Ex Parte Adams et al

Patent Trial and Appeal Board

May 26, 2017

13347498 (P.T.A.B. May. 26, 2017)

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.
13/347,498 01/10/2012 Clifford Adams 3007237-1003 2330
86225 7590 05/31/2017
NYEMASTER GOODE P.C.
700 Walnut Street, Suite 1600
Des Moines, IA 50309-3899
EXAMINER
WESTERBERG, NISSA M
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
05/31/2017 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):
wkmarsh @ nyemaster.com
ptomail @ nyemaster. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLIFFORD ADAMS,
STEF A AN M.O. VAN DYCK,
AIMEE TEUNCKENS, and TOM VERLEYEN
Appeal 2016-005978
Application 13/347,4981
Technology Center 1600
Before ERIC B. GRIMES, TIMOTHY G. MAJORS, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
NEWMAN, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
protecting oils and fats from lipid autoxidation using a composition. The
Examiner entered final rejections for obviousness and for lack of adequate
written description.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Appellants identify the Real Party in Interest as Kemin Industries, Inc. Br.
3.
Appeal 2016-005978
Application 13/347,498
STATEMENT OF THE CASE
Background
“Lipid autoxidation is the chemical term for a series of destructive
processes that readily occur in organic materials by the reaction with
molecular oxygen.” Spec. 1:9—10. The Specification discloses “an
antioxidant system which incorporates phenolic antioxidant compounds into
a liquid formulation that is readily dispersible in lipid matrices, such as oils
and fats. The products of the invention include a phenolic antioxidant, a
liquid carrier, an emulsifier and a polarity modifier.” Id. at Spec. 4:27—30.
The Claims
Claims 1—10, 17, and 18 are on appeal.2 Claims 1 and 17 are
illustrative and reads as follows:
1. A method of protecting oils and fats from oxidation, comprising
the steps of:
(a) formulating a homogenous single phase product
substantially free of oils or fats comprising:
i. a phenolic antioxidant composition having:
A. at least one water-soluble antioxidant; and
B. at least one lipid-soluble antioxidant selected
from the group consisting of butylated
hydroxytoluene (BHT), butylated hydroxyanisole
(BHA), ethoxyquin, gallic acid and esters of gallic
acid, flavones, phenolic di- and tri-terpenes,
phenolic extracts of sage, phenolic extracts of
rosemary, and phenolic extracts of thyme;
2 The Examiner withdrew the rejection of claims 11—16 under pre-AIA 35
U.S.C. § 103(a) as obvious over Ito, Bodor, Lee, and Sass (US 6,413,561,
issued July 2, 2002). Ans. 7.
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Application 13/347,498
ii. a liquid polar carrier selected from the group
consisting of monopropylene glycol, polyethylene glycol,
and glycerol;
iii. an emulsifier; and
iv. a polarity modifier;
(b) adding the homogenous single phase product to the oil or
fat; and
(c) dissolving both the water-soluble and lipid-soluble
antioxidants into the oil or fat by mixing.
17. The method of claim 1, wherein the antioxidants are
present in a ratio of lipid-soluble antioxidants to water-
soluble antioxidants of 20:5 and the ratio of antioxidants
to the liquid polar carrier is 25:75.
Br. 23, 26 (Claims App.).
The Issues
The following rejections are before us to review:
A. Claims 1, 2, 5—9, 17, and 18 are rejected under pre-AIA 35
U.S.C. § 103(a) as obvious over Ito.3
B. Claims 3 and 4 are rejected under pre-AIA 35 U.S.C. § 103(a)
as obvious over Ito and Bodor.4
C. Claim 10 is rejected under pre-AIA 35 U.S.C. § 103(a) as
obvious over Ito, Bodor, and Lee.5
D. Claim 17 is rejected under 35 U.S.C. § 112(a) or 35 U.S.C.
§112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Ans. 2.
3 Ito et al., JP 89044270 B, published Sept. 26, 1989 (“Ito”)
4 Bodor et al, US 5,837,307, issued Nov. 17, 1998 (“Bodor”)
5 Lee et al., US 5,562,938 issued Oct. 8, 1996 (“Lee”)
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Application 13/347,498
OBVIOUSNESS
A. Rejection of claims 1, 2, 5—9, 17, and 18 over Ito
The Examiner finds that Ito discloses a
composition of 50 - 80 parts alcohol phase containing 5 - 25%
gallic acid, a lipid-soluble antioxidant selected from the
Markush group of claim 1; 0 - 30% citric acid and/or L-ascorbic
acid, water soluble antioxidants; 5 - 15% emulsifier and 20 - 25
wt parts of an oil phase. The alcohol phase can be glycerine
(glycerol), sorbitol or propylene glycol, reading on the liquid
polar carrier o[f] the instant claims. The compositions are used
to prevent the oxidation of feedstocks and edible oils. ... If
two or all three of the preferred ingredients for the alcohol
phase are used, the composition will also contain a polarity
modifier as the different alcohols have different polarities that
will modify the polarity of the composition.
Ans. 3. In other words, the Examiner finds that Ito discloses all of the
limitations of claim 1. The Examiner finds that Ito “does not describe the
process by which the composition is prepared.” Id. However, the Examiner
concludes that it would have been obvious to “formulate a composition
comprising ascorbic acid and/or citric acid; glycerol, sorbitol and/or
propylene glycol, gallic acid and an emulsifier and then add that product to
the oil to prevent oxidation of the oil.” Id. at 4. The Examiner states that
altering the sequence in which ingredients are added is “prima facie obvious
in absence of new or unexpected results” and that “the formation of a
homogenous product will ensure that all of the components are in solution,
to form a single phase product” prior to addition to the oil, in which the
components would “be readily dispersed.” Id. The Examiner finds that
glycerol and propylene glycol both solubilize lipid- and water-soluble
components when mixed with the oil phase. Id. Accordingly, the Examiner
concludes “both types of ingredients will be dissolved into the oil or fat
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Application 13/347,498
when mixed to form the homogenous single phase product.” Id. The
Examiner further finds the “amount of the water soluble and lipid soluble
antioxidants and the liquid polar carrier would each be optimized”. Id.
Factual Findings
FF1. The Specification discloses: “[t]he invention involves the
mixing of antioxidants of different polarities, polar and non-polar, such that
they are combined in a monophase liquid composition which readily
dissolves in oil and fat matrices but contains substantially no oil or fat prior
to that addition.” Spec. 2 (replacement paragraphs).
FF2. Ito discloses a
[n]ew oil-soluble compsn. with oxidation-preventing effect
consists of gallic acid, a polyhydroxy alcohol, an emulsifier,
and oil. It opt. also contains citric acid and/or F-ascorbic acid.
Pref. 50-80 pts. wt. alcohol phase contains gallic acid (5-25
wt.%), citric acid and/or F-ascorbic acid (0-30%) and 20-25 wt.
pts. of oil phase contg. 5-15 wt.% of emulsifier. Pref. the
alcohol is glycerine, sorbitol, or propylene glycol. Pref.
emulsifier is a polyglycerine fatty acid ester, e.g. glycerine fatty
acid ester or a polyglycerine fatty acid ester, esp. having degree
of polymerisation 4-10 and HFB value 2-4.
USE/ADVANTAGE - The compsns. are used for preventing
oxidation of feedstocks and edible oils.
Ito 1-2.6
Analysis
Among other points, Appellants argue “claim 1 is unobvious over Ito
because Ito does not teach [use] of an emulsifier in a homogeneous, single
6 Ito is not numbered, but we reference it herein as if it were consecutively
numbered, starting on the first page.
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phase composition, as required by the claim.” Br. 16. Appellants argue that
the Examiner’s findings that formation of a homogenous product before
addition of the oil will ensure that the components readily disperse in the oil
“ignores the fact that Ito teaches only of emulsifiers to be used in
emulsions.'''’ Id. According to Appellants, “[ejmulsions are mixtures of two
or more liquids that are immiscible meaning that the emulsion contains at
least two distinct phases, a continuous phase and a dispersed phase.” Id.
Appellants argue the Examiner’s interpretation of an emulsion as a single
phase liquid composition is inconsistent with the “definition of phase known
in the art, [which is that] an emulsion is a two-phase mixture, where the two
phases are in the same state of matter.” Id. at 17. With the correct
understanding, Appellants argue, Ito lacks any teaching, suggestion, or
motivation to use an emulsifier in a homogenous, single phase composition,
whereas the claimed methods employ “homogeneous, single phase solutions
wherein the liquids are dissolved, not dispersed as in an emulsion and
therefore not emulsions.'” Id. (emphasis original).
We agree with Appellants that the evidence does not support the
Examiner’s finding that Ito would have made obvious all of the limitations
of claim 1. Ito teaches that its oxidation-preventing composition includes an
emulsifier and an oil, with its preferred composition containing 20—25% by
weight of an oil phase that contains 5—15% by weight of an emulsifier. FF2.
This is different than the composition of the claimed method, in which the
single phase product is “substantially free of oils or fats” prior to mixing
with an oil or fat in step (b). (Claim 1.)
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Our reviewing Court applies:
a two-part test for determining if the steps of a method claim
that do not otherwise recite an order, must nonetheless be
performed in the order in which they are written. First, we look
to the claim language to determine if, as a matter of logic or
grammar, they must be performed in the order written. If not,
we next look to the rest of the specification to determine
whether it “directly or implicitly requires such a narrow
construction.” If not, the sequence in which such steps are
written is not a requirement.
Altiris, Inc. v. Symantec Corp., 318 F.3d 1363, 1369—70 (Fed. Cir. 2003)
(quoting Interactive Gift Express, Inc. v. CompuServe Inc., 256 F.3d 1323,
1343 (Fed. Cir. 2001), internal citations omitted). Here, logic dictates that
the “homogenous single phase product substantially free of oils or fats” must
be formulated prior to “adding the homogenous single phase product to the
oil or fat.” Ito, which teaches the presence of a significant oil component,
does not teach this limitation (FF2) and the Examiner has not persuasively
demonstrated why Ito otherwise remedies this deficiency. Because the
Examiner has not provided evidence sufficient to support a prima facie case
of obviousness, we reverse the rejection of claim 1 over Ito. See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (“In rejecting claims under 35
U.S.C. § 103, the examiner bears the initial burden of presenting a prima
facie case of obviousness. Only if that burden is met, does the burden of
coming forward with evidence or argument shift to the applicant.”). As
claims 2, 5—9, 17, and 18 depend from claim 1, we likewise reverse the
rejection of those claims.
B. Rejection of claims 3 and 4 over Ito and Bodor
Claims 3 and 4 depend from claim 1. The Examiner has not
established that Bodor cures the deficiency of Ito, as discussed above.
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Accordingly, we find the preponderance of evidence on this record does not
support the Examiner’s finding on this issue, and reverse the rejection.
C. Rejection of claim 10 over Ito, Bodor and Lee
Claim 10 depends from claim 1. The Examiner has not established
that Bodor or Lee cures the deficiency of Ito, as discussed above.
Accordingly, we find the preponderance of evidence on this record does not
support the Examiner’s finding on this issue, and reverse the rejection.
Conclusion of Law
We reverse the rejection of all claims for obviousness.
WRITTEN DESCRIPTION
Issue
The Examiner has rejected claim 17 as failing to comply with the
written description requirement. The Examiner finds that the portion of the
Specification that Appellants cite for support for claim 177 “does not provide
support for the broader claim limitation where in [sic] the various
components of the formulation can be any of the species listed in claim 1,
which includes possible ingredients that are not present in the example
formulation cited for support.” Ans. 2. The Examiner finds:
while the amount of antioxidant in the formulation totals 25%,
the rest of the formulation is not 75% liquid polar carrier
(monopropylene glycol). 19% is propionic acid, the polarity
modifier (element iv of claim 1) and 28.5% is monoglycerides
and phospholipids, emulsifiers (element iii of claim 1 and the
Markush of claim 2). This leaves only 27.5% of the formulation
7 Appellants cited 145 of the published application for support. See
Examiner’s Final Action (mailed Aug. 27, 2014) at 3. That language is also
in the record as Specification 9:12—17.
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being the liquid polar carrier, for a ratio of antioxidant to liquid
polar carrier of 25:27.5, not the claimed ratio of 25:75.
Id. at 2—3.
Appellants argue it is not necessary to provide “ipsimis [sic, ipsis]
verbis support of the claimed subject matter in the specification” but rather,
“satisfaction of the written description requirement requires description of
the invention claimed in such a way as to reasonably convey to one skilled
in the relevant art that the inventors had possession of the claimed subject
matter at the time the specification was filed.” Br. 9. Appellants further
argue ‘“a claim may be broader than the specific embodiment disclosed’”
and that the claimed invention should not be limited to preferred
embodiments or specific examples. Id. at 9-10. We take no issue with any
of the cases cited by Appellants, but do not agree the specific holding of any
is relevant to the facts at issue.
Appellants further argue the Examiner has not provided evidence why
persons skilled in the art would not recognize that their disclosure defines
the invention of claim 17, and that the cited disclosure meets the limitation
of “the ratio of antioxidants to liquid polar carrier is 25:75, thus supporting
the claim language [of claim 17].” Br. 10.
The Examiner has the better position. The rejection is based upon the
fact that a composition cannot simultaneously meet the limitations of claim
17 and claim 1, from which claim 17 depends. Ans. 8. Claim 17 recites
“wherein the antioxidants are present in a ratio of lipid-soluble antioxidants
to water-soluble antioxidants of 20:5 and the ratio of antioxidants to the
liquid polar carrier is 25:75.” Br. 26 (Claims App.). As the Examiner
observes, “the solution does not simply comprise antioxidants and lipid polar
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carrier - the claims separate the emulsifier and polarity modifier from the
phenolic antioxidant composition and the liquid polar carrier.” Ans. 8.
Accordingly, if the antioxidant and liquid polar carrier components sum to
100% (25% + 75%) of the composition, the other required elements of claim
1 (e.g., emulsifier and polarity modifier) must be excluded. Hence, a
composition cannot be simultaneously made according to the limitations of
both claim 1 and 17. We find that the subject matter of claim 17 is not
supported by the identified portion of the Specification, and affirm the
rejection.
SUMMARY
We reverse the rejection of claims 1,2, 5—9, 17, and 18 under pre-
AIA 35 U.S.C. § 103(a) as obvious over Ito.
We reverse the rejection of claims 3 and 4 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Ito and Bodor.
We reverse the rejection of claim 10 under pre-AIA 35 U.S.C.
§ 103(a) as obvious over Ito, Bodor, and Lee.
The Examiner withdrew the rejection of claims 11—16 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Ito, Bodor, Lee, and Sass.
We affirm the rejection of claim 17 under 35 U.S.C. § 112(a) or 35
U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement.
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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).
AFFIRMED-IN-PART
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