Ex Parte Sullivan et al

Patent Trial and Appeal Board

Jan 31, 2017

13401956 (P.T.A.B. Jan. 31, 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.
13/401,956 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.
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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.
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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
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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
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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.
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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.
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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
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