Ex Parte van Seeventer et al

Patent Trial and Appeal Board

Apr 25, 2018

11571919 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/571,919 10/23/2007 Paul Bastiaan van Seeventer
23644 7590 04/27/2018
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
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.
53254-119119 1737
EXAMINER
WATTS,JENNAA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PAUL BASTIAAN VAN SEEVENTER,
SIETZE THEODORUS BOUWER, and PATRICK VAN DER WAAL 1
Appeal 2016-007148
Application 11/571,919
Technology Center 1700
Before MARK NAGUMO, JAMES C. HOUSEL, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1, 3-18, 22, and 23. An oral hearing was held on
April 19, 2018. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to powdered compositions
comprising an edible oil, and to associated processes and food products.
E.g., Spec. 1:7-10; Claims 1, 15, 16. Claim 1 is reproduced below from
page 12 (Claims Appendix) of the Appeal Brief:
1 Stepan Specialty Products, LLC, is identified as the real party in interest.
Br. 3.
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Application 11/571,919
1. A composition comprising:
(i) from 25% to 90% by weight of an edible oil;
(ii) one or more sugar alcohols; and
(iii) one or more reducing sugars;
wherein the oil comprises at least 20% by weight of one or more
carboxylic acids containing at least 18 carbon atoms and at least
2 carbon-carbon double bonds, or an ester thereof, and the weight
ratio of (ii) to (iii) is 1 :2 to 1 :6, wherein the composition is spray-
dried.
ANALYSIS
Claims 1, 3-18, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Skelbaek (WO 94/01001, published Jan. 20, 1994) and
Takeshi2 (JP8259943, published Oct. 8, 1996). The Appellants argue the
claims as a group. We select claim 1 as representative of the rejected
claims, and we limit our discussion to claim 1. The remaining claims on
appeal will stand or fall with claim 1.
The Examiner finds, inter alia, that Skelbaek teaches a composition
that includes each component of claim 1 except that Skelbaek teaches the
use of an antioxidant and does not specifically teach the use of a sugar
alcohol. Ans. 4. The Examiner finds, however, that "Takeshi teaches the
known antioxidant nature of sugar alcohols" and further teaches that the
addition of a sugar alcohol to a composition similar to that of Skelbaek
yields "an emulsified composition that has excellent oxidation stability
especially with control of flavor deterioration." Id. at 4--5. The Examiner
determines:
2 The Appellants do not object to the Examiner's use of the English-
language translation of record.
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Since the art recognizes that sugar alcohols are used for the same
purpose and in similar amounts to the antioxidants taught by
Skelbaek, one of ordinary skill in the art would have had a
reasonable degree of success in substituting one known
antioxidant for another one and in comparable amounts, for their
art recognized antioxidant functionality in powdered
compositions comprising fish oil and a protein source such as
caseinate.
Id. at 5---6. In view of those and other findings, the Examiner concludes that
the subject matter of claim 1 would have been obvious to a person of
ordinary skill in the art. Id. at 3-6.
As an initial matter, we note that, in the Answer, the Examiner
observes that the "Appellant did not specifically argue the prior art rejection
set forth by the Examiner and instead focused on the secondary
considerations .... " Ans. 9-12. In view of that, the Examiner's analysis is
limited to secondary considerations. Id. The Appellants did not file a Reply
Brief to contest the Examiner's understanding of the Appellants' argument,
and, at the oral hearing, the Appellants confirmed that, for purposes of this
appeal, they assert reversible error only on the basis of unexpected results.
Accordingly, we confine our review to whether the Appellants have
identified reversible error in the Examiner's findings and conclusions
concerning unexpected results. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011 ). We determine that the Appellants have not identified reversible
error.
The Appellants argue that the examples provided in the Specification
show "surprising and unexpected" results. Br. 9. More specifically, they
argue that compositions including both a sugar alcohol and a reducing sugar,
as claimed, show less oxidation as compared to compositions that include
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either a sugar alcohol or a reducing sugar, but not both. Id. at 8-12. "[T]he
degree of oxidation of the compositions was determined by measuring
anisidine and peroxide values, and by conducting sensory tests of smell and
taste." Id. at 8.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellants. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). "[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference." In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (emphasis in original). Additionally, the relied-
upon results must be commensurate in scope with the claims. In re
Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003). "Establishing that one
( or a small number of) species gives unexpected results is inadequate proof,
for 'it is the view of [the CCPA] that objective evidence of non-obviousness
must be commensurate in scope with the claims which the evidence is
offered to support."' In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978)
(quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, "it is well
settled that unexpected results must be established by factual evidence.
'Mere argument or conclusory statements in the specification does not
suffice."' In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re
De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.").
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In support of their position, the Appellants reference, but do not give
substantial discussion of, Examples 1--4 and 7-13 of the Specification.
Br. 8-9. With regards to Examples 1--4, Examples 1 and 2 do not include a
sugar alcohol, while Examples 3 and 4 each include -10 wt% mannitol.
Spec. 17:5-10. Example 1 is otherwise most similar to Example 4, and
Example 2 is otherwise most similar to Example 3. See id. If sodium
ascorbate is counted as an antioxidant (see Spec. 13: 12-15 (describing
ascorbic acid and its salts as antioxidants)), Examples 1 and 2 include -1.3
wt% antioxidant. 3 Id. If mannitol is counted as an antioxidant (see Takeshi
,r,r 4--5, describing known antioxidant nature of sugar alcohols, including
mannitol), Examples 3 and 4 include -11.3 wt% antioxidant. Spec. 17:5-10.
Thus, Examples 3 and 4 include nearly nine times the amount of antioxidant
by weight as Examples 1 and 2. Id.
Oxidation data shows, inter alia, that after 16 weeks, anisidine values
for Example 3 were approximately half that of Example 2, and anisidine
values for Example 4 were approximately 1/3 that of Example 1. See id. at
18: 10-15. Peroxide values for Example 3 were approximately 1 /7 that of
Example 2, and peroxide values for Example 4 were approximately 1/37 of
peroxide values for Example 1.
Examples 7-13 include additional data for varying amounts of, e.g.,
glucose syrup (a reducing sugar), mannitol, and marinol D-40 ( edible oil).
Id. at 22: 1-5. Example 11 includes clarinol G-80 as the edible oil instead of
marinol D-40, and Example 13 includes sorbitol as the sugar alcohol instead
of mannitol. Id. Of particular relevance is a comparison of Example 9 to
3 The prior art of record does not describe glucose syrup as an antioxidant,
and, at oral argument, the Appellants indicated that it is not an antioxidant.
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Example 10. Example 9 includes 27 wt% glucose syrup and 10 wt%
mannitol. Id. Example 10 includes O wt% glucose syrup and 37 wt%
mannitol. Id. Examples 9 and 10 otherwise include the same components in
the same amounts. Id. The data show lower peroxide and anisidine values
for Example 9 (27 wt% glucose syrup + 10 wt% mannitol) than for Example
10 (0 wt% glucose syrup+ 37 wt% mannitol). See id. at 23:1-25:8. For
example, the "Peroxide in time, 40°C, no oxygen" table shows a peroxide
value at 8 weeks of 5.6 for Example 9 and 60.0 for Example 10. See
Spec. p. 24. Arguably, the data indicates a synergy between the glucose
syrup and the sugar alcohol, because a smaller amount (10 wt%) of
antioxidant (mannitol) when combined with glucose syrup results in less
oxidation than a larger amount of antioxidant (37 wt%) in the absence of
glucose syrup.
Nevertheless, on the record before us, the Appellants' showing of
unexpected results is unpersuasive for three independent reasons. First, as
explained by the Examiner, Ans. 9-12, the results have not been shown to be
reasonably commensurate in scope with claim 1. For example, claim 1
recites "one or more sugar alcohols." Claim 1 is not limited with respect to
the selection of a specific sugar alcohol or a combination of sugar alcohols.
The portion of the Specification relied upon by the Appellants provides ten
example compositions that include a sugar alcohol. See Spec. pp. 17-25. Of
those ten example compositions, nine include mannitol as the only sugar
alcohol, and one includes sorbitol as the only sugar alcohol. See id. Data is
not provided for any other sugar alcohol, and no data is provided for any
combination of sugar alcohols. Additionally, the Appellants fail to establish
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that mannitol and/or sorbitol provide representative results for all sugar
alcohols. Thus, at best, data is provided for only two sugar alcohols.
As the Examiner explains, Ans. 9-12, a similar analysis applies with
respect to the edible oil and the reducing sugar. The Examples relied on by
the Appellants provide data for only two edible oils (marinol and clarinol),
and only a single reducing sugar (glucose syrup), see Spec. pp. 17-22,
notwithstanding the fact that claim 1 encompasses any edible oil (subject to
the "wherein" clause) and any reducing sugar.
Of particular significance is the fact that every example relied upon by
the Appellants includes glucose syrup as the reducing sugar. Even if we
were to agree that the data discussed above shows an unexpected synergy
between mannitol ( or sorbitol) and glucose syrup, the Appellants do not
persuasively show that the same unexpected synergy would exist with other
reducing sugars. See Br. 10. On this record, we agree with the Examiner
that the relied-upon results are not commensurate in scope with the claims.
See Greenfield, 571 F.2d at 1189; cf In re Harris, 409 F.3d 1339, 1344
(Fed. Cir. 2005) ("Even assuming that the results were unexpected, Harris
needed to show results covering the scope of the claimed range.
Alternatively Harris needed to narrow the claims."); see also Klosak, 455
F .2d at 1080 ("[T]he burden of showing unexpected results rests on he who
asserts them.").
Second, the Appellants fail to show that the relied-upon data involves
a comparison to the closest prior art. See Baxter, 952 F.2d at 392. There is
no dispute that Skelbaek teaches compositions including an edible oil, a
reducing sugar, and an antioxidant. See Ans. 3 ( citing various portions of
Skelbaek). Skelbaek teaches up to 10% by weight of an antioxidant, with 5-
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6% being preferable. See id. With respect to Examples 1--4, the
comparative examples relied on by the Appellants include only 1.3% by
weight of antioxidant (the listed "antioxidant" plus "Na ascorbate"). See
Spec. 17-22. With respect to Examples 9 and 10, comparative Example 10
includes no reducing sugar. The Appellants fail even to assert that the
comparative data in the Specification represents the closest prior art. See Br.
8-9. Accordingly, the Appellants have not established unexpected results
relative to the closest prior art, i.e., compositions disclosed by Skelbaek that
include an edible oil, a reducing sugar, and up to 10% by weight antioxidant.
Third, and contrary to the Examiner's determination that "the
quantitative data relating to the degree of oxidation exhibited by
compositions comprising the disclosed fish oil along with mannitol and
glucose syrup as compared to a similar composition without the combination
of mannitol and glucose syrup, is convincing," see Ans. 9, we determine that
the Appellants have not provided persuasive evidence or argument that the
reduced degree of oxidation actually would have been unexpected by a
person of ordinary skill in the art. As explained above, "it is not enough to
show that results are obtained which differ from those obtained in the prior
art: that difference must be shown to be an unexpected difference." Klosak,
455 F .2d at 1080 ( emphasis in original).
Here, particularly in view of the strong and uncontested prima facie
case, mere use of the words "unexpected" and "surprising," without more, is
insufficient to carry the Appellants' burden of establishing unexpected
results. See Geisler, 116 F.3d at 1470 ("[I]t is well settled that unexpected
results must be established by factual evidence. Mere argument or
conclusory statements in the specification does not suffice." (internal
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citations omitted)). We recognize that, in some instances, a showing of
"substantially improved results" accompanied by a statement that the results
were unexpected, "in the absence of evidence to the contrary," may be
enough to carry an appellant's burden. See In re Soni, 54 F.3d 746, 751
(Fed. Cir. 1995) (emphases in original). For example, in Soni, a -37%
increase in the molecular weight (203,000 vs. 148,000) of certain polymers
led to "at least a fifty-fold increase in tensile strength." Id. at 747. As
discussed above, the Appellants' improvements appear to have been more
modest (e.g., a nearly 9-fold increase (on a wt% basis) in antioxidant
resulting in comparative oxidation levels of approximately 1/2, in some
cases, and at best comparative oxidation levels of approximately 1/37), and
the Appellants have not addressed Soni or otherwise attempted to show that
the reduced oxidation reflected by their data was so significant as to warrant
the analysis applied by the Federal Circuit in Soni.
* * *
In summary, the Examiner finds, and the Appellants do not dispute,
that "Takeshi teaches the known antioxidant nature of sugar alcohols."
Ans. 4. At least on the record before us, it is not clear why it would have
been unexpected, for example, that adding 10% by weight of mannitol ( a
sugar alcohol with known antioxidant properties, see Takeshi ,r 5) to a
composition would result in reduced oxidation relative to a composition that
includes only 1.3 % by weight of antioxidant. See Spec. 17-19 (Examples 1-
4 ). The Appellants do not identify evidence or otherwise persuasively argue
that the achieved oxidation reduction was higher than what reasonably
would have been expected by a person of ordinary skill in the art. The sugar
alcohol appears to be affecting the composition in a way that reasonably
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would have been expected in view of the teachings of the prior art, i.e., a
known antioxidant acting to reduce oxidation.
For all of the foregoing reasons, we are not persuaded that unexpected
results support a conclusion that the subject matter of claim 1 would not
have been obvious to a person of ordinary skill in the art. We affirm the
rejection.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 1, 3-18, 22, and 23.
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
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