Ex Parte Yu et al

Patent Trial and Appeal Board

Feb 20, 2014

11655766 (P.T.A.B. Feb. 20, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte LIANGLI YU and JEFFREY MOORE
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Appeal 2014-000723
Application 11/655,766
Technology Center 1700
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Before TERRY J. OWENS, KAREN M. HASTINGS, and
DONNA M. PRAISS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2014-000723
Application 11/655,766

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-16 and 18 under 35 U.S.C. § 103(a)1 as obvious over
Carlson2, as evidenced by Pomper3, tonytantillo4, arrowheads5,
phytochemicals6, and goodoils7.
Claim 16 is illustrative of the claimed subject matter (emphasis
added):
Claim 16: A dry powder premix comprising ground fruit seed or fruit
seed fraction having a dry powder particle size of 20 mesh or finer and a
moisture content of between about 1-20 wt% wherein the premix comprises
at least about 0.4 wt% α-linolenic acid, antioxidants, phytochemicals or any
combination thereof, and at least about 4 wt% dietary fiber.

Appellants only present arguments directed to the common feature of
the presence of α-linolenic acid in each of the independent claims 1, 7, 14,
and 16. Claims 1 and 14 are each directed to a method of forming a
supplemented food product, whereas claims 7 and 16 are each directed to a

1 The rejection under 35 U.S.C. § 112, second paragraph, that was
previously made was withdrawn by the Examiner (Ans. 4).
2 Carlson, Beth L.: “Influence of Tomato Seed Addition on the Quality of
Wheat Flour Breads”, Journal of Food Science, Volume 46 issue 4, Pages
1029-1031; 1981.
3 US 4,404,227 issued September 13, 1983.
4 http://www.tonytantiallo.com/reference/phyto.html: published on internet
May 2001, (Wayback Machine verified).
5 http://www.Arrowheadmills.com/product/enriched-unbleached-white-
flour: Arrowhead Mills, Enriched Unbleached White Flour; copyright 2001-
2002
6 http://www.phytochemicals.info/antioxidants.php, Phytochemical;
published on internet November 2006 (Wayback Machine verified).
7 http://www.goodoils.com/english/tomato_seed_oil.htm: Shanghai
Youngsun Food Company Ltd. Product Catalog, Tomato Seed Oil;
copyright 2007-2009.
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dry powder premix composition (Br. 7-9; see Claims Appendix for a copy of
claims 1, 7, and 14).
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ claims 1 and 7 is unpatentable. We sustain the above rejections
primarily based on the findings of fact, conclusions of law, and rebuttals to
arguments expressed by the Examiner in the Answer.
We add the following for emphasis.
While Appellants’ arguments are premised on the presence of α-
linolenic acid, this component is not required by the claim language of any
of the independent claims. In each of method claims 1 and 14, the food
product “is supplemented with α-linolenic acid, insoluble or soluble dietary
fibers, antioxidants, phytochemicals or any combination thereof.” (Emphasis
provided). The plain meaning of the phrase “or any combination thereof”
means any one, or two, or three, or all four of the components listed may be
present in any combination. The Specification does not provide any special
definition to limit the plain meaning of the claim language. Similar
language is used in product claims 7 and 16. Limitations not appearing in
the claims cannot be relied upon for patentability. In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
Nonetheless, even assuming that the claims require the presence of α-
linolenic acid, Appellants’ arguments that Carlson fails to explicitly teach
the presence of α-linolenic acid in its ground tomato seed component, or that
α-linolenic acid is useful or advantageous for any purpose, are unpersuasive
for reasons stated by the Examiner (e.g., Ans. 15, 16). Appellants’ claims
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encompass the use of tomato seed for its ground fruit seed or fruit seed
fraction (see, e.g., claims 2, 8). The evidence relied upon by the Examiner
(that is, goodoils) reasonably establishes that tomato seed oil, a necessary
component of the tomato seeds used in Carlson, has a content of α-linolenic
acid (that is, linolenic acid C18:3) ranging at least from 0.25% to 0.5%.8 Cf.
In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (“From the standpoint of
patent law, a compound and all of its properties are inseparable; they are one
and the same thing.”).
With respect to the group of claims 7-13, 16, and 18, Appellants
separately argue that the amount of “about 0.4 wt% α-linolenic acid” as
recited in product claims 7 and 16 is “not inherent” in Carlson (Br. 9)9.
This argument is not persuasive, since each of claims 7 and 16 recite “about
0.4 wt% α-linolenic acid, antioxidants, phytochemicals or any combination
thereof” (emphasis added). Accordingly, the presence of α-linolenic acid or
the presence of about 0.4 wt% α-linolenic acid is not required by the plain
language of either claim 7 or 16. Limitations not appearing in the claims
cannot be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
It is also well settled that when a claimed product or process
reasonably appears to be substantially the same or similar as a product
disclosed by the prior art, the burden is on the applicant to prove that the

8 This evidence also establishes a substantial amount, 58 to 78%, of linoleic
acid C18:2 is present in tomato seed oil derived from tomato seeds.

9 Note there is no corresponding amount recited in either of method claims 1
or 14.
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prior art product does not necessarily or inherently possess characteristics
attributed to the claimed product, and that it is of no moment whether the
rejection is based on § 102 or § 103 since the burden on the applicant is the
same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d
1252, 1255 (CCPA 1977); cf. In re Kao, 639 F.3d 1057, 1070 (Fed. Cir.
2011) (“Maloney’s express teachings render the claimed controlled release
oxymorphone formulation obvious, and the claimed ‘food effect’ adds
nothing of patentable consequence.”); In re Kubin, 561 F.3d 1351, 1357
(Fed. Cir. 2009) (stating “[e]ven if no prior art of record explicitly discusses
the [limitation], [applicant’s] application itself instructs that [the limitation]
is not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
invention]”); see also King Pharms., Inc. v. Eon Labs, Inc., 616 F.3d 1267,
1275-76 (Fed. Cir. 2010) (stating that “merely discovering and claiming a
new benefit of an old process cannot render the process again patentable”
(citations omitted)).
The decision of the Examiner is affirmed.
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

sld