Georg Steiger

Patent Trials and Appeals Board

Sep 30, 2019

13985775 - (D) (P.T.A.B. Sep. 30, 2019)

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.
13/985,775 08/15/2013 Georg Steiger GPK-4662-2602 5782
23117 7590 09/30/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GEORG STEIGER
____________________

Appeal 2019-000376
Application 13/985,775
Technology Center 1700
____________________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

DENNETT, Administrative Patent Judge.

DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–5 and 12–14. Claims 6–11 and 15 have been
canceled. Br. 16. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 In our Decision, we refer to the Specification filed August 15, 2013
(“Spec.”); the Final Office Action dated September 28, 2017 (“Final Act.”);
the Appeal Brief filed March 21, 2018 (“Br.”); and the Examiner’s Answer
dated August 16, 2018 (“Ans.”).
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as DSM IP
Assets BV. Br. 3.
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Application 13/985,775

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The claims are directed to a process for supplementation of beverages
with soluble and bio-available iron in the form of ferric pyrophosphate.
Claim 1, which is reproduced below from the Claims Appendix of the
Appeal Brief, illustrates the claimed subject matter with disputed terms
emphasized:
1. A process for the preparation of an aqueous soluble
ferric pyrophosphate concentrate solution, wherein the
process comprises the steps of:
(a) forming an aqueous dispersion of insoluble ferric
pyrophosphate by adding 0.1 to 5 weight / volume % of the
insoluble ferric pyrophosphate to water,
(b) adding 0.15 to 50 weight / volume % of trisodium
citrate to the aqueous dispersion obtained from (a) to form an
aqueous ferric pyrophosphate and trisodium citrate solution,
and
(c) boiling the resulting aqueous ferric pyrophosphate
and trisodium citrate solution from step (b) by heating the
aqueous ferric pyrophosphate and trisodium citrate solution at a
temperature of 100 to 120 °C and a pH of between 4 to 8 for a
time of 10 to 120 minutes until complete dissolution of ferric
pyrophosphate occurs to thereby obtain an aqueous soluble
ferric pyrophosphate concentrate solution.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Ozeki et al. (“Ozeki”)
McCall, Jr. (“McCall”)
US 2004/0171624 A1
US 2009/0023686 A1
Sept. 2, 2004
Jan. 22, 2009
Bortz US 2009/0035385 A1 Feb. 5, 2009
Nelson et al. (“Nelson”) US 2011/0021629 A1 Jan. 27, 2011
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Application 13/985,775

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REJECTION
The Examiner maintains—and Appellant appeals—the rejection under
35 U.S.C. § 103(a) of claims 1–5 and 12–14 as unpatentable over McCall, in
view of Bortz, Ozeki, and further or alternatively in view of Nelson. Final
Act. 2–10; Br. 6–14.
OPINION
Appellant argues, inter alia, that McCall fails to render independent
claim 1 obvious because this primary reference requires soluble ferric
compounds as a starting material. See, e.g., Br. 7. Appellant does not make
separate patentability arguments for the dependent claims. 37 C.F.R.
§ 41.37(c)(1)(iv).
In the Final Office Action, the Examiner finds that McCall’s process
for the preparation of an aqueous soluble pyrophosphate concentrate solution
discloses each limitation recited in claim 1, except for two elements: (1) the
use of insoluble ferric pyrophosphate required in step (a); and (2) the heating
parameters recited in step (c). Final Act. 3–7.
With respect to McCall’s missing element (1), Appellant’s challenge
focuses on whether the Examiner erred in combining McCall with Bortz to
render step (a) obvious.3 Br. 12–13.
The Examiner finds that Bortz teaches use of the soluble and insoluble
forms of ferric pyrophosphate. Final Act. 4 (citing Bortz ¶ 33). The
Examiner finds Bortz teaches that these forms are interchangeable and that

3 Regarding McCall’s missing element (2), Appellant does not contest the
Examiner’s combination of modified McCall with Ozeki and/or Nelson to
render the heating conditions recited in step (c) obvious. Id. at 13.
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using insoluble ferric pyrophosphate “is advantageous for an aqueous
dispersion.” Final Act. 4. The Examiner finds Bortz teaches, inter alia, that
“[e]xamples of suitable insoluble iron salts include but are not limited to
ferric sodium pyrophosphate.” Id. (citing Bortz ¶ 78). The Examiner
determines that it would have been obvious for the ordinary skilled artisan at
the time of the invention to modify McCall’s soluble “ferric pyrophosphate
to the insoluble one for reasons taught above.” Id.
Appellant contends that one of ordinary skill in the art of preparing an
aqueous soluble ferric pyrophosphate concentrate solution would not have
looked to McCall’s teachings. See generally Br. 7–11. Specifically,
Appellant argues that “McCall’s entire scheme is premised on starting with a
soluble iron (III) source, such as ferric sulfate.” Id. at 10. Appellant argues
that “Bortz does not teach or suggest [] that McCall’s process could or
would [have] be[en] successfully modified from using a soluble iron salt to
using an insoluble ferric pyrophosphate.” Id. at 13.
Appellant persuasively argues that the Examiner reversibly errs in
concluding that one of ordinary skill in the art would have modified
McCall’s soluble ferric compound to use Bortz’s insoluble ferric compound
as a starting material to prepare an aqueous solution. See Final Act. 3–7; Br.
7–14; Ans. 11–13. We are provided no explanation of why the ordinarily
skilled artisan would have been motivated to combine Bortz’s teachings with
McCall’s, but told that using insoluble ferric pyrophosphate “is
advantageous for an aqueous dispersion.” Final Act. 4. Furthermore, our
review of the Examiner’s cited paragraph in Bortz finds that it does not
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Application 13/985,775

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establish an equivalence between soluble and insoluble ferric compounds,4
nor any advantages afforded by use of the latter. See Bortz ¶ 33. On this
record, the Examiner has not made any findings that the applied prior art
teaches or suggests that such a modification would have been beneficial.
See In re Nuvasive, Inc., 842 F.3d 1376, 1382 (Fed. Cir. 2016) (“[T]he
[PTO] must make the necessary findings and have an adequate ‘evidentiary
basis for its findings.’”). The Examiner’s explanation, moreover, falls short
of the requirements for supporting an obviousness rejection. See In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.”).
We do not sustain the rejection of claim 1 as obvious over McCall, in
view of Bortz, Ozeki, and further or alternatively in view of Nelson. For the
same reasons as for claim 1, we do not sustain the rejection of claims 2–5
and 12–14 over the same references.

4 According to the Examiner, Appellant admits that Bortz teaches that the
form of iron is not critical. Ans. 13 (citing Br. 13). Appellant’s admission,
however, is taken out of context. Appellant admits only that Bortz teaches
the non-criticality of iron’s form within “the context of its disclosure,” i.e.,
for formulating iron-containing vitamin, multi-vitamin, and mineral
preparations for use as nutritional or dietary supplements. See Bortz ¶¶ 2, 4,
13.
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Application 13/985,775

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CONCLUSION
In summary:
Claims
Rejected Basis Affirmed Reversed
1–5
and
12–14
§ 103(a)
McCall
Bortz
Ozeki
Nelson

1–5
and
12–14
REVERSED