Ex Parte van Seeventer et alDownload PDFPatent Trial and Appeal BoardApr 25, 201811571919 (P.T.A.B. Apr. 25, 2018) Copy Citation 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. Appeal2016-007148 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. 2 Appeal2016-007148 Application 11/571,919 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 3 Appeal2016-007148 Application 11/571,919 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."). 4 Appeal2016-007148 Application 11/571,919 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. 5 Appeal2016-007148 Application 11/571,919 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 6 Appeal2016-007148 Application 11/571,919 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- 7 Appeal2016-007148 Application 11/571,919 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 8 Appeal2016-007148 Application 11/571,919 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 9 Appeal2016-007148 Application 11/571,919 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 10 Copy with citationCopy as parenthetical citation