Ex Parte ABRIL et al

Patent Trial and Appeal Board

Nov 9, 2018

14137591 (P.T.A.B. Nov. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/137,591 12/20/2013
23117 7590 11/14/2018
NIXON & V ANDERHYE, PC
901 NORTH GLEBE ROAD, 11 TH FLOOR
ARLINGTON, VA 22203
FIRST NAMED INVENTOR
Jesus Ruben ABRIL
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
ES-4662-2767 1005
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/14/2018 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 JESUS RUBEN ABRIL and THAYNE FORT
Appeal 2018-000113
Application 14/137,591
Technology Center 1700
Before LINDA M. GAUDETTE, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification filed
Dec. 20, 2013 ("Spec."); Final Office Action dated Sept. 1, 2016 ("Final"); Appeal
Brief filed Mar. 1, 2017 ("Appeal Br."); Examiner's Answer dated Aug. 7, 2017
("Ans."); and Reply Brief filed Oct. 4, 2017 ("Reply Br.").
Appeal 2018-000113
Application 14/137,591
Appellant2 appeals under 35 U.S.C. § I34(a) from the Examiner's decision
finally rejecting claims 93-110, 113, and 114. We have jurisdiction under
35 U.S.C. § 6(b).
WeAPPIRM.
93. A liquid composition comprising:
a) an oil from a microbial source comprising between about 50
mg per serving and about 150 mg per serving of a combination of
long chain polyunsaturated fatty acids (LC PUPA) selected from the
group consisting of comprising omega-3 LC PUPA, and omega-6 LC
PUP A and a combination thereof;
b) an emulsifier which stabilizes the composition consisting of
pectin in an amount of about 0.1 % to 0.5% by weight of the
composition; and
c) a beverage component;
and the composition is an oil in water emulsion, and the
composition is free of alginate and of calcium gluconate.
The claims stand finally rejected under 35 U.S.C. § I03(a) as follows:
1. claims 93-96, 99, 103, 104, 106-110, 113, and 114 over Horrobin
(EP 0713653 Al, pub. May 29, 1996), Myhre (US 2003/0082275 Al, pub. May 1,
2003), and Chilton (US 2002/0188024 Al, pub. Dec. 12, 2002);
2. claims 94--98, 100, 101, and 103-105 over Horrobin, Myhre, Chilton,
and Barclay (US 5,340,594, iss. Aug. 23, 1994); and
3. claim 102 over Horrobin, Myhre, Chilton, and Maeda (US 5,700,397,
iss. Dec. 23, 1997).
Horrobin discloses a fruit juice emulsion comprising gamma linolenic acid
(GLA) and/or dihomogammalinolenic acid (DGLA) in amounts ranging from
2 Appellant is the applicant and the real party in interest: DSM IP Assets B.V. See
Appeal Br. 3.
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Application 14/137,591
lmg-30g/100 ml, eicosapentaenoic acid (EPA) or docosahexaenoic acid (DHA)in
amounts ranging from 1 mg to 30g/100 ml, and 0.1-5.0% of an emulsifier such as
a phospholipid derived from eggs or plants. Horrobin 2:47-50, 3:7-9, 3:48--49.
Myhre discloses an orange juice beverage comprising omega-3 fatty acids in
the form of an oil-in-water emulsion. Myhre ,r,r 21, 25. Myhre uses an emulsifying
agent such as an egg yolk. Id. ,r 25.
Chilton discloses a fruit-based drink comprising GLA and EPA, formulated
as an oil-in-water emulsion. Chilton Abstract, ,r,r 27, 66. Chilton discloses that
suitable emulsifying agents or emulsion stabilizers include phospholipids, egg
yolk, and pectin. Id. ,r 66.
The Examiner finds Horrobin discloses a liquid composition as recited in
claim 93, with the exceptions that Horrobin does not explicitly describe the
composition as an oil-in-water emulsion, and does not disclose the use of pectin as
the emulsifier. Final 3--4. The Examiner finds one of ordinary skill in the art would
have modified Horrobin to use an oil-in-water emulsion based on Myhre's teaching
that an oil-in-water emulsion prevents oxidation of fatty acids. Id. at 4 ( citing
Myhre ,r 26). The Examiner finds the ordinary artisan would have used pectin as
the emulsifying agent based on Chilton's disclosure that pectin is a known
alternative to phospholipid emulsifiers. Id. ( citing Chilton ,r 66).
Appellant argues Horrobin does not disclose an oil-in-water emulsion and,
therefore, the ordinary artisan would not have looked to the teachings of Myhre
and Chilton which relate to compositions comprising oil-in-water emulsions. See
Appeal Br. 10-11. Appellant argues the ordinary artisan would not have looked to
Chilton because Chilton teaches that it is undesirable to formulate a liquid
composition containing the lower doses of long chain polyunsaturated fatty acids
recited in claim 93. Id. at 11-12 (citing Chilton ,r,r 26, 98). Appellant also argues
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Application 14/137,591
Chilton provides no direction to select pectin from the list of suitable emulsifying
agents or emulsion stabilizers. Id. at 12-13.
In general, Appellant's arguments are not persuasive because they are
directed to the individual teachings of the references and fail to take into account
the understanding of the ordinary artisan upon considering the teachings of the
prior art as a whole. See, e.g., Ans. 11.
As found by the Examiner, oxidation of fatty acids was a known problem at
the time of the invention, and one with which the inventors were concerned. See
Ans. 10, 13; Myhre ,r 26; Spec. 7: 1-3. Appellant has not explained persuasively
why the Examiner erred in finding that the ordinary artisan would have addressed
this problem in Horrobin's composition by employing Myhre's technique of
forming an oil-in-water emulsion. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007) ("When there is a design need or market pressure to solve a problem
and there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp. If this leads to the anticipated success, it is likely the product not
of innovation but of ordinary skill and common sense. In that instance the fact that
a combination was obvious to try might show that it was obvious under§ 103.").
Moreover, Appellant has not identified error in the Examiner's alternative finding
that Horrobin's composition is an oil-in-water emulsion, though not described
expressly as such. See Ans. 13 ("[O]ne would have a reasonable expectation that
Horrobin's fruit beverage emulsion is actually a discontinuous phase of oil in a
continuous phase of water (otherwise known as an oil-in-water emulsion)."); see
generally Reply Br. 2-5.
We are not persuaded by Appellant's argument that one of ordinary skill in
the art would not have looked to Chilton because Chilton teaches that using doses
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Application 14/137,591
of long chain polyunsaturated fatty acids in the amounts recited in claim 93 does
not achieve the desired effects. See Appeal Br. 11-12. The problems addressed by
the inventors and Chilton are related, though not identical. Compare Spec. 1--4
( discussing the goal of providing a composition to provide a dietary supplement
that is high in omega-3 and other long chain polyunsaturated fatty acids), with
Chilton ,r 15 ("The present invention is directed to dietary strategies that treat, or
reduce the side effects of lipid-mediated disorders, conditions or syndromes having
an arachidonic acid metabolite component."). As such, Chilton expresses a
preference for slightly higher amounts of long chain polyunsaturated fatty acids,
than the amounts used in the present invention. Compare Chilton ,r 26 ("When
operating below the ranges specified[, i.e., 1-15 g GLA and 0.1-10 g EPA,] the
desired effects on eicosanoid synthesis and prevention of arachidonate
accumulation will not be obtained."), with Spec. 5: 10-14 ("[The composition]
preferably can include between about 5 mg and about 1000 mg ... [ m Jore
preferably ... between about 50 mg and about 150 mg of omega-3 LC PUPA or
omega-6 LC PUPA."). Appellant has not argued persuasively that the ordinary
artisan would have considered Chilton's teaching as to suitable emulsifiers
inapplicable to the present invention merely because of this difference in preferred
amounts of long chain polyunsaturated fatty acids. See In re Trans logic Tech., Inc.,
504 F.3d 1249, 1259 (Fed. Cir. 2007) (explaining that a reference's teachings and
its obvious variants are relevant prior art, even if the reference addresses a problem
which differs from that addressed by a patent applicant).
Appellant also has not explained persuasively why the Examiner erred in
finding Chilton teaches that pectin is a suitable alternative to phospholipids and
egg yolk for use as an emulsifier in a beverage containing fruit juice and long chain
polyunsaturated fatty acids. Although Chilton indicates there are numerous suitable
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Application 14/137,591
emulsifying agents or emulsion stabilizers, phospholipids and pectin are among the
relatively short list of emulsifiers that are expressly identified. Chilton ,r 66; see
PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364 (Fed. Cir.
2007) (explaining that an obviousness rejection predicated on selection of one or
more components from numerous possible choices may be appropriate if the prior
art provides direction as to which of many possible choices is likely to be
successful).
All remaining arguments made by Appellant in the Appeal Brief, including
the arguments made in support of patentability of claim 102 (see Appeal Br. 15-
16), have been fully addressed by the Examiner and are unpersuasive for the
reasons stated in the Answer. See Ans. 9-14. We decline to consider the newly-
advanced arguments made in the Reply Brief as Appellant has not explained why
these arguments could not have been made in the Appeal Brief. See Ex parte
Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative) ("The reply brief is
not an opportunity to make arguments that could have been made during
prosecution, but were not. Nor is the reply brief an opportunity to make arguments
that could have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not."). Although we do not address the merits of the arguments
in the Reply Brief, we note that the arguments lack persuasive evidentiary support
and that the alleged unexpected results do not appear to be based on a comparison
with the closest prior art.
In sum, for the reasons stated in the Final Office Action, the Answer, and
above, Appellant has not identified reversible error in the Examiner's conclusion
of obviousness as to claims 93-110, 113, and 114.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
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Appeal 2018-000113
Application 14/137,591
AFFIRMED
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