Ex Parte Xu

Patent Trial and Appeal Board

Mar 22, 2018

13701046 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131701,046 11130/2012
22827 7590 03/26/2018
DORITY & MANNING, P.A.
POST OFFICE BOX 1449
GREENVILLE, SC 29602-1449
FIRST NAMED INVENTOR
YijunXu
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.
KING-6-WO-US 2078
EXAMINER
NGUYEN, COLETTE B
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
USDOCKETING@DORITY-MANNING.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YIJUN XU
Appeal2017-006106
Application 13/701,046 1
Technology Center 1700
Before BRADLEY R. GARRIS, BRIAND. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 2-13. We have jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE2
Appellant describes the invention as relating to an economically
feasible process for manufacturing tagatose and glucose from lactose. Spec.
1 According to Appellant, the real party in interest is WUXI JCANTEK
PHARMACEUTICALS LIMITED. Appeal Br. 2.
2 In this opinion, we refer to the Non-Final Office Action dated May 4, 2016
("Non-Final Act."), the Appeal Brief filed September 30, 2016 ("Appeal
Appeal2017-006106
Application 13/701,046
1: 11-12.3 Tagatose is a sweetener that has 92% of the sweetness of sucrose
but only 38% of the calories. Spec. 1:15-26. Claim 2, reproduced below, is
the only independent claim on appeal and is illustrative of the claimed
subject matter:
2. A process for manufacturing tagatose, comprising the
step: c) reaction of an aqueous suspension of galactose under the
presence of metal ions and alkaline condition to convert
galactose into tagatose, wherein step c) is carried out by adding
an aqueous slurry of metal hydroxide into an aqueous suspension
of galactose.
Appeal Br. 10 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Rowe
Beadle et al.
("Beadle")
Comille et al.
("Comille"4)
us 4,067,748
us 5,002,612
WO 2005/066192 Al
REJECTIONS
Jan. 10, 1978
Mar. 26, 1991
July 21, 2005
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 2-7 and 10-13 under 35 U.S.C. § 103(a) as
unpatentable over Beadle in view of Comille. Ans. 2.
Br."), the Examiner's Answer dated December 27, 2016 ("Ans."), and the
Reply Brief filed February 27, 2017 ("Reply Br.").
3 We refer to the November 30, 2012, Substitute Specification ("Spec.").
4 The Examiner refers to this reference as Fabice. See, e.g, Final Act. 3.
The Examiner cites to the machine translation of record, and we do the
same. Id.
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Application 13/701,046
Rejection 2. Claims 8 and 9 under 35 U.S.C. § 103(a) as unpatentable
over Beadle in view of Comille and further in view of Rowe. Id. at 6.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by the Appellant and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After considering
the evidence presented in this Appeal and each of Appellant's arguments, we
are not persuaded that Appellant identifies reversible error. Thus, we affirm
the Examiner's rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Appellant argues both rejections together and argues all claims as a
group. See Appeal Br. 3-8. Therefore, consistent with the provisions of 37
C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claim 2, and all
other claims on appeal stand or fall together with claim 2.
The Examiner finds that Beadle teaches a method of making tagatose
from galactose by reacting a solution of galactose with an aqueous mixture
of metal hydroxide. Ans. 2 (citing Beadle); see also id. at 7 (clarifying that
Beadles uses "an aqueous solution" of galactose ). The Examiner finds that
Beadle does not discuss a suspension of galactose. Id. at 7. The Examiner
finds, however, that Comille teaches a process of making tagatose from
galactose wherein either an aqueous solution or suspension of galactose can
be used. Id. The Examiner determines that the subject matter of claim 2
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Application 13/701,046
would have been obvious because a person of skill in the art would have
understood, based on the teaching of Comille, that either a solution or
suspension of galactose could be used in the process of Beadle and therefore
would have substituted a galactose suspension for Beadle's galactose
solution as an effective alternative for accomplishing the desired reaction.
Id. at 3, 7.
Appellant first argues that Beadle discloses a galactose solution rather
than a galactose slurry. Appeal Br. 3. As explained above, the Answer
clarifies the Examiner's position on this point. The Examiner agrees that
Beadle teaches a solution and relies on an obviousness rationale based on
Comille to reach the recited suspension. Ans. 7.
Appellant argues that Comille teaches away from the use of a
hydroxide because, for example, such a process gives poor yields. Appeal
Br. 4 (citing Comille ). The Examiner, however, relies on Beadle rather than
Comille as teaching the use of hydroxides. Ans. 2-3. Comille does not
disparage Beadle's specific process and does not disparage use of an
aqueous suspension in conjunction with use of hydroxides. Cf In re Young,
927 F.2d 588, 591 (Fed. Cir. 1991) ("When prior art contains apparently
conflicting references, the Board must weigh each reference for its power to
suggest solutions to an artisan of ordinary skill" and, in so doing, "consider
the degree to which one reference might accurately discredit another.").
Accordingly, Appellant's teaching away argument does not persuasively
establish error.
Appellant also argues that Comille and Beadle teach "completely
different" processes for converting galactose to tagatose and that a person of
skill in the art therefore would not consider applying the Comille suspension
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Application 13/701,046
to the process of Beadle. Appeal Br. 5---6. The Examiner, however, finds
that Comille teaches the general proposition that a solution or suspension of
galactose can be used in a process for conversion to tagatose. Ans. 8.
Appellant does not persuasively argue why a person of skill in the art would
not consider use of a suspension in Beadle's process given that Comille
teaches such a possibility for another tagatose production process. Rather,
there are a finite number of ways to combine galactose with a reactant, and
Comille establishes that it would have been within the technical grasp of a
person of ordinary skill in the art to consider adding galactose in suspension
form. Cf KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
Appellant further argues that Comille' s isomerization reaction takes
place in solution rather than while galactose is in suspension such that
neither cited reference teaches reacting galactose in suspension form.
Appeal Br. 6-7; Reply Br. 5. Comille, however, suggests that galactose in
suspension may suitably be used for its reaction. See, e.g. Comille 2
("According to the invention the sugar ketoses preparation process is
characterized in that it consists in bringing a solution or a suspension in
water type sugar aldose reacted with potassium aluminate in order to
convert the al dose in ketose by an isomerization reaction .... " (emphasis
added)). The preponderance of the evidence thus indicates that a person of
skill in the art would understand that Comille has teachings beyond its
Example 1 emphasized by Appellant. See In re Lamberti, 545 F.2d 747, 750
( CCP A 197 6) ("all disclosures of the prior art, including unpreferred
embodiments, must be considered"). Moreover, even with respect to
Example 1, Appellant has not presented evidence persuasively explaining
that none of the galactose would react while still in suspension.
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Finally, Appellant argues unexpected results. Appeal Br. 7-8; Reply
Br. 5---6. A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469-70 (Fed. Cir. 1997). Such burden requires Appellant to
proffer factual evidence that actually shows unexpected results relative to
the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991 ), and that is reasonably commensurate in scope with the
protection sought by the claim on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983).
Here, Appellant relies on Examples 2 and 4 from the Specification to
establish unexpected results (Spec. 16:28-17: 13; 18: 10-19:2), but Appellant
does not adequately explain those results (Appeal Br. 7-8). In particular, it
is unclear what allegedly unexpected result Example 2 demonstrates. With
respect to Example 4, Appellant provides one data point at one particular
percentage and one particular molarity for both calcium hydroxide and
water, and the data point comes from one particular set of time and
temperature conditions. Spec. 18:10-19:2. Claim 2 is much broader in
scope; it is not limited, for example, by time, temperature, weight
percentages, or molarity. Accordingly, we agree with the Examiner that
Appellant's evidence of unexpected results is unpersuasive because the
evidence is not sufficiently commensurate in scope with claim 2. Ans. 8.
We also note that the weight percent and molarity of galactose in
Appellant's inventive Example 4 (using a galactose suspension) is much
higher than that of Example 3 (using a galactose solution). Thus, it is not
clear that the suspension versus solution distinction results in higher yield
because the other variables of the Examples do not remain constant.
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DECISION
For the above reasons, we affirm the Examiner's rejections of
claims 2-13 .
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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