Voelker, Karl Manfred. et al.

Patent Trials and Appeals Board

Oct 15, 2019

13201186 - (D) (P.T.A.B. Oct. 15, 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.
13/201,186 11/14/2011 Karl Manfred Voelker ES-4662-1947 7436
23117 7590 10/15/2019
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/15/2019 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 KARL MANFRED VOELKER, THOMAS LINDEMANN, and
DENIS HUG

Appeal 2019-000557
Application 13/201,186
Technology Center 1700
____________

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Primary Examiner’s decision to reject claims 1–3, 6, 7, 10–12, and 14.2 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. The Appellant identifies “DSM IP Assets B.V.” as the
real party in interest (Appeal Brief filed April 26, 2018 (“Appeal Br.”) at 3).
2 In reply to a new ground of rejection in the Examiner’s Answer entered
August 31, 2018 (“Ans.”), a Reply Brief was filed October 31, 2018 (“Reply
Br.”). Therefore, pursuant to 37 C.F.R. § 41.39(b)(2), the appeal has been
maintained. See also Appeal Br. 7–15; Final Office Action entered August
25, 2017 (“Final Act.”) at 2–7.
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BACKGROUND
The subject matter on appeal relates to an emulsion comprising a
specified amount of polyunsaturated fatty acids (PUFAs), which may be
used in food products, especially beverages (Specification filed August 11,
2011 (“Spec.”) at 1, ll. 3–11). Representative claim 1 is reproduced from the
Claims Appendix to the Appeal Brief, as follows:
1. An emulsion comprising
(i) 6-18 weight % of poly unsaturated fatty acids;
(ii) 10-40 weight % of gum Arabic;
(iii) 5-45 weight % of at least one adjuvant; and
(iv) 15-50 weight % of water.
(Appeal Br. 17).
REJECTION ON APPEAL
Claims 1–3, 6, 7, 10–12, and 14 stand rejected under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Mehansho et al.3 (“Mehansho”) in
view of Sakata et al.4 (“Sakata”) (Ans. 4–11).5
DISCUSSION
1. Grouping of Claims
The Appellant relies on the same arguments for all claims on appeal
(Reply Br. 2–9). Therefore, we decide this appeal on the basis of
independent claim 1, which we designate as representative pursuant to 37
C.F.R. § 41.37(c)(1)(iv). Claims 2, 3, 6, 7, 10–12, and 14 stand or fall with
claim 1.

3 US 2007/0298083 A1, published December 27, 2007.
4 US 2008/0249000 A1, published October 9, 2008.
5 The Examiner no longer relies on Heise et al. (US 2006/0110521 A1,
published May 25, 2006), applied in the final rejection (Final Act. 2).
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2. The Examiner’s Position
The Examiner finds that Mehansho describes an emulsion (for a
beverage) that may have the same ingredients recited in claim 1 (Ans. 4).
Regarding the amount of PUFA, the Examiner finds that Mehansho teaches
using PUFA in an amount of 5 g/100 mL, which equates to about 5 weight
percent—a value that is close to the lower endpoint of 6 weight percent
recited in claim 1—and, therefore, concludes that a prima facie case of
obviousness exists as to the PUFA amount limitations (id.). According to
the Examiner, “the range of amounts that are used [in Mehansho] would fall
into [the] Applicant’s ranges and would be achieved by routine
experimentation” because “discovering an optimum value of a result
effective variable such as by increasing the amount involves only routine
skill in the art” (id. at 5).
As for the amount of gum Arabic, the Examiner acknowledges that
Mehansho does not disclose any amount for this component in the emulsion
but finds that the reference teaches a concern with fish oil odor (id. at 6).
The Examiner finds further that Sakata, which is also concerned with
reducing odor in emulsions, teaches gum Arabic in a less than 50 mass %
aqueous solution as having excellent emulsification ability (id.). Based on
these findings, the Examiner concludes that a person having ordinary skill in
the art would have included gum Arabic in amounts that overlap those
recited in claim 1 “since Mehansho already teaches gum Arabic and it
suffices as a prima facie case of obviousness and further having benefits as
taught above [in Sakata]” (id.).
As for the amount of adjuvants, the Examiner finds that Mehansho
teaches adding vitamins up to the recommended daily intake (USRDI)
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amounts and, therefore, concludes that a person having ordinary skill in the
art would have added these adjuvants in amounts that overlap or fall within
the range recited in claim 1 (id. at 5).
Regarding the amount of water, the Examiner finds that Mehansho
discloses an example in which the water content is approximately 57 weight
percent and that “[t]he increase of water yields a more fluid drink” (id. at 4,
6). According to the Examiner, the determination of optimum amounts for
the ingredients, including the water content in the emulsion, would have
been obvious to a person having ordinary skill in the art as a matter of
routine optimization (id. at 6).
3. The Appellant’s Contentions
The Appellant contends that the prior art references would not have
suggested the PUFA, adjuvant, and water amounts recited in claim 1 because
(i) 5% by weight PUFA disclosed in Mehansho is not close to 6% by weight
PUFA recited in the claim as those values differ by 20%, (ii) 57% by weight
water disclosed in Mehansho differs from 50% by water recited in the claim
by 14%, and (iii) the nutrient (adjuvant) amounts disclosed in Mehansho are
merely trace amounts that are nowhere close to the lower limit of 5% in the
claim (Reply Br. 3–5). Regarding gum Arabic, the Appellant argues that
Sakata discloses modified gum Arabic, which is not gum Arabic (id. at 5–7).
Furthermore, the Appellant argues that paragraph 17 in the Funda
Declaration filed May 1, 2017 establishes unexpected results (id. at 7).
4. Opinion
The Appellant’s arguments fail to identify reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
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Mehansho describes a stable aqueous emulsion (for use in food or
beverages) comprising water, a blend of esters including esters of
polyunsaturated fatty acids (PUFAs), such as omega-3 fatty acids, and
emulsifiers/stabilizers such as gum Arabic (Mehansho, Abstract and ¶¶ 31,
41–43, 116 (claim 1)).
Regarding the PUFA amount, we start by consulting the claim
language and the Specification to ascertain what the Inventors meant by
“poly unsaturated fatty acids” or “PUFA.” Gechter v. Davidson, 116 F.3d
1454, 1457 (Fed. Cir. 1997) (“Implicit in our review of the Board’s . . .
analysis is that the claim must first have been correctly construed to define
the scope and meaning of each contested limitation.”).
The current Specification informs one skilled in the relevant art that
the term “PUFA (Polyunsaturated fatty acid)” not only reads on a
polyunsaturated fatty acid with at least 2 carbon-carbon double bonds, but
also its salts and esters including EPA (eicosapenta-5,8,11,14,17-enoic acid)
and DHA (docosahexa-4,7,10,13,16,19-enoic acid) (Spec. 2, l. 32–3, l. 12).
According to the Inventors, the term “PUFA” also includes fish oils
commercially available and known under the trademark ROPUFA® from
DSM Nutritional Products Ltd. (id. at 3, ll. 16–18).
Based on this understanding of “PUFA” or “poly unsaturated fatty
acids,” we discern no reversible error in the Examiner’s determination that
Mehansho would have suggested PUFA amounts that fall within the range
recited in claim 1. Contrary to the Appellant’s belief, Mehansho’s
disclosure for PUFA amounts is not limited to those approaching 5% by
weight because that disclosure (Mehansho ¶ 37) relates to preferred
embodiments and to the concentrations of omega-3 fatty acid species only.
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As the Examiner explains (Ans. 8), Mehansho’s disclosure is not limited to
its examples (Mehansho ¶ 116 (claim 1)). Moreover, Mehansho describes a
concentrated emulsion that includes Ropufa [sic, ROPUFA®] ‘30’ Fish Oil
(Roche), which contains EPA, DHA, and omega fatty acid, in an amount as
high as 8.25% by weight of a concentrated emulsion (Mehansho ¶¶ 112–113
(Example 4, Table 5)). And, consistent with the Examiner’s position, the
discovery of suitable relative amounts of components in a known
composition would have been within the level of a person having ordinary
skill in the art as a matter of routine experimentation. In re Aller, 220 F.2d
454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.”).
As for the water content, we discern no reversible error in the
Examiner’s finding that a higher water content would yield a more fluid
drink (Ans. 6). On this point, Mehansho teaches a beverage composition
containing 57.31% by weight of water (Mehansho ¶ 108 (Table 3)). A
person having ordinary skill in the art would have drawn a reasonable
inference from this working example that a concentrated emulsion or even a
powder formulation (id. ¶ 110 (Table 4)) having a substantially lower water
content is within the scope of Mehansho’s disclosure. Therefore, it would
have been obvious to a person having ordinary skill in the art to formulate an
emulsion with a lower water content, such as 50% by weight, for ease of
storage and/or transport. In re Preda, 401 F.2d 825, 826 (CCPA 1968)
(“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
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which one skilled in the art would reasonably be expected to draw
therefrom.”).
As for the amount of adjuvant, the Appellant does not specifically
address the Examiner’s reasoning that any amount within the recommended
daily intake of nutrients, which would necessarily include the amounts
recited in claim 1, may be used. Moreover, the current Specification
includes an expansive definition for “adjuvant” (Spec. 7, ll. 7–15)—i.e., it
reads on various materials such as saccharides, which include sugar, or even
triglycerides.
We also agree with the Examiner (Ans. 9) that “gum Arabic” as
recited in claim 1 does not exclude the type of modified gum Arabic
described in Sakata. In Sakata, the modification of gum Arabic to provide
gum Arabic with enhanced emulsifying ability merely involves providing a
less than 50 mass % aqueous solution of gum Arabic at a temperature
generally below 60°C (Sakata ¶¶ 37, 88 (claim 1)). The Appellant does not
direct us to any description in the current Specification that would preclude
such a modification.
Lastly, we discern no error in the Examiner’s assessment of the Funda
Declaration (¶ 17) as lacking factual basis (Ans. 9–10). That paragraph
merely states a conclusion without any supporting comparative experimental
data. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997).
For these reasons, and those given by the Examiner, we uphold the
rejection as entered against claim 1.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. §  Evidentiary
Basis
Affirmed Reversed
1–3, 6, 7, 10–12,
14
103(a)  Mehansho,
Sakata
1–3, 6, 7,
10–12, 14

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