Ex Parte Sewall et al

Patent Trial and Appeal BoardApr 19, 2016

13315559 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/315,559 12/09/2011 48219 7590 04/21/2016 PA TENT ADMINISTRATOR FMC CORPORATION 1735 MARKET STREET PHILADELPHIA, PA 19103 FIRST NAMED INVENTOR Christopher J. Sewall 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. 60812-USA 6272 EXAMINER WATTS, JENNA A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/21/2016 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): patents@fmc.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER J. SEW ALL, WILLIAM R. BLAKEMORE, and ERICK I. ASK Appeal2014-009728 Application 13/315,559 Technology Center 1700 Before CATHERINE Q. TIMM, JACQUELINE WRIGHT BONILLA, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL Appeal2014-009728 Application 13/315,559 Appellants appeal, 1 under 35 U.S.C. Â§ 134, from the Examiner's decision2 finally rejecting claims 1-22. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to a liquid formulation containing protein and lambda carrageenan from seaweed of the taxonomic order Halymeniales. Claim 1, reproduced below, is illustrative of the claims on appeal. 1. A liquid formulation comprising protein and lambda carrageenan, wherein said lambda carrageenan comprises lambda carrageenan from at least one seaweed of the taxonomic order Halymeniales. App. Br. 20 (Claims Appendix). Claims 1-22 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Mutilangi3 in view of Briones,4 and as evidenced by Self Nutrition Data. 5 Final 3. Appellants argue that the Examiner's obviousness rejection "is based on the vie\v that all lambda carrageenans are equivalent." See App. Rr. 5, 8; see also Reply Brief filed August 27, 2014 ("Reply Br."), 2. Appellants 1 Appellants identify the real party in interest as FMC Corporation. Appeal Brief filed May 12, 2014 ("App. Br."), 2. 2 Final Office Action mailed October 8, 2013 ("Final"). 3 Mutilangi et al., US 2008/0260908 Al, published Oct. 23, 2008 (hereinafter "Mutilangi"). 4 Briones et al., USP Grade Lambda-Like Carrageenan From Halymenia Durvillaei Bory De Sainte Vincent (Short Communication), 129 Philippine Journal of Science 15-17 (2000) (hereinafter "Briones"). 5 Self Nutrition Data know what you eat, "Milk, nonfat, fluid, without added vitamin A (fat free or skim)," http://nutritiondata.self.com/facts/dairy-and- egg-products/139/2 (last visited June 4, 2013) (hereinafter "Self Nutrition Data"). Self Nutrition Data is only relied upon by the Examiner to show the amount of protein in fat free or skim milk (recited in appealed claim 4). Final 7. 2 Appeal2014-009728 Application 13/315,559 contend that the data in the Specification (Spec. 11-13; Figures 1--4) demonstrates that lambda carrageenans differ chemically and functionally from one another and based on those differences, "one skilled in the art would not find [a] suggestion ... to use the specific lambda carrageenan of [Briones] in a protein containing liquid formulation [of Mutilangi]." See App. Br. 10. We do not find Appellants' arguments to be persuasive. Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297, 301 (CCPA 1982). In this case, the Examiner finds that the lambda carrageenan from Halymeniales of Briones would have been viewed as a suitable substitute for the lambda carrageenan of Mutilangi because both references teach that lambda carrageenan has non-gelling properties which are useful in the food industry, for example, to extend shelf life stability (Ans. 4---6). See Mutilangi i-fi-17, 16 (teaching gelling is undesirable in protein beverages, and teaching lambda-carrageenan is a stabilizer with non-gelling properties that extends the shelf life of food and beverages) and Briones Abstract, 15-1 7 (teaching the unique non-gelling property of lambda carrageenan makes it indispensable in the food industry, Halymenia species contains lambda-like carrageenan, and that the obtained lambda carrageenan conforms with the USP specifications for carrageenan). Appellants argue that testing in the Specification demonstrates that all lambda carrageenans are not "functionally equivalent," and thus, there would have been no reasonable expectation of success in using Briones' lambda carrageenan from Halymenia durvillaei in Mutilangi' s protein containing beverage. See App. Br. 8. We do not find this argument to be 3 Appeal2014-009728 Application 13/315,559 persuasive. Obviousness does not require absolute predictability; all that is required is a reasonable expectation of success. In re 0 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988). One must consider what the prior art suggests and what properties would have been expected. See Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) ("[A]ny superior property must be unexpected to be considered as evidence of non-obviousness," and a proper evaluation considers what properties were expected). Briones teaches that lambda carrageenan from Halymenia durvillaei has similar non- gelling and physicochemical properties to commercial sources of lambda carrageenan. See Briones Abstract, 17. Moreover, as the Examiner points out, the data in Appellants' Specification tends to establish that the lambda carrageenan ofMutilangi, ViscarinÂ® GP 209F (Formulation A), and lambda carrageenan of Briones, extract from Halymenia durvillaei (Formulations B and C), at concentrations of 0.02 wt% would function similarly as a non- gelling stabilizer (e.g., smooth pour indicating no gelation present) in reduced sugar chocolate milk formulations after 2 weeks of storage (Ans. 12). Spec. iTiT 22-24, 28, 33. Appellants argue that Briones "teaches the use of lambda carrageenan from Halymenia durvillaei as non-gelling in a water (non-protein containing) environment." App. Br. 9. This statement also appears at iT 4 of the Specification. Neither Appellants nor the Specification, however, cite to any portion of Briones to support the statement, and we find no such supporting disclosure in Briones. Briones, in fact, more generally suggests using lambda carrageenan for its non-gelling properties in the food, pharmaceutical and cosmetic industries without disclosing any restrictions on the presence of protein. Briones, p. 15, col. 2 iT 1. 4 Appeal2014-009728 Application 13/315,559 In sum, for the reasons discussed above, a preponderance of the evidence supports the Examiner's finding that the lambda carrageenan of Briones would have been viewed by one of ordinary skill in the art as a suitable substitute for the lambda carrageenan of Mutilangi for stabilizing protein-containing beverages without gelling. Accordingly, Appellants have not shown reversible error in the Examiner's finding that lambda carrageenan from Halymenia durvillaei disclosed in Briones would have been a suitable substitute for lambda carrageenan in Mutilangi. Appellants argue Mutilangi discloses a total solids content of sweetener that is "significantly higher" than the ranges recited in claims 7 and 8. App. Br. 9. Appellants further argue "there are considerable challenges in the field associated with reducing the solids [content] in protein containing beverages," and thus, there is no motivation to modify the total solids content of sweetener in Mutilangi's beverage to arrive at the claimed ranges. See id. at 9-10. Claims 7 and 8 depend indirectly from claim 1, and require that the formulation comprise a total solids content from 0 to 5 wt% (claim 7) or from 0 to 4 wt% (claim 8) of sweetener. Mutilangi discloses a protein beverage containing 7.0 wt% sucrose. Mutilangi i-f 49; Example 2. It is unclear whether 7 .0 wt% in Example 2 in Mutilangi is a total solids content of sucrose in the beverage, and the total solids content of sucrose in the beverage may be lower once the ingredients in Example 2 are combined. Id. Nevertheless, absent evidence to the contrary, it is normally expected that a change in concentration would be an unpatentable modification over the prior art. In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("Normally, it is to be expected that a change in temperature, or in concentration, or in both, would 5 Appeal2014-009728 Application 13/315,559 be an unpatentable modification."). Therefore, when patentability is predicated upon a change in a concentration of a component of a prior art composition, the burden is on Appellants to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appellants have not provided sufficient evidence in this regard. Under the heading "Unexpected Results," Appellants argue the claimed formulation exhibits "significant benefits" when compared with formulations including other lambda carrageenans. See App. Br. 10. Appellants point to test results in their Specification showing different results (e.g., in viscosity, mouthfeel, and gelation) obtained with four different lambda carrageenan products in reduced sugar chocolate milk formulations at multiple use levels for up to three months. See App. Br. 10- 18; see also Spec. 11-13 and Figures 1--4. However, as pointed out by the Examiner, at 0.02% by weight all the formulations exhibited the same "Pour observations" of "smooth" and Formulations A, B, and Chad the same mouth feel score. Ans. 12; Spec. 12-13. Although there are differences at higher concentrations and longer time periods, Appellants have not established sufficiently that the differences would have been unexpected to the ordinary artisan. "[A ]ny superior property must be unexpected to be considered as evidence of nonobviousness." Pfizer, 480 F .3 d at 13 71; In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (arguments of counsel cannot take the place of evidence). Moreover, the advantages disclosed in the Specification are limited to reduced sugar chocolate milk formulations whereas claim 1 is not so limited. Accordingly, as the Examiner correctly 6 Appeal2014-009728 Application 13/315,559 finds, Appellants' data is not commensurate adequately in scope with claim 1. See Ans. 13. Appellants argue that the testing of unexpected results in the Specification is commensurate in scope with claims 4--8. 6 App. Br. 18. We do not find this argument to be persuasive because those claims encompass concentrations of lambda carrageenan at which there was little or no difference in results between the comparative and inventive examples. Moreover, Appellants have not established sufficiently with evidence that the results would have been unexpected to the ordinary artisan. For the above reasons, we sustain the Examiner's rejection of claims 1-22. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 6 Because Appellants did not show good cause under 37 C.F.R. Â§ 41.41 (b )(2), we will not consider the new argument that the results are commensurate in scope with claims 19, 20, and 22. Reply Br. 3. 7