp of a person of ordinary skill in the art to consider adding galactose in suspension form. Cf KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellant further argues that Comille' s isomerization reaction takes place in solution rather than while galactose is in suspension such that neither cited reference teaches reacting galactose in suspension form. Appeal Br. 6-7; Reply Br. 5. Comille, however, suggests that galactose in suspension may suitably be used for its reaction. See, e.g. Comille 2 ("According to the invention the sugar ketoses preparation process is characterized in that it consists in bringing a solution or a suspension in water type sugar aldose reacted with potassium aluminate in order to convert the al dose in ketose by an isomerization reaction .... " (emphasis added)). The preponderance of the evidence thus indicates that a person of skill in the art would understand that Comille has teachings beyond its Example 1 emphasized by Appellant. See In re Lamberti, 545 F.2d 747, 750 ( CCP A 197 6) ("all disclosures of the prior art, including unpreferred embodiments, must be considered"). Moreover, even with respect to Example 1, Appellant has not presented evidence persuasively explaining that none of the galactose would react while still in suspension. 5 Appeal2017-006106 Application 13/701,046 Finally, Appellant argues unexpected results. Appeal Br. 7-8; Reply Br. 5---6. A party asserting unexpected results as evidence of nonobviousness has the burden of proving that the results are unexpected. In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellant to proffer factual evidence that actually shows unexpected results relative to the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991 ), and that is reasonably commensurate in scope with the protection sought by the claim on appeal, In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983). Here, Appellant relies on Examples 2 and 4 from the Specification to establish unexpected results (Spec. 16:28-17: 13; 18: 10-19:2), but Appellant does not adequately explain those results (Appeal Br. 7-8). In particular, it is unclear what allegedly unexpected result Example 2 demonstrates. With respect to Example 4, Appellant provides one data point at one particular percentage and one particular molarity for both calcium hydroxide and water, and the data point comes from one particular set of time and temperature conditions. Spec. 18:10-19:2. Claim 2 is much broader in scope; it is not limited, for example, by time, temperature, weight percentages, or molarity. Accordingly, we agree with the Examiner that Appellant's evidence of unexpected results is unpersuasive because the evidence is not sufficiently commensurate in scope with claim 2. Ans. 8. We also note that the weight percent and molarity of galactose in Appellant's inventive Example 4 (using a galactose suspension) is much higher than that of Example 3 (using a galactose solution). Thus, it is not clear that the suspension versus solution distinction results in higher yield because the other variables of the Examples do not remain constant. 6 Appeal2017-006106 Application 13/701,046 DECISION For the above reasons, we affirm the Examiner's rejections of claims 2-13 . 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 7 Copy with citationCopy as parenthetical citation