Wolfgang BouchainDownload PDFPatent Trials and Appeals BoardJul 19, 20212020004292 (P.T.A.B. Jul. 19, 2021) Copy Citation 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. 13/984,086 10/17/2013 Wolfgang Bouchain WSP298US 1005 49003 7590 07/19/2021 MICHAEL L. DUNN 107 Wellington Drive Knightdale, NC 27545 EXAMINER MOORE, WALTER A ART UNIT PAPER NUMBER 3619 MAIL DATE DELIVERY MODE 07/19/2021 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WOLFGANG BOUCHAIN ____________ Appeal 2020-004292 Application 13/984,086 Technology Center 3600 ____________ Before JEFFREY T. SMITH, MICHELLE N. ANKENBRAND, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s decision to finally reject claims 33–36 and 39–41. 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 identifies the real part in interest as Chemische Fabrik Budenheim KG. Appeal. Br. 2. Appeal 2020-004292 Application 13/984,086 2 Appellant’s invention relates generally to a delayed-reaction modified disodium dihydrogen diphosphate (SAPP) used as a leavening acid in the production of baked goods. Spec. ¶ 2. The Specification describes “it is known to modify SAPP by the addition of metal ions, in particular by the addition of a relatively large amount of aluminium ions” for the purpose of “reduc[ing] the pre-leavening in favour of a higher after-leavening.” Id. ¶ 17. However, the Specification also describes the use of aluminium raises “concerns about the effects of aluminium on health and the resulting legal limit values for uptake of aluminium through food.” Id. Appellant’s invention seeks to provide a modified SAPP having a delayed dough rate of reaction (ROR) with the lowest possible content of aluminium. Id. ¶ 21. Claim 33 is illustrative of the subject matter claimed and is reproduced below: 33. Modified disodium dihydrogen diphosphate, wherein it consists essentially of disodium dihydrogen phosphate (SAPP) modified with 500 to 5,000 ppm of magnesium, 500 to 5,000 ppm of calcium, 100 to 5,000 ppm of potassium and 0 to 400 ppm of aluminium and containing cationic sodium and having orthophosphate content, measured as P2O5 in an amount of < 5.0 wt.%, and having a dough rate of reaction (ROR) in the standard test after 8 min., of from 8 to 30% of CO2; where the modified disodium dihydrogen diphosphate, is made by a process wherein an aqueous solution of sodium hydroxide or sodium carbonate or a mixture thereof is added, while stirring, to an aqueous phosphoric acid solution comprising compounds of all of the nutrient metals magnesium, calcium, and potassium, dissolved in an amount which, based on the product disodium dihydrogen diphosphate, corresponds to 500 to 5,000 ppm of magnesium, 500 to 5,000 ppm of calcium, 100 to 5,000 ppm of potassium and compounds of aluminium being restricted to 0 to 400 ppm of aluminium based on the product disodium dihydrogen diphosphate, to obtain an aqueous Appeal 2020-004292 Application 13/984,086 3 solution product and dewatering the aqueous solution product at a temperature in the range of from 190 to 250 °C to an orthophosphate content, measured as P2O5 of < 5.0 wt.% to obtain the modified disodium dihydrogen diphosphate product. Appeal Br. 13 (Claims Appendix). Appellant requests review of the Examiner’s decision to finally reject claims 33–36 and 39–41 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre- AIA), first paragraph, as failing to comply with the enablement requirement. Appellant presents specific arguments for claims 33, 34, 36, and 39–41. Appeal Br. 6–12. We address claims 33, 34, 36, and 39–41 separately. Claim 35 stands or falls with claim 33. OPINION Enablement Rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph After review of the respective positions Appellant provides in the Appeal and Reply Briefs and the Examiner provides in the Final Office Action and the Answer, we AFFIRM the Examiner’s rejection of claims 33–36 and 39–41 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement for the reasons the Examiner presents. We add the following for emphasis. Claim 33 It is well settled that “the specification must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed.’” In re Goodman, 11 F.3d 1046, 1050 (Fed. Cir. 1993) (quoting In re Vaeck, 947 F.2d 488, 496 (Fed. Cir. 1991)). Enablement is a question of law involving underlying factual inquiries. See Genentech, Inc. v. Novo Nordisk Appeal 2020-004292 Application 13/984,086 4 A/S, 108 F.3d 1361, 1365 (Fed. Cir. 1997); see also In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). “The enablement requirement is satisfied when one skilled in the art, after reading the specification, could practice the claimed invention without undue experimentation.” AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1244 (Fed. Cir. 2003). Whether undue experimentation is needed is not a single factual determination, but rather is a conclusion reached by weighing many factual considerations. Wands, 858 F.2d at 737. Wands summarizes the factors to be considered in determining whether undue experimentation is required as follows: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claim(s). Id. However, it is not necessary to review all the Wands factors to find a disclosure enabling. Rather, the Wands factors “are illustrative, not mandatory” and what is relevant to an enablement determination depends upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed. Cir. 1991). The Examiner finds principally that Wands factors (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, and (7) the predictability or unpredictability of the art weigh against enablement. Id. at 3–10.2 The Examiner’s analysis of these factors is based on essentially the 2 We refer to the specific Wands factors as enumerated in this opinion. Appeal 2020-004292 Application 13/984,086 5 same evidence3 and technical explanation. Id. We, therefore, address them together given that Appellant does not argue any Wands factor separate from another. See generally Appeal Br. The Examiner finds the prosecution record for this Application establishes that the phosphorous chemistry, which Appellant relies upon to make the claimed invention, differs widely when using the same reactants at different temperatures, pressures, times, and concentrations in part because the valence of phosphorous is extremely variable. Final Act. 7, 16–17; Appeal Br. 9.4 The Examiner further finds the prosecution record establishes that particular results in phosphorous chemistry cannot be reasonably expected unless exactly the same reaction has been previously repeated to have the same result. Final Act. 7, 16–17; Appeal Br. 9. Thus, the Examiner determines that the prosecution record of this Application establishes there is no predictability in the art (Wands factor (7)). Final Act. 7. Appellant does not dispute these findings in the Appeal Brief. See generally Appeal Br. In addition, the Examiner finds that the Specification lacks sufficient working examples and does not disclose how to choose particular combinations of reactants, process temperatures, processing pressures, processing times, and concentrations to arrive at a modified disodium dihydrogen diphosphate (Wands factors (2) and (3)). Final Act. 7–10. 3 The evidence includes a declaration under 37 CFR § 1.132 by the inventor Wolfgang Rudiger Bouchain filed April 18, 2019 and entered into the record by the Examiner in the Final Office Action dated July 11, 2019. 4 See also Remarks dated August 28, 2017, 5; Remarks dated November 29, 2017, 7; Remarks dated March 19, 2018, 13; Remarks dated April 24, 2018, 19. Appeal 2020-004292 Application 13/984,086 6 Lastly, the Examiner finds that the level of unpredictability in the art would require undue experimentation for one skilled in the art to arrive at the claimed invention (Wands Factor (1)). Id. at 10. After considering and weighing the Wands factors, the Examiner determines that the Specification, as originally filed, does not enable one skilled in the art to make and use the claimed invention without undue experimentation. Id. at 11. Appellant argues [t]he present inventor specializes in phosphorous chemistry and further, as evidenced by the table in the specification, has special knowledge due to his own (not prior art) experiments with different ranges of different metals and observing the resulting RORs . This gave him a basis for predicting an ROR result within a given ROR range with particular amounts of nutrient metal compounds and low aluminum. His special knowledge allowed him to possess the claimed invention at the time of filing the application and this has been proven by the Rule 132 Declaration of record. Appeal Br. 8 (emphases added). Appellant also refers to this special knowledge as “special unpublished knowledge.” Id. Thus, we understand Appellant’s argument to be that the inventor’s “special knowledge” allows the inventor to overcome the unpredictability of the art. These arguments do not persuade us of reversible error in the Examiner’s determination that the Specification, as originally filed, lacks an enabling disclosure for the claimed invention. As we note above, “the specification must teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed.’” Goodman, 11 F.3d at 1050 (quoting Vaeck, 947 F.2d at 496). Appellant’s express statement that special knowledge known only to the inventor is Appeal 2020-004292 Application 13/984,086 7 necessary to make the claimed invention supports the Examiner’s determination that the Specification, as originally filed, lacks an enabling disclosure for the claimed invention. We note that Appellant does not direct us to any portion of the Specification purporting to disclose this special knowledge. The need for this special knowledge to supplement the disclosure in the Specification evinces that the Specification, as originally filed, does not “teach those of skill in the art ‘how to make and how to use the invention as broadly as it is claimed.’” Goodman, 11 F.3d at1050 (citation omitted). Appellant’s reliance on the single example disclosed in the Specification is insufficient to provide an enabling disclosure for the entire scope of the claimed invention for the reasons the Examiner presents. Final Act. 8–10. Claims 34, 36, and 39–41 We have considered Appellant’s arguments for claims 34, 36, and 39–41 in full. Appeal Br. 9–11. However, we are unpersuaded of reversible error in the Examiner’s determination that the Specification, as originally filed, lacks an enabling disclosure for these claims as well for the reasons we give above. Appellant’s arguments for these claims appear to address issues that are related to prior art rejections. However, the rejection before us for review on appeal is not a prior art rejection. Appellant does not explain adequately why or how the argued claim limitations further restrict the conditions relevant to the enablement rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph. Id. Appeal 2020-004292 Application 13/984,086 8 In view of the above, Appellant has not identified reversible error in the Examiner’s determination that the Specification, as originally filed, lacks an enabling disclosure for the claimed invention. Arguments not specifically addressed are deemed not persuasive for the reasons the Examiner presents. Accordingly, we affirm the Examiner’s rejection of claims 33–36, and 39–41 under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the enablement requirement. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 33–36, 39–41 112(a)/ 112, first paragraph Enablement 33–36, 39–41 AFFIRMED Copy with citationCopy as parenthetical citation