Sahagian, Michael

Patent Trials and Appeals Board

Aug 12, 2020

12294004 - (R) (P.T.A.B. Aug. 12, 2020)

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.
12/294,004 05/20/2009 Michael Sahagian BERESKINPARR002 5847
93756 7590 08/12/2020
Adam R. Stephenson, LTD.
8350 E Raintree Dr., Ste 245
Scottsdale, AZ 85260
EXAMINER
COX, AMBER M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/12/2020 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):
adam@iptech.law
ipdocket@iptech.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SAHAGIAN
Appeal 2019-005021
Application 12/294,004
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

The Appellant requests reconsideration of the Board’s Decision1
affirming the Examiner’s rejections of claims 1–3, 6, 10, 14, 16, 17, 20–23,
28–39, and 42–44 under 35 U.S.C. § 103(a) as unpatentable over Zyzak in
view of various secondary references. Request for Rehearing filed July 24,
2020 (“Req. Reh’g”), 1. The Appellant contends that the Board
(1) misapprehended Zyzak’s disclosure (id. at 2), (2) “misapprehended
Appellant’s arguments regarding unexpected results” (id. at 3), and (3)
should have designated its affirmance as a new ground of rejection (id. at 6).

1 Decision on Appeal entered May 28, 2020 (“Dec.”).
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For the reasons discussed below, the Appellant’s arguments are not
persuasive of error in our affirmance.
We turn first to the Appellant’s contention that the Board
misapprehended Zyzak’s disclosure. The Appellant argues that we
misapprehended Zyzak’s use of the term “water content” (Zyzak ¶ 41) as a
reference to humidity. Req. Reh’g 2 (citing Dec. 9); see Zyzak ¶ 41 (“As
known in the art, pH and temperature are factors that affect enzymatic
activity. One skilled in the art should readily be able to determine optimal
conditions of these and other parameters (e.g., water content).”). According
to the Appellant, “[n]either Zyzak nor the examiner equated ‘water content’
as used in Zyzak with ‘relative humidity’ as used in claim 1,” and “[f]or the
Board to do so now in its opinion is error.” Req. Reh’g 2.
We have re-read the Final Office Action, the Answer, and Zyzak’s
disclosure in light of the Appellant’s argument, and are persuaded that the
Examiner did not rely on Zyzak’s statement regarding optimization of
“water content” as an explicit teaching to optimize humidity. Accordingly,
we modify page 9, line 5 of the Decision to strike the parenthetical “(i.e.,
humidity).” We also modify page 6, lines 15–16 and page 8, lines 1–3 to
remove the emphasis added to the quotations of Zyzak paragraph 41.
However, despite our misapprehension of the Examiner’s position as
to the meaning of “water content” as used in Zyzak paragraph 41, we are not
convinced that we erred in our affirmance of the Examiner’s rejections. On
Decision pages 7–9, we reference Zyzak’s statement in paragraph 41 that
temperature affects enzymatic activity and the ordinary artisan should
readily be able to determine optimal conditions for temperature and other
parameters that affect enzyme activity. We remain of the opinion that
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“[g]iven its own admission that ‘“relative humidity” is dependent upon and
related to temperature’ (Reply Br. 3), the Appellant has not convincingly
explained why the above disclosure in Zyzak [paragraphs 35 and 41] is
insufficient to support the Examiner’s finding that asparaginase activity is
affected by humidity and, therefore, is a result-effective variable.” Dec. 9;
see also Ans. 22 (“If one of ordinary skill in the art is capable of determining
the optimal temperature conditions of asparaginase activity, then they would
also be more than capable of determining the optimal conditions of
parameters that are dependent on temperature, such as relative humidity.”);
Reply Br. 6 (“It is a truism that relative humidity and temperature are related
as well enzymatic activity being dependent upon temperature.”); In re
Applied Materials, Inc. 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“The Board
primarily rested its finding that the dimensions were result-effective
variables on Applied’s admission . . . . The Board did not err in relying on
Applied’s admission because the admission indicates that the prior art taught
that the dimensions could be modified and that modification would affect
pad performance, which was sufficient to find the dimensions to be result-
effective variables. While Applied also stated that the prior art ‘is silent as to
the impact of the groove pitch and width on performance,’ the prior art did
not need to disclose the result with any greater specificity than it already did.
. . . . [T]he prior art need not provide the exact method of optimization for
the variable to be result-effective.”).
We now consider the Appellant’s contention that the Board
misapprehended its arguments regarding unexpected results. The Appellant
argues that the Board erred because it “acknowledged that Appellant relied
upon the present specification (page 20:10–24) and Fig. 3 as evincing that
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the claimed method produces unexpected results[, but] . . . dismissed this
evidence because Appellant purportedly did not explain how the
demonstrated interaction of temperature and humidity is an ‘unpredictable or
unexpected’ result.” Req. Reh’g 3–4 (citing Dec. 9–10). The Appellant also
argues that it provided evidence of unexpected results in the Appeal Brief
and that “at the time of the Board’s decision, the record was clear that the
examiner had not considered this relevant evidence in concluding that the
subject matter of claim 1 would have been obvious.” Id. at 4. The Appellant
argues that “the Board should have simply reversed the examiner’s rejection
as being legally fatally flawed.” Id. These arguments are not persuasive for
at least the following reasons.
First, we disagree with the Appellant’s characterization of our
Decision as acknowledging that the Appellant relied on unexpected results.
To the contrary, we stated that “[t]he Appellant cites Specification page 20,
lines 10–24, and Figure 3 as evidence that ‘the enzymatic action set forth in
claim 1 that occurs in a dynamic drying environment is unpredictable.’”
Dec. 9 (emphasis added) (quoting Reply Br. 6). Predictability and
unexpected results are two separate issues. Predictability is relevant to the
issue of whether the ordinary artisan would have had a reasonable
expectation of success in achieving the claimed invention, i.e., the prima
facie case of obviousness. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286,
1292 (Fed. Cir. 2013); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). Unexpected results are a secondary consideration of
nonobviousness that are presented to rebut an examiner’s prima facie case of
obviousness. See Allergan, 726 F.3d at 1293; Merck, 800 F.2d at 1098.
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Second, we disagree that the Appellant argued evidence of unexpected
results in the Appeal Brief or the Reply Brief. In the Appeal Brief, the sole
reference to Specification page 20, lines 10–24 and Figure 3—now relied on
by the Appellant as evidence of unexpected results—appears on page 6.
Neither the Appeal Brief nor the cited Specification disclosure mentions
unexpected results. See, e.g., Spec. 20:20–24 (“As illustrated in Fig 3,
acrylamide reduction was dependent on two factors, temperature and
humidity, and ranged from 19 to 67%. Drying parameters of 45°C at 70%
relative humidity for 14 minutes resulted in a substantial 67% reduction of
acrylamide and target weight loss, showing that the enzymatic reaction
application is useful in a continuous factory process.” (emphasis added)).
See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“Mere improvement in
properties does not always suffice to show unexpected results. In our view,
however, when an applicant demonstrates substantially improved results . . .
and states that the results were unexpected, this should suffice to establish
unexpected results in the absence of evidence to the contrary.”). Rather, the
citation to Specification page 20 and Figure 3 is part of the Appellant’s
argument that humidity was not a known, result-effective variable. See
Appeal Br. 6 (“The present issue . . . is whether one of ordinary skill in the
art would have found it obvious to optimize the humidity conditions in the
Zyzak drier during that enzymatic treatment. . . . [C]ontrary to the applied
references, the present specification documents the effect that varying the
temperature and humidity level in the dryer has on the residual acrylamide
amount. See specification at 20:10–24 and Fig. 3.”); see also Reply Br. 1–2
(characterizing similar arguments made in the August 21, 2018 Request for
Pre-Appeal Brief Conference as arguments that “neither Zyzak nor Lynglev
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provide evidence that the humidity level in the Zyzak dryer would have any
effect on the results, i.e., humidity was not recognized to be a result effective
variable”).
The Examiner fully responded to the Appellant’s argument that
humidity was not a known, result-effective variable:
[C]ontrary to the appellant’s assertions, unpredictability is not
an issue in this case since Zyzak expressly discloses that
temperature, which affects relative humidity as evidenced by
the above dictionary definitions, and other parameters such as
water content can and should be adjusted or optimized in order
to affect asparaginase enzymatic activity.
* * *
Moreover, in response to the argument that the prior art
fails to recognize humidity as a result effective variable as well
as the appellant’s reliance on In re Antoine, it is noted that . . .
“after KSR, the presence of a known result-effective variable
would be one, but not the only, motivation for a person of
ordinary skill in the art to experiment to reach another workable
product or process.”
Ans. 24 (quoting MPEP § 2144.05(II)(B)). In the Appeal and Reply Briefs,
the Appellant never argued that the Examiner failed to consider
Specification page 20 and Figure 3. Instead, the Appellant implied the
opposite, stating that “the Examiner [does not] dispute that the present
specification at 20:10–24 and Fig. 3 show the variability of residual
acrylamide levels as temperature and humidity are independently controlled
in the dryer.” Reply Br. 5. We remind the Appellant that “[a]rguments not
raised in the briefs before the Board . . . are not permitted in the request for
rehearing . . . .” 37 C.F.R. § 41.79(b)(1)(2018); see also In re Jung, 637 F.3d
1356 (Fed. Cir. 2011) (“[E]ven assuming that the examiner had failed to
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make a prima facie case, the Board would not have erred in framing the
issue as one of ‘reversible error.’ As recently acknowledged by the Board, it
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections . . . .”).
Third, we are not persuaded that we improperly dismissed the
evidence in Specification page 20 and Figure 3. The Appellant argues that it
would have provided further discussion of the evidence “if the examiner had
stated that what appears to be plain language and an easily understood graph
needed further ‘explanation.’” Req. Reh’g 4. The Appellant argues that
“[e]xaminers and APJs have technical training” and “[t]his subject matter
and data is workaday experience for examiners in the food arts and by
extension the APJs that review appeals in this art area.” Id. at 5. However,
the Appellant has not cited, and we are not aware of, any case law that
relieves an appellant of its burden to analyze and explain test results when
counsel views the technology as relatively simple or straightforward. See id.
(“This is not an esoteric art such as reading an electrophoretic gel where a
further explanation of the work and/or data may need further explanation.”).
Further, it is not within the province of this Board to independently review
specification data in a light most favorable to the Appellants. Cf. In re
Thomas, 714 F. App’x 1005, 1007 (Fed. Cir. 2017) (unpublished) (“Relying
on Jung, Mr. Thomas argues that an applicant need only “identify the
alleged error in the examiner’s rejections,” after which the Board must
review the examiner’s decision de novo. See In re Jung, 637 F.3d 1356,
1365–66 (Fed. Cir. 2011). We are not persuaded by Mr. Thomas’s
arguments.”).
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Finally, in an effort to advance any further prosecution of the present
application, we note that even if the Appellant had argued that Specification
page 20 and Figure 3 provide evidence of unexpected results, we would not
have found that argument persuasive.2
The Specification describes comparison testing of potato strips treated
with buffer only, or a solution of asparaginase/buffer. See Spec. 19:3–11,
20:16–18. The strips were dried in an industrial dryer at the following
temperatures and humidities: 45°C/40%, 45°C/70%, 60°C/40%, and
60°C/70%. Id. at 19:16–17. “As illustrated in Fig 3, acrylamide reduction
was dependent on two factors, temperature and humidity, and ranged from
19 to 67%.” Id. at 20:20–21. The Specification describes the 67% reduction
of acrylamide that occurred with drying parameters of 45°C at 70% relative
humidity as “substantial.” Id. at 20:21–23. Similarly, the Specification
describes a reduction in acrylamide ranging from 44% to 57.5% as
“significant.” Id. at 20:1–2. However, it is not enough for the Appellants to
show that the results in the compared examples differ. The difference must
be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318,
1324 (CCPA 1973). Moreover, “objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support.” In re Tiffin, 448 F.2d 791 (CCPA 1971); see In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“Geisler points to no
evidence in his application demonstrating that the wear resistance of the

2 For the reasons stated in Decision pages 8–10, we were not persuaded that
Specification page 20, lines 10–24 and Figure 3 evidence that “the
enzymatic action set forth in claim 1 that occurs in a dynamic drying
environment is unpredictable” (Reply Br. 6).
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protective layer in the 50 to 100 Angstrom range is ‘unexpectedly good.’ In
fact, his application does not even contain an assertion that the wear
resistance of the coating is unexpectedly good over that range. . . . . [T]here
is nothing in the application, or in any evidentiary submission made to the
examiner, to support Geisler's claim that those test results were unexpected
in light of the state of scientific knowledge at the time regarding coatings of
that composition.”). The Appellant’s tested range of temperatures and
humidity parameters is not commensurate in scope with claim 1, which
recites that the root vegetable product is dried between about 30°C and about
50°C and at a relative humidity between about 40% and about 80%. Nor has
the Appellant demonstrated that other embodiments falling within the scope
of claim 1 would be expected to result in a similar reduction in acrylamide.
See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant
demonstrates that an embodiment has an unexpected result and provides an
adequate basis to support the conclusion that other embodiments falling
within the claim will behave in the same manner, this will generally
establish that the evidence is commensurate with the claims.”).
We turn now to the Appellant’s argument that “the Board’s
‘affirmance’ of the examiner’s decision in this case is an undesignated new
ground of rejection” because of (1) “[t]he newly raised equivalence of
relative humidity in the dryer and water content of the food product; and” (2)
“[t]he Board’s new conclusion that the relied upon evidence of unexpected
results needs further explanation.” Req. Reh’g 6. The Appellant explains that
“each was raised by the Board for the first time in its opinion when
Appellant cannot file an appropriate rebuttal as a matter of right.” Id.
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In our discussion above (supra p. 2), we agreed with the Appellant
that we misapprehended the Examiner’s position as to the meaning of “water
content” as used in Zyzak paragraph 41, and modified our Decision to delete
any language suggesting that we, or the Examiner, relied on Zyzak’s
optimization of “water content” as an explicit teaching to optimize humidity.
As the affirmance in our modified Decision is not based on a finding that the
term “water content” in Zyzak paragraph 41 is a reference to humidity, we
are not persuaded that our affirmance should have been designated a new
ground of rejection because of a newly raised equivalence of humidity and
water content.
We also are not persuaded that our affirmance should have been
designated a new ground of rejection merely because we stated that the
Appellant had not explained how the Specification and Figure 3 “evidence
that temperature and humidity ‘interacted in an unpredictable or unexpected
way’ that would render the claims nonobvious.” Dec. 10 (quoting Applied
Materials, 692 F.3d at 1298). As stated in the Decision (Dec. 10), and
discussed in additional detail above (supra pp. 4–7), once the Examiner
establishes a prima facie case of obviousness, the burden of persuasion shifts
to the Appellant. To satisfy this burden when relying on experimental
results, the Appellant must analyze and explain how those results were
unexpected, or evidence unpredictability. Merely referencing disclosure in
the Specification and Drawings, as did the Appellant, was not sufficient to
meet this burden.

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OUTCOME OF DECISION ON REHEARING
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Denied Granted
1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44
103(a) Zyzak, Lynglev 1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44

14, 23, 29 103(a) Zyzak, Lynglev,
Plank
14, 23, 29
21 103(a) Zyzak, Lynglev,
Lindsay
21

FINAL OUTCOME OF APPEAL AFTER REHEARING
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis  Affirmed Reversed
1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44
103(a) Zyzak, Lynglev 1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44

14, 23, 29 103(a) Zyzak, Lynglev,
Plank
14, 23, 29
21 103(a) Zyzak, Lynglev,
Lindsay
21
Overall
Outcome:
  1–3, 6, 10, 14,
16, 17, 20–23,
28–39, 42–44

Page 6, lines 15–16 and page 8, lines 1–3 of the Decision are modified
to remove the emphasis added to the quotations of Zyzak paragraph 41.
Page 9, line 5 of the Decision is modified to strike the parenthetical
“(i.e., humidity).”

DENIED