SHARE-X CO., LTD. et al.

Patent Trials and Appeals Board

May 28, 2020

2019005238 (P.T.A.B. May. 28, 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.
14/912,013 02/12/2016 Yoshiyuki Nasu 5703K-000008-US-NP 1043
28997 7590 05/28/2020
Harness Dickey (St. Louis)
7700 Bonhomme, Suite 400
St. Louis, MO 63105
EXAMINER
YU, HONG
ART UNIT PAPER NUMBER
1612
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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):
bkamer@hdp.com
stldocket@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte YOSHIYUKI NASU and SUSUMU FURUHASHI
__________

Appeal 2019-005238
Application 14/912,013
Technology Center 1600
__________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and
MICHAEL A. VALEK, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 52, 53, 69, 70, 72, and 73. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant states that the real party in interest is Share-X Co.,
Ltd., having a place of business in 19, Nakasaiwaicho 2-Chome, Saiwai-Ku,
Kawasaki-Shi Kanagawa, Japan 212-0012. Appeal Br. 3.
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STATEMENT OF THE CASE
The following rejections are before us for review:
(1) Claims 52, 53, and 69, under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Huang2 and Matsuo3 (Final Act. 3–5 (entered Oct. 15
2018)); and
(2) Claims 70, 72, and 73, under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Huang, Matsuo, and Conceição4 (Final Act. 5–6).
Appellant’s claim 52 is representative and reads as follows:
52. A method for preventing or managing infection of
microorganism comprising:
administering to a human subject in need thereof an
effective amount of an antimicrobial agent comprising a
hydrogen molecule,
wherein the hydrogen molecule is adsorbed on a coral
powder or coral calcium.
Appeal Br. 13.
DISCUSSION
The Examiner’s Prima Facie Case
In rejecting claims 52, 53, and 69, the Examiner cited Huang as
disclosing that molecular hydrogen (H2) has a “therapeutic effect on
infection and sepsis in human and the delivery including drinking H2
containing water (entire reference, especially abstract and the paragraph
bridges left and right column on page 978).” Final Act. 3.

2 Chien-Sheng Huang et al., Recent advances in hydrogen research as a
therapeutic medical gas, 44 FREE RADICAL RESEARCH 971–982 (2010).
3 US 8,168,245 B2 (issued May 1, 2012).
4 R.A. Conceição et al., Human sepsis-associated Escherichia coli
(SEPEC) is able to adhere to and invade kidney epithelial cells in culture,
45 BRAZILIAN J. MED. BIOL. RES. 417–424 (2012).
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The Examiner found that Huang differs from the rejected claims in
that Huang does not “specify the H2 being absorbed on coral powder.” Final
Act. 4. As evidence that the claimed process would have been obvious
despite this difference between Huang and the claims, the Examiner cited
Matsuo, “who teach coral powder with H2 being adsorbed and retained in the
micropores of coral powder as a supplementary food for H2 being gradually
release and functioning in vivo (entire reference, especially abstract, the
paragraph bridges column 2 and 3, and claim 1).” Id.
Based on the references’ combined teachings, the Examiner reasoned
that a skilled artisan would have considered it obvious to “combine the
teachings in Huang et al. and Matsuo et al. to adsorb H2 in the teachings
taught by Huang et al. into coral powder.” Final Act. 4.
In particular, the Examiner reasoned, “[c]oral powder being suitable
for adsorbing and retaining H2 was well known to a person of ordinary skill
in the art at the time of the invention,” and the “motivation for specifying it
flows from its having been used in the prior art, and from its being
recognized in the prior art as useful for the same purpose for human
consumption with the advantage of being convenient for shipping, storing,
and consuming anywhere.” Final Act. 4–5. Therefore, the Examiner
concluded, “[a]bsent some demonstration of unexpected result it would have
been obvious to one of ordinary skill in the art to adsorb H2 in the teachings
taught by Huang et al. into coral powder with predictable results to one of
ordinary skill in the art at the time of the invention.” Id. at 5.

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Analysis
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant in
response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present case, having carefully considered the evidence and
arguments presented by Appellant and the Examiner, Appellant does not
persuade us that the Examiner’s conclusion of obviousness is not supported
by a preponderance of the evidence.
Appellant’s representative claim 52 recites a method “for preventing
or managing infection of microorganism.” Appeal Br 13.
To prevent or manage infection, claim 52 requires performance of
only a single process step: “administering to a human subject in need
thereof an effective amount of an antimicrobial agent comprising a hydrogen
molecule, wherein the hydrogen molecule is adsorbed on a coral powder or
coral calcium.” Appeal Br. 13. Appellant does not persuade us that the
Examiner erred in finding that that the combination of Huang and Matsuo
would have suggested administering an effective amount of coral-bound
molecular hydrogen to a human in need of prevention or management of an
infection by a microorganism.
Specifically, Huang discloses that molecular hydrogen, in the form of
hydrogen gas, was found to have beneficial results in a mouse model of one
type of human infection undisputedly caused by microorganisms,
polymicrobial sepsis:
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Excessive production of ROS [(reactive oxygen species)] and
reduced antioxidant defense systems play an important role in
the pathogenesis of infection and sepsis. . . . Xie et al et al. in
2009 . . . demonstrated that hydrogen gas treatment ameliorated
polymicrobial sepsis and sepsis-associated organ damage in
mice through the ability of hydrogen gas to decrease the levels
of oxidative products, increase the activities of antioxidant
enzymes and reduce the levels of high-mobility group box 1
(HMGB1) in serum and tissue.
Huang 978 (citations omitted).
Based on this and similar findings in animal models of other diseases,
Huang suggests administering molecular hydrogen to treat disorders, such as
polymicrobial sepsis, in humans. See Huang 971 (“It is not an overstatement
to say that hydrogen’s impact on therapeutic and preventive medicine could
be enormous in the future.” (Abstract)); see also id. at 973 (“Hydrogen
therapy may spare the innate immune system and allow phagocytosis of
infecting organisms. It is not clear whether a similar reaction preferentially
occurs under complex biological conditions. In fact, experimental studies
have demonstrated that hydrogen has potent therapeutic efficacies on both
parasite infection and polymicrobial sepsis.” (emphasis added; citations
omitted)); id. at 979 (“Although further investigations are required,
hydrogen may have a huge impact as a novel and innovative therapeutic
tools for unmet medical needs that currently cause considerable health
burdens.”).
Huang discloses that oral administration is a suitable method of
obtaining the therapeutic effects of molecular hydrogen:
Although inhaled hydrogen gas may act more rapidly, this
method of administration is not practical in daily life or suitable
for continuous consumption for preventive or therapeutic use.
In contrast, solubilized hydrogen may be beneficial since it is a
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portable, easily administered and safe means of delivering
molecular hydrogen. Drinking hydrogen-rich water (HW) has
a comparable effects to hydrogen inhalation.
Huang 973 (emphasis added; citations omitted).
Given these disclosures, we agree with the Examiner that Huang
suggests orally administering, to a human suffering from an infection such
as polymicrobial sepsis, molecular hydrogen in an amount effective to
ameloriate the infection. We therefore also agree with the Examiner that
Huang suggests administering molecular hydrogen, the therapeutic agent
recited in representative claim 52, to a patient encompassed by claim 52, in
an amount encompassed by claim 52.
Although Huang does not describe administering the molecular
hydrogen in the coral-bound form required by claim 52, Matsuo discloses
that coral with hydrogen gas adsorbed thereon was known in the art to be
useful as a food supplement:
A large quantity of a hydrogen gas is adsorbed and
retained in a coral powder obtained by the method of the
present invention as compared with common coral powders,
and therefore, when the coral powder is introduced into the
body as a supplementary food, a hydrogen gas is taken up into
the body, and a hydroxy radical (.OH), an active oxygen species
that is very highly reactive and very toxic, is eliminated . . . so
tissue damage by hydroxy radicals can be prevented in an
organism.
Matsuo 3:61–4:2.
Thus, to summarize, Huang suggests orally administering, to a human
suffering from polymicrobial sepsis, molecular hydrogen in an amount
effective to ameliorate the infection, and Matsuo teaches that a useful
method of orally administering hydrogen gas to humans was in the form of a
coral powder to which the hydrogen has been adsorbed. We therefore agree
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with the Examiner that a skilled artisan had a good reason for, and a
reasonable expectation of success in, orally administering Matsuo’s
hydrogen-bearing coral powder to a human suffering from polymicrobial
sepsis, in an amount effective to ameliorate the infection. We therefore also
agree with the Examiner that the process recited in Appellant’s
representative claim 52 would have been prima facie obvious to a skilled
artisan.
Appellant’s arguments do not persuade us to the contrary. In
particular, Appellant does not persuade us that when representative claim 52
is given its broadest reasonable interpretation consistent with the
Specification, claim 52 does not encompass the process suggested by Huang
and Matsuo. See Appeal Br. 4–6; Reply Br. 2.
As noted above, the preamble of claim 52 recites “[a] method for
preventing or managing infection of microorganism.” Appeal Br. 13. We
acknowledge the related disclosure in Appellant’s Specification, stating as
follows:
The term “prevention of infection with microorganisms”
as used herein refers to enhancing the resistance of a subject
against infection with microorganisms. The term “management
of infection with microorganisms” as used herein refers to
killing a microorganism or suppressing its expansion to thereby
ameliorate the state of the subject as infected with the
microorganism or inhibit the progress of the infection.
Spec. ¶ 62.
As also noted above, however, claim 52 requires performance of only
a single action to achieve the preamble-recited result: “administering to a
human subject in need thereof an effective amount of an antimicrobial agent
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comprising a hydrogen molecule, wherein the hydrogen molecule is
adsorbed on a coral powder or coral calcium.” Appeal Br. 13.
As discussed above Huang suggests orally administering, to a human
suffering from polymicrobial sepsis, molecular hydrogen in an amount
effective to ameliorate the infection (see Huang 973, 978), and Matsuo
teaches that a useful method of orally administering hydrogen to humans
was in the form of a coral powder to which the hydrogen has been adsorbed
(see Matsuo 3:61–4:2). The combination of Huang and Matsuo, therefore,
suggests administering the same therapeutic agent recited in claim 52, to the
same patient recited in claim 52.
That is, the combination of Huang and Matsuo suggests performing
the exact process step that produces the preamble-recited result recited in
claim 52. We are not persuaded, therefore, that any alleged
misinterpretation of claim 52 on the part of the Examiner demonstrates error
in the Examiner’s determination that Huang and Matsuo would have
suggested performing a process having every step and feature required by
claim 52.
Appellant also does not persuade us that the Examiner misinterpreted
the Huang reference in relation to treating infection-related inflammation, as
opposed to killing infecting microorganisms, to an extent that the
combination of Huang and Matsuo fail to suggest performing a process
having all of the steps and features required by claim 52. See Appeal Br. 6–
8; 2–3.
The fact that Huang and Matsuo’s reason for performing claim 52’s
process might have been different than Appellant’s asserted rationale of
killing microorganisms does not negate the fact that Huang and Matsuo,
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based on the disclosures noted above, suggest administering the same
therapeutic agent as recited in claim 52, to the same patient recited in the
claim. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) (“In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.
What matters is the objective reach of the claim. If the claim extends to
what is obvious, it is invalid under § 103.”). Accordingly, even if Huang’s
teaching of the desirability of administering hydrogen to treat an infection
was for the purpose of ameliorating inflammation, that fact fails to
demonstrate error in the Examiner’s determination that Huang and Matsuo
provided motivation for, and a reasonable expectation of success in, orally
administering Matsuo’s hydrogen-bearing coral powder to a human
suffering from polymicrobial sepsis, in an amount effective to ameliorate the
infection.
We note, moreover, that in addition to the infection management
argued by Appellant, claim 52 also recites preventing an infection by
administering the coral-bound hydrogen to a human in need thereof. See
Appeal Br. 13. Because essentially all humans need enhanced resistance
against infection, claim 52 therefore encompasses virtually any
administration of coral-bound hydrogen to a human, including the
administration of coral-bound hydrogen as a food supplement described in
Matsuo.
Moreover, because the Examiner’s conclusion of obviousness is based
on the express teachings discussed above in Huang and Matsuo, rather than
some previously unknown property present in the prior art, we are not
persuaded that the Examiner improperly relied on inherency in determining
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that the process of claim 52 would have been obvious. See Appeal Br. 8–9.
In particular, even if it were true that Appellant was the first to demonstrate
hydrogen’s antimicrobial effect, that does not negate the fact that the prior
art cited by the Examiner provided good reason for, and a reasonable
expectation of success in, performing a process having every step and
feature required by representative claim 52.
We are also unpersuaded that Appellant has advanced evidence of
unexpected results sufficient to outweigh the prior art evidence of prima
facie obviousness advanced by the Examiner. Appeal Br. 9–11; Reply Br. 3.
It is well settled that, “when unexpected results are used as evidence
of nonobviousness, the results must be shown to be unexpected compared
with the closest prior art.” In re Baxter-Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991).
In the present case, we acknowledge Appellant’s experimental
evidence that coral-bound hydrogen has antimicrobial properties. See Spec.
¶¶ 120–220 (Appellant’s Examples 1–9 testing several coral products
(SUISO)).
Appellant, however, does not identify what it considers to be the
closest prior art. Nor does Appellant explain how or why the experimental
evidence disclosed in the Specification represents the comparison to the
closest prior art required by our reviewing court to show nonobviousness.
See In re Baxter-Travenol Labs., 952 F.2d at 392.
In particular, as the Examiner noted, Huang describes using hydrogen
gas to treat sepsis, and discloses that hydrogen-rich water would be expected
function equivalently to hydrogen gas. See Huang 973. Appellant does not
identify any comparison on the current record between the infection-treating
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hydrogen preparations described in Huang and the coral-bound hydrogen
preparations tested in Appellant’s Specification.
In addition, it is well settled that, by themselves, assertions in briefing
by counsel as to the unexpectedness of experimental results are of little
probative value toward nonobviousness, absent some evidence, beyond the
assertions in the briefs, that a skilled artisan actually would have considered
the results unexpected. See In re Geisler, 116 F.3d 1465, 1470–71 (Fed. Cir.
1997) (finding arguments of unexpected results unpersuasive “naked
attorney argument” because applicant “did not offer evidence of unexpected
results in the form of a statement to that effect from the inventors or any
third party, or any objective evidence from a respected source” nor did
applicant make any statements of unexpectedness in its specification or in an
affidavit under 37 C.F.R. § 1.132).
In the present case, other than the assertions in briefs, Appellant does
not identify, nor do we discern, any statements in the Specification, or
elsewhere in the record, suggesting that the experimental results shown in
the Specification actually would have been unexpected by a skilled artisan.
Appellant’s assertions of unexpectedness, therefore, are of little probative
value. Moreover, to the extent that Appellant has identified a naturally
occurring result coming from the prior art’s administration of hydrogen, that
recognition is insufficient to establish nonobviousness. See In re Baxter-
Travenol Labs., 952 F.2d at 392 (“Mere recognition of latent properties in
the prior art does not render nonobvious an otherwise known invention.”);
see also In re Woodruff, 919 F.2d 1575, 1577−78 (Fed. Cir. 1990)
(obviousness rejection affirmed where using claimed elements in the manner
suggested by the prior art necessarily resulted in claim-recited effect).
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In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in concluding that the process recited in representative
claimed 52 would have been obvious to a skilled artisan. We therefore
affirm the Examiner’s rejection of claim 52 over Huang and Matsuo. Claims
53 and 69 fall with claim 52. 37 C.F.R. § 41.37(c)(1)(iv).
In rejecting claims 70, 72, and 73, all of which depend from claim 52
discussed above, the Examiner cited Huang and Matsuo for the teachings
discussed above, and cited Conceição as evidence that the additional features
recited in claims 70, 72, and 73 would have been obvious elements of the
process suggested by Huang and Matsuo. See Final Act. 5–6. Because
Appellant does not identify, nor do we discern, error in the Examiner’s
rationale for combining Conceição with Huang and Matsuo, we affirm the
Examiner’s rejection of claims 70, 72, and 73 over those references.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
52, 53,
69
103(a) Huang,
Matsuo
52, 53, 69
70, 72,
73
103(a) Huang,
Matsuo,
Conceição
70, 72, 73
Overall
Outcome
52, 53, 69,
70, 72, 73

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED