Ex Parte Sullivan et alDownload PDFPatent Trial and Appeal BoardJan 31, 201713401956 (P.T.A.B. Jan. 31, 2017) 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. 13/401,956 02/22/2012 Richard C. Sullivan BT06243/0583093 2614 26874 7590 02/02/2017 FROST BROWN TODD LLC 3300 Great American Tower 301 East Fourth Street CINCINNATI, OH 45202 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 02/02/2017 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): patents @ fbtlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD C. SULLIVAN, JOSEPH A. LYONS, SANFORD D. CAUDILL, and KEAN ASHURST Appeal 2015-008279 Application 13/401,956 Technology Center 1700 Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1—4, 6—9, 18, 19, and 21—26. We have jurisdiction under 35 U.S.C. §6. We AFFIRM. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: Appeal 2015-008279 Application 13/401,956 1. A spray dried myrosinase and ascorbate mixture formed from the steps comprising: providing a source of myrosinase, adding calcium ascorbate to the source of myrosinase, heating the source of myrosinase to a temperature of about 104 °F (about 40 °C) or higher, and spray drying the myrosinase and ascorbate mixture after heating. Appellants (see Appeal Brief, generally) request review of the following rejections from the Examiner’s Non-Final Action dated November 6, 2014:1 I. Claims 1—3, 6, 18, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192 (US 2008/0311192 Al, published December 18, 2008) and Kirschner (US 2002/0034543 Al, published March 21, 2002). II. Claims 4 and 19 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192, Kirschner and Omary (US 6,436,450 Bl, issued August 20, 2002). III. Claims 7 and 8 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192, Kirschner and West ‘419 (US 7,371,419 Bl, issued May 13, 2008). IV. Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192, Kirschner, West ‘419 and Yen (Gow-Chin Yen and Que-King Wei, Myrosinase Activity and Total Glucosinolate Content of Cruciferous Vegetables, and Some Properties of Cabbage Myrosinase in Taiwan, J. Sci. Food Agric. 61: 471^175, 1993.). 1 The Examiner withdrew the rejection of claims 1—9 under 35 U.S.C. § 112, second paragraph. Ans. 10. Accordingly, this rejection is not before us for review on appeal. 2 Appeal 2015-008279 Application 13/401,956 V. Claims 22—25 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192 and Omary. VI. Claim 26 rejected under 35 U.S.C. § 103(a) as unpatentable over West ‘192, Omary, and Yen. For Rejection I, Appellants argue independent claims 1 and 18 together and rely on the same arguments in addressing the rejection of dependent claims 2, 3, 6, and 21. App. Br. 8—9. Appellants also rely on the arguments presented when discussing claims 1 and 18 to address the separate rejections of claims 7—9 (Rejections III and IV). Id. at 19. Accordingly, we select claim 1 as representative of the subject matter before us on appeal for these rejections. Claims 2, 3, 6—9, 18, and 21 stand or fall with claim 1. In addition, Appellants presented separate arguments for the rejection of claims 4 and 19 (Rejection II) and rely on the same arguments to address the separate rejections of claims 22—26 (Rejections V and VI). App. Br. 13— 19. Accordingly, we select claim 4 as representative of the subject matter before us on appeal for these rejections. Claims 19, and 22—26 stand or fall with claim 4. Our discussion will focus on Rejections I and II with the understanding that it applies to their associated rejections, as noted above. 3 Appeal 2015-008279 Application 13/401,956 OPINION Rejection I (Claim 1) After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner’s prior art rejection under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the following for emphasis. Independent claim 1 is directed to a spray dried myrosinase and calcium ascorbate mixture We refer to the Examiner’s Non-Final Action for a statement of the rejection. Non-Final Act. 5—6. Appellants argue the cited art teaches away from their combination because West teaches that a tablet should not release its active ingredients until after it has passed through the stomach and into the intestine and Kirschner teaches that the active ingredients should be released in the mouth so they can be mixed by chewing. App. Br. 9—10. Thus, Appellants argue there is no reason to modify the ascorbic acid of West with calcium. Id. at 10. We are unpersuaded by these arguments and agree with the Examiner’s conclusion of obviousness. Ans. 10—11. The Examiner found West discloses a spray dried myrosinase and ascorbic acid derivative mixture that differs from the claimed invention in that West is silent about calcium ascorbate being used as the ascorbic acid derivative. Non-Final Act. 5—6; West || 23, 25, 27, 29, 34, 36, and 46. The Examiner further found Kirschner discloses well-known ascorbic acid derivatives, including calcium ascorbate as the preferred ascorbic acid derivative, used as nutritional supplements. Non-Final Act. 6; Kirschner || 64, 65. The Examiner 4 Appeal 2015-008279 Application 13/401,956 concluded that it would have been obvious to one skilled in the art to modify the spray dried myrosinase and ascorbic acid derivative mixture of West by using Kirschner’s preferred calcium ascorbate as the ascorbic acid derivative. Non-Final Act. 6. Thus, given that West expressly discloses the use of ascorbic acid derivatives in the disclosed spray dried mixture, the Examiner provided a reasonable basis to combine the cited art to arrive to the claimed invention. West 134. Appellants have not adequately explained why the well-known ascorbic acid derivatives of Kirschner would not have been suitable for use in the spray dried myrosinase and ascorbic acid derivative mixture of West. Appellants have not adequately explained why one skilled in the art would not have been capable of adapting Kirschner’s well-known ascorbic acid derivatives for use in the spray dried myrosinase and ascorbic acid derivative mixture of West. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Appellants additionally argue evidence of unexpected results in the Specification rebuts a prima facie case of obviousness. App. Br. 11. According to Appellants, Examples in the Specification show the claimed mixture, which uses calcium ascorbate, has superior properties over mixtures using ascorbic acid because the claimed mixture produces significantly more sulforaphane compared to the mixture comprising ascorbic acid. App. Br. 11; Spec. 9 (Table). We are also unpersuaded by this evidence for the reasons presented by the Examiner. Ans. 12—13. Moreover, the Examples in the Specification relied upon by Appellants are limited to two samples of, apparently, the same specific composition for the spray dried mixture using broccoli seeds 5 Appeal 2015-008279 Application 13/401,956 as the source for the myrosinase. Spec. 8—9. Appellants have not adequately explained why these limited samples are representative of the entire scope of spray dried mixture compositions encompassed by claim 1. In addition, the showing in the Specification relied upon is based on the higher production of sulforaphane resulting from the claimed spray dried mixture of myrosinase and calcium ascorbate. Spec. 9. The claim language does not recite any requirements with respect to the production of sulforaphane. Thus, on this record, Appellants have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Accordingly, we sustain the Examiner’s prior art rejections of claims 1—3, 6—9, 18, and 21 under 35 U.S.C. § 103(a) (Rejections I, III, and IV) for the reasons presented by the Examiner and given above. Rejection II (Claim 4) Claim 4 requires the use of broccoli seeds as the source of myrosinase. The Examiner found West teaches broccoli seeds as the source for the glucosinolates (sulforaphane precursors). Non-Final Act. 7; West || 25, 31. The Examiner found West is silent about myrosinase being extractable from broccoli seeds. Non-Final Act. 7. The Examiner relied upon Omary to establish that is known in the art that both the glucosinolates and myrosinase can be extracted from the same source, such as broccoli plants. Non-Final Act. 7; Omary Abstract, col. 3,11. 30—32, col. 4 11. 35—45. 6 Appeal 2015-008279 Application 13/401,956 Appellants argue the cited art does not teach broccoli seeds as the source for the myrosinase. App. Br. 14—15. Appellants further argue a second unexpected superior result has been shown in the Declaration under 37 C.F.R. § 1.132 by Darrell Smith (Declaration)2 where myrosinase from a broccoli seed source is compared to commercially available myrosinase from a white mustard seed source as taught in West. Id. at 15. According to Appellants and Declarant, the myrosinase from the broccoli seed source is considerably more efficient in converting glucoraphanin to sulforaphane. App. Br. 15—16; Decl. 3—5. We are unpersuaded by Appellants’ arguments and evidence for the reasons presented by the Examiner. Ans. 13—14. As noted by the Examiner, there is no manipulative difference between the process used by West to treat the broccoli seeds and the process used by the claimed invention. Id. Appellants have not adequately explained why one skilled in the art would not have expected the process of West to also extract myrosinase. We have also considered the Declaration, but agree with the Examiner’s determination that the Declaration is insufficient to support a showing of unexpected result. Id. at 14. Moreover, the data in the Declaration is also limited to a single specific spray dried mixture of myrosinase and calcium ascorbate. Decl. 13. Appellants have not adequately explained why this single example is representative of the entire scope of spray dried mixture compositions encompassed by claim 1. Further, the claim language does not recite any requirements with respect to 2 The Declaration was submitted by Appellants on November 8, 2013 and entered into the record by the Examiner in the Final Action of February 4, 2014. 7 Appeal 2015-008279 Application 13/401,956 efficiency in the production of sulforaphane. Thus, on this record, Appellants again have not adequately shown, much less explained, why the evidence relied upon would have been unexpected by one of ordinary skill in the art or is reasonably commensurate in the scope with the claims. Accordingly, we sustain the Examiner’s prior art rejections of claims 4, 19, and 22—26 under 35 U.S.C. § 103(a) (Rejections II, V, and VI) for the reasons presented by the Examiner and given above. ORDER The Examiner’s prior art rejections of claims 1—4, 6—9, 18, 19, and 21—26 under 35 U.S.C. § 103(a) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED 8 Copy with citationCopy as parenthetical citation