Ex Parte Lundberg et al

Patent Trial and Appeal Board

Dec 19, 2016

12459452 (P.T.A.B. Dec. 19, 2016)

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.
601.014US1 8519
EXAMINER
ANTHOPOLOS, PETER
ART UNIT PAPER NUMBER
1611
MAIL DATE DELIVERY MODE
12/459,452 06/30/2009
97462 7590 12/19/2016
Mark A. Litman & Associates, P.A.
7001 Cahill Road, Ste. 15 A
Edina, MN 55439
Brock Lundberg
12/19/2016 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 BROCK LUNDBERG, OLIVIA RICHARDSON, and
LAURA VAL VERDE1
Appeal 2015-001183
Application 12/459,452
Technology Center 1600
Before FRANCISCO C. PRATS, ULRIKE W. JENKS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
JENKS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims directed
to a method of moisture stabilizing a cosmetic. The Examiner rejects the
claims as indefinite, lacking written descriptive support, and obvious. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is Fiberstarbio, Inc.
(Br. 3.)
Appeal 2015-001183
Application 12/459,452
STATEMENT OF THE CASE
Claims 11—23 are on appeal, and can be found in the Claims
Appendix of the Appeal Brief.2 Claim 11 is representative of the claims on
appeal, and reads as follows:
11. A method of moisture stabilizing a cosmetic product or
personal care product against effects of exposure to humidity
comprising the steps of:
a) providing a highly refined cellulose fiber composition
consisting of plant cells at least 50% by weight of the plant
cells derived from cells having exclusively parenchymal cell
wall, the-highly refined cellulose fiber in the highly refined
cellulose fiber composition having a water holding capacity
greater than five parts water per part fiber and being free of acid
bleaching or NaOH chemical processing;
b) combining the highly refined cellulose fiber with a
liquid carrier that is either hydrophilic or hydrophobic to form a
first additive composition;
c) combining the first additive composition formed in
step b) with at least one ingredient selected from the class of
polymers, waxes and oils to form a cosmetic product or
personal care product having a final composition; and
d) storing the cosmetic product or personal care product.
(After Final Amendment filed Feb. 3, 2014 (emphasis added); see Advisory
Action mailed Apr. 21, 2014 entering After Final Amendment; Ans. 18—19.)
Appellants seek review of the following rejections:
I. claims 15, 16, and 23 under 35 U.S.C. § 112, first paragraph as
failing to describe the “free of chemical treatment” limitation;
II. claims 11—23 under 35 U.S.C. § 112, second paragraph as
failing to distinctly claim the subject matter; and
2 Appellants’ brief dated March 27, 2014 is identified in its title as “Reply
Brief on Appeal.” However, this is Appellants first and only brief filed in
this appeal, thus, we refer to it as “Appeal Brief’ or “Brief.”
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Application 12/459,452
III. claims 11—23 under 35 U.S.C. § 103(a) as unpatentable over
Toumilhac3 in view of Weibel,4 as evidenced by Marin.5
I. Written Description: New Matter
Does the preponderance of evidence of record support the Examiner’s
conclusion that the Specification does not sufficiently describe “free of
chemical treatment” as claimed?
Findings of Fact
FF1. The Specification provides:
The resulting soaked raw material is subjected to another
washing and draining. This washing and additional washing
and draining tend to be more meaningful for sugar beets,
potatoes, carrots (and to some degree also tomatoes, chicory,
apple, pineapple, cranberries, grapes, and the like) than for
citrus material. This is because sugar beets, potatoes, carrots,
growing on the ground rather than being supported in bushes
and trees as are citrus products, tend to pick up more materials
from the soil in which they grow. Sugar beets and carrots tend
to have more persistent coloring materials (dyes, pigments,
minerals, oxalates, etc.) and retained flavor that also are often
desired to be removed depending upon their ultimate use. In
one embodiment, the soaked raw material is washed with tap
water. In one other embodiment, the material is drained. This
is optionally followed by bleaching the material with hydrogen
peroxide at concentrations of about one (1) to 20% (dry basis)
peroxide. The bleaching step is not functionally necessary to
effect the citrus and grape fiber conversion to highly refined
cellulose [(HRC)]. With respect to carrots and sugar beets,
3 Toumilhac et al., US 6,534,071 Bl, issued Mar. 18, 2003 (“Toumilhac”).
4 Weibel et al., US 4,923,981, issued May 8, 1990 (“Weibel”).
5 Marin et al., By-products from different citrus processes as a source of
customized functional fibres, 100 Food Chemistry 736—741 (2007)
(“Marin”).
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Application 12/459,452
some chemical processing may be desirable, although this
processing may be significantly less stressful on the fiber than
the bleaching used on corn-based HRC products. From our
experience, some chemical step is required for sugar beets, and
bleaching is one option. Using alkaline pretreatment baths is
another option. Acid treatment or another bleaching agent are
other options.
(Spec. 9:19 — 10:5 (emphasis added)).
Analysis
The Examiner’s position is that the “specification, as originally filed,
is silent as to whether the citrus fruit parenchymal cells are ‘free of chemical
treatment’” as recited in the claims (Ans. 4).
Appellants contend that the one of ordinary skill in the art “would be
able to analyze a refined cellulose fiber and determine if it had been
subjected to chemical treatment (which must alter the chemical nature of the
cellulose fiber composition)” (Br. 14). Appellants contend that 124 of the
published application supports this position. Specifically, directing us to the
explanation that “[t]he bleaching step is not functionally necessary to effect
the citrus and grape fiber conversion to highly refined cellulose” (Br. 15
(emphasis omitted)).
With respect to claims 15 and 23, we find that Appellants have the
better position. Claim 15 recites that “parenchymal cells consist essentially
of citrus fruit cells free of chemical treatment and free of treatment with
NaOH,” and claim 23 similarly recites “citrus fruit parenchymal cells free of
chemical treatment and free of treatment with NaOH.” Because the
Specification indicates that the bleaching step is optional with respect to
citrus or grape fiber conversion (FF2), we agree with Appellants position
that the Specification provides sufficient descriptive support for the
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Application 12/459,452
limitation “free of chemical treatment” with respect to citrus and grape
fibers.
With respect to claim 16, however, we find that the Examiner has the
better position. This claim is not limited to citrus or grape fibers but instead
can be made of any parenchymal cell fiber source, meaning cell walls from
“soft or succulent tissue, which is the most abundant cell wall type in edible
plants” (see supra FF2). Thus, for example, sugar beets are included, to
which “some chemical step is required” according to Appellants’
Specification (FF1). Accordingly, we find this claim “overreach[es] the
scope of the inventor[s]’s contribution to the field of art as described in the
patent specification.” AriadPharms., Inc. v. EliLilly & Co., 598 F.3d, 1336,
1354 (Fed. Cir. 2010). Thus, for this claim, we agree with the Examiner’s
position that the “free of chemical treatment” limitation as to the full genus
encompassed by the parenchymal cell fiber source is new matter.
Accordingly, for the reasons discussed above we reverse the new
matter rejection with respect to claims 15 and 24, but affirm the rejection
with respect to claim 16.
II. Indefiniteness
Does the preponderance of evidence of record support the Examiner’s
conclusion that the claims are indefinite?
Findings of Fact
FF2. The Specification explains:
Parenchymal cell walls refer to the soft or succulent tissue,
which is the most abundant cell wall type in edible plants. For
instance, in sugar beets, the parenchyma[l] cells are the most
abundant tissue th[at] surrounds the secondary vascular tissues
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(xylem and phloem). Parenchymal cell walls contain relatively
thin cell walls compared to secondary cell walls [and] are tied
together by pectin.
(Spec. 4:20-24).
FF3. “Fruit or vegetable cells with an exclusively parenchymal cell
wall structure can be treated with a generally mild process to
form highly absorbent microfibers” (Spec. 3: 10—12).
FF4. ‘“[Exclusively parenchymal cell wall structures” is understood to be
“indicative of the fact that the majority source of the material comes
from the cell structures of the plants that are parenchymal cells”
(Spec. 15: 6-8).
Analysis
With respect to claims 11 and 14, the Examiner’s position is that
“[t]he term ‘derived from cells having exclusively parenchymal cell’ is
vague and subjective, even among persons having ordinary skill in the art”
(Ans. 5).
We find that the Examiner has not met the burden of establishing that
the claims as amended in the After Final Amendment filed Feb. 3, 2013 and
entered by the Examiner in the Advisory Action mailed Apr. 21, 2014 are
indefinite. The amendment added the limitation “derived from cells having
exclusively parenchymal cell wall.” The Specification explains that
parenchymal cell walls are associated with edible fruit or vegetables and
explains that the connective tissue between these cells is made of pectin
(FF2 and FF3). The Specification provides that “exclusively parenchymal
cell wall” structures means that most of the cells from the fruit or vegetable
are of the parenchymal cell type (FF4).
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Application 12/459,452
With respect to claims 11 and 23, the Examiner finds that “the
limitation requiring the highly refined cellulose (HRC) fiber to be ‘free of
acid bleaching or NaOH chemical processing’ is indefinite because there is
uncertainty as to whether the HRC fiber must be BOTH free of acid
bleaching AND free of NaOH chemical processing to satisfy the claim”
(Ans. 5).
We are not persuaded by the Examiner’s rationale. Here, the word
“or” provides a choice of either applying an acid bleaching process and in
the alternative applying a NaOH process to obtain the fibers. The Examiner
has not directed us to any part of the Specification that would support the
Examiner’s position that “or” in the context of the claims means “and” when
read in light of the Specification. Because the preponderance of the
evidence record does not support the Examiner’s position, we reverse this
rejection.
With respect to claim 16, the Examiner’s position is that “the cell”
lacks antecedent bases because there are two types of cells in the base claim.
“Claim 16 depends directly on claim 14, which recites the following two
types of cell: ‘plant cells’ and ‘parenchymal cell.’ This lack of clarity
renders claim 16 indefinite.” (Ans. 6)
We find that the Examiner has not met the burden of establishing that
the claims as amended in the After Final Amendment filed Feb. 3, 2013 and
entered by the Examiner in the Advisory Action mailed Apr. 21, 2014 are
indefinite. The amendment added the limitation “derived from cells having
exclusively parenchymal cell wall” to claim 14 from which claim 16
depends. We find that with this amendment the antecedent issues identified
by the Examiner are resolved.
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III. Obviousness over Tournilhac and Weibel as evidenced by Marin
Does the preponderance of evidence of record support the Examiner’s
moisture stabilizing a cosmetic product obvious?
Findings of Fact
We adopt the Examiner’s findings of fact and reasoning regarding the
scope and content of the prior art as set out in the Answer, Final Action
mailed Jan. 28, 2013, and Advisory Action mailed Apr. 21, 2014. For
emphasis only we highlight the following:
FF5. Tournilhac teaches the “use of cellulose fibrils for stabilizing an oil-
in-water emulsion that is free of surfactant” (Tournilhac 1:14—16, see
2:7-9).
FF6. Example 2 of Tournilhac teaches a nutritive cream composition
comprising an aqueous phase and an oily phase.
conclusion that the combination of references renders the claimed method of
Aqueous phase:
Preservatives
Glycerol
Cellulose Kvicrofibs'f Is
(CelMon PC from Keleo)
€br boxy me bi yl cel hi lose
Demirieralissed water
Oily phase:
03%
qsp 100%
Apricot kernel oil
Hydrogenated pely isobutylene
Aery kites, copol ymer
(Structure O from National Slasxih)
Example 2, reproduced above, shows a table of ingredients for the
aqueous and oil phases.
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FF7. Weibel teaches “[t]he acid or basic hydrolysis of sugar beet pulp, or
other parenchymal cell-containing materials to isolate PCC
[(parenchymal cell cellulose)] or hemicellulosic components is greatly
facilitated by the employment of physical shearing ... to maximize
the fibrillation of PCC” (Weibel 13: to 14:3).
FF8. Weibel teaches liberating hemi-cellulosic components from
parenchymal tissue. For example “citrus pulp was acidified to a pH of
about 2.2 with HC1 and hydrolyzed for about 170 seconds at about
165° C” (Weibel 12:54^57).
Principle of Law
“If the claim extends to what is obvious, it is invalid under § 103.”
KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Analysis
Claim 11
Toumilhac teaches that they “‘discovered unexpectedly that cellulose
fibrils can be used to produce stable oil-in-water emulsions’ . . . [but] does
not expressly identify these cellulose fibrils as being highly refined cellulose
fibers comprising at least 50% by weight parenchymal cell cellulose ”(Ans.
9; see FF5 and FF6). Weibel teaches acid hydrolysis of citrus derived
parenchymal cell cellulose (Ans. 10; FF7 and FF8). The Examiner finds that
“[a] person having ordinary skill in the art would reasonably infer that acid
hydrolysis does not involve exposing the citrus pulp to NaOH solutions
(which are species of basic solutions)” The Examiner concludes that at the
time the invention was made it would have been obvious to one of ordinary
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Application 12/459,452
skill in the art to take Toumilhac’s “cosmetic/personal care products [and]
add[] parenchymal cell cellulose (PCC) and/or substitute parenchymal cell
cellulose [of Weibel] for at least some of the cellulose fibrils, for the purpose
of increasing product stability” (Ans. 11).
Appellants contend that the references do not teach the production of
fibers without the use of chemical treatment thereby any combination with
the fibers would not meet the claimed method (see Br. 12, 14 (Toumilhac
“fibers are not highly refined cellulose fibers made without chemical
processing, but micro fibrillated or microcrystalline cellulose according to
the knowledge in the art. The parenchymal fibers evidenced by Weibel are
all acid-hydrolyzed”)).
We are not persuaded by Appellants’ contention because we do not
find that the claims recite fibers made without chemical processing.
Specifically, claim 11 recites that the “cellulose fiber having a water holding
capacity greater than five parts water per part fiber and being free of acid
bleaching or NaOH chemical processing.” Here, the Examiner has
reasonably interpreted that the claim may encompass either of the two
recited process steps “(1) acid bleaching; [or] (2) NaOH chemical
processing” and still be within the scope of the claim (Ans. 12). We agree
with the Examiner’s interpretation that claim 11 needs to only be free of one
of the two recited chemical processes. Based on this interpretation, we find
that the evidence of record supports the Examiner’s conclusion, as set out in
the Answer, Final Action, and final Advisory Action, that the combination
of references renders claim 11 obvious; claims 12, 13 and 17—21 were not
separately argued and fall with claim 11.
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Claims 14, 15, 16, 22, and 23
Claims 14, 15, 16, and 22 recite cellulose fibers used in the method
steps as “being free of acid bleaching and ©r NaOH chemical processing”
(see After Final Amendment filed Feb. 3, 2014). Claim 23 recites a “fiber
composition comprising citrus fruit parenchymal cells free of chemical
treatment and free of treatment with NaOH” (id.).
We note that Appellants did not separately argue claims 14, 15, 16,
22, and 23, however, their arguments presented in the Brief are directed to
the fibers disclosed in the cited references and specifically note that these
fibers are not free of chemical processing (see Br. 12—14). Because claims
14, 15, 16, 22, and 23 recite fibers that are made without chemical
processing we will treat these claims as having been separately argued in the
Brief.
Appellants contend that Weibel’s fibers are not made without
chemical processing (see Br. 14).
The Examiner interprets step (a) as recited in the method claims 14 or
23 as a product-by-process limitation. This product is described using "as
negative product-by-process limitation[] because Appellant is seeking to
define the structure of the HRC fiber on the basis of the steps that were
avoided in [the process of] manufacturing it” (Ans. 25). The Examiner
contends that Weibel “teach[es] all the structural limitations expressly
recited in claims 14 and 15 that concern the highly-refined cellulose (HRC)
fiber” and that “there is an adequate basis to conclude that the HRC fiber
taught in Weibel... is identical or substantially identical in structure or
composition to the HRC fiber, as recited in claims 15. (Ans. 16 (emphasis
in original).)
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We find that Appellants have the better position. The Examiner relies
on Weibel for teaching cellulose fibers derived from parenchymal cell walls
(FF7 and FF8). Weibel, however, expressly teaches that their fibers are
made using either acid or base hydrolysis before applying shearing
techniques to obtain the fiber product (FF7). On this record, we find that the
Examiner as not adequately explained how the fibers in Weibel would
necessarily possess the same structure as fibers processed without using acid
and/or NaOH hydrolysis. The burden is on the Examiner to set forth a prima
facie case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). At best Weibel discloses using the same starting material, i.e. citrus
pulp, to create their fiber product (FF8). Weibel explains that “the various
forms of bonding between the parenchymal cell walls comprising
parenchymal cell cellulose and other forms of cellulose in spent sugar beet
pulp or other plant material is disrupted through the combination of
hydrolysis and physical shearing” (Weibel col. 14,11. 44-49). Weibel,
therefore, supports the position that both process steps are required to arrive
at the fibers. Marin teaches that “[processing of industrial [citrus] wastes
also carries some variation in citrus fibre composition and its technological
properties. For instance, scalding gives a maximum performance of FHC
[(lipid-holding capacity)], but produces a sensitive decrease in soluble
dietary fibre, reducing the WHC [(water-holding capacity)] of the final
product” (Marin 741). Thus, the art acknowledges that processing of citrus
fibers may affect their lipid-holding as well as water-holding capacity,
indicating that different processing steps do result in different products
based on differences in their functional qualities. What is missing from the
Examiner’s analysis, however, is a rationale that reasonably shows that the
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claimed fiber structure is indeed the same as Weibel’s fiber structure even
though they rely on the combination of acid or hydroxide hydrolysis in
conjunction with shearing forces. Without first showing that the fiber
structures are the same, the Examiner’s product-by-process analysis inapt.
The claims specifically exclude acid bleaching and NaOH chemical
processing and the Examiner has not provided a sufficiently articulated
rationale why addition of these steps would not have no effect on the
structure of the fiber product.
We conclude that the preponderance of the evidence of record does
not support the Examiner’s conclusion that the combination of Toumilhac
and Weibel, as evidenced by Marin teaches a method having all limitations
claims 14, 15, 16, and 23.
SUMMARY
We affirm the rejection of claims 15 and 23 under 35 U.S.C. § 112,
first paragraph as containing new matter.
We reverse the rejection of claim 16 under 35 U.S.C. § 112, first
paragraph as containing new matter.
We reverse the rejection of claims 11—23 under 35 U.S.C. § 112,
second paragraph as failing to distinctly claim the subject matter.
We affirm the rejection of claims 11, 12, 13 and 17—21 under
35 U.S.C. § 103(a) as unpatentable over Toumilhac in view of Weibel, as
evidenced by Marin.
We reverse the rejection of claims 14, 15, 16, 22, and 23 under 35
U.S.C. § 103(a) as unpatentable over Toumilhac in view of Weibel, as
evidenced by Marin.
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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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