Naerum, Lars et al.

Patent Trials and Appeals BoardJun 1, 2020

13809362 - (R) (P.T.A.B. Jun. 1, 2020)

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. 13/809,362 02/19/2013 Lars Naerum 3672-P50037 1324 13897 7590 06/01/2020 Abel Schillinger, LLP 5929 Balcones Drive Suite 300 Austin, TX 78731 EXAMINER ABU ALI, SHUANGYI ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 06/01/2020 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LARS NAERUM and POVL NISSEN Appeal 2019-002848 Application 13/809,362 Technology Center 1700 ____________ Before RAE LYNN P. GUEST, GEORGE C. BEST, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING STATEMENT OF THE CASE This is in response to a Request for Rehearing (“Req. Reh’g”), dated March 20, 2020, of our Decision, dated January 24, 2020 (“Dec.”), wherein we affirmed the Examiner’s decision to reject all of the appealed claims. Appellant requests reconsideration of our affirmance of the rejection of claims 48, 50, and 51 under 35 U.S.C. § 103(a) over Hawkins. Request Reh’g 2–4. We have reconsidered our Decision of January 24, 2020, in light of Appellant’s comments in the Request for Rehearing, and we find no error in the disposition of the rejection of claims 48, 50, and 51. Appeal 2019-002848 Application 13/809,362 2 A request for rehearing “must state with particularity the points believed to have been misapprehended or overlooked by the Board.” 37 C.F.R. § 41.52(a)(1) (2017). In the Request, Appellant reiterates statements from pages 9 and 10 of the Appeal Brief and asserts their argument that Hawkins requires a dextrose equivalent number from 2 to 20 has been overlooked by the Board in connection with the obviousness rejection of claims 48, 50, and 51. Req. Reh’g 2–4. Appellant asserts that our analysis lacks merit because “[t]he only reasonable conclusion one of ordinary skill in the art can draw from [Hawkins’ Tables 4 and 5] results is that there is no linear (or approximately linear) relationship between the DE of the maltodextrin (carbohydrate) employed and the tensile strength of a sample made with maltodextrin but that there is a maximum tensile strength which is obtained by using a maltodextrin that has a DE of higher than 7.5 and lower than 18.0.” Id. at 3. Appellant’s argument was not overlooked because it is addressed on pages 7 and 8 of the Decision. As explained in the Decision, the Examiner’s finding that Hawkins’ disclosure is not limited to Hawkins’ preferred DE range of from 2 to 20 is supported by the record. Dec. 8. In a determination of obviousness, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.”). “[A] reference is not limited to the disclosure of specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972) (citation omitted). Moreover, Appellant’s assertion that “decreasing the DE of the maltodextrin below 7.5 or increasing the DE of the maltodextrin Appeal 2019-002848 Application 13/809,362 3 above 18.0 will further decrease the tensile strength” (Req. Reh’g 3) is not supported by the record. As pointed out in our Decision, Hawkins’ Table 4 does not include examples in the dextrose equivalent range of greater than 20. Dec. 8. Therefore, Hawkins’ examples do not teach away from a dextrose equivalent greater than 20 as Appellant implies. Id.; see Req. Reh’g 3. In sum, we do not find Appellant’s repeated arguments persuasive for the reasons presented in the Decision. Thus, we decline to modify our decision affirming the Examiner’s rejections of the appealed claims. Based on the foregoing, Appellant’s Request is granted to the extent that we have reconsidered our Decision, but is denied with respect to making changes to the final disposition of the rejections therein. CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 38–40, 42– 51, 54–57 103(a) Hawkins 38–40, 42– 51, 54–57 Appeal 2019-002848 Application 13/809,362 4 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 38–40, 42– 51, 54–57 103(a) Hawkins 38–40, 42– 51, 54–57 41, 52, 53 103(a) Hawkins, Hansen 41, 52, 53 Overall Outcome 38–57 This Decision on the Request for Rehearing incorporates our Decision, mailed January 24, 2020, and is final for the purposes of judicial review. See 37 C.F.R. § 41.52(a)(1). DENIED