Ex Parte KISHIMOTO et alDownload PDFPatent Trial and Appeal BoardMar 15, 201613031088 (P.T.A.B. Mar. 15, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/031,088 02/18/2011 23373 7590 03/17/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Yuka KISHIMOTO 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. Ql23316 4088 EXAMINER BERRIOS, JENNIFER A ART UNIT PAPER NUMBER 1613 NOTIFICATION DATE DELIVERY MODE 03/17/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YUKA KISHIMOTO and HIROSHI OGA Appeal2013-008367 Application 13/031,088 Technology Center 1600 Before DEMETRA J. MILLS, ERIC B. GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON APPEAL r-T"I .. • • .. 1') .. ,..... ,_ TT r'1 I'\ l\ -1,..... Al • "1 • "1 • , ims 1s an appear~ unaer j) u.~.L. s U4 mvo1vmg crnm1s to a method for inhibiting a postprandial increase in blood neutral fat level. The Examiner rejected the claims as obvious. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify the Real Party in Interest as Matsutani Chemical Industry Co., Ltd. (see App. Br. 2). 2 This appeal is related to Appeal 2013-007062 (US Application 11/783,350). Appeal2013-008367 Application 13/031,088 Statement of the Case Background "According to the recent researches, factors such as the level of the neutral fat value increased after the intake of a meal and the time required for the reduction thereof to a normal level have attracted special interest lately as risk factors for arteriosclerosis" (Spec. 2, 11. 10-14). The Claims Claims 1-3 are on appeal. Independent claim 1 is representative and reads as follows: 1. A method for inhibiting a postprandial increase in blood neutral fat level, comprising ingesting a water-soluble and hardly digestible starch decomposed product containing hardly digestible components in an amount of at least 35% by mass as a solid content, wherein said product is ingested separately from a high fat-content meal having a fat content of 20-30% by mass, and wherein said product is ingested in such a manner that the ratio, by mass, of the content of fats in said high fat- content meal to be ingested to that of said hardly digestible components falls within the range of from 1:0.05 to 1:0.18. App. Br. 10 (Claims Appendix). The Issue The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as obvious over Wakabayashi,3 Wolkstein,4 Carey5, and Ohkuma6 (Ans. 3-5). 3 Wakabayashi et al., US 5,505,981, issued Apr. 9, 1996. 4 Wolkstein, M., US 4,626,441, issued Dec. 2, 1986. 5 Carey, D., US 5,370,893, issued Dec. 6, 1994. 6 Ohkuma et al., US 5,358,729, issued Oct. 25, 1994. 2 Appeal2013-008367 Application 13/031,088 The Examiner finds that "Wakabayashi teaches a method for preventing obesity and impaired glucose intolerance [sic, tolerance] by incorporating indigestible dextrin containing at least 30% by weight of digestible components into a food" (Ans. 3). The Examiner finds that Wakabayashi teaches "the use of indigestible dextrin in amounts ranging from 5-25%, in products such as chocolate, jam, ice cream, etc. Example 15 demonstrates ice cream having 5% of Pinefiber C" (Ans. 3). The Examiner finds that the "teachings of W olkstein and Carey demonstrate that ice cream is well known in the art to have a fat content ranging from 16-38%" (Ans. 3). The Examiner finds that the art teaches "a ratio that overlaps with those instantly claimed" (Ans. 4). The Examiner finds that Ohkuma teaches that "dextrin acts to diminish cholesterol and neutral fats among other serum lipids ... Experimental example 7 demonstrates that sample B (comprises 75.6% indigestible component) was administered after breakfast" (Ans. 5). The Examiner finds it obvious "that the [ dextrin] product can be administered after a meal, such as the meal of Wakabayashi/Wolkstein/Carey, in order to provide benefits, such as preventing obesity and impaired glucose intolerance [sic, tolerance] and reduce neutral fats" (Ans. 5). The issue with respect to this rejection is: Does the evidence of record support the Examiner's conclusion that Wakabayashi, W olkstein, Carey, and Ohkuma render claim 1 obvious? Findings of Fact 1. Wakabayashi teaches "a method for imparting an ability of preventing obesity and impaired glucose tolerance to foods which comprises 3 Appeal2013-008367 Application 13/031,088 incorporating indigestible dextrin containing at least 30% by weight of indigestible components into a food in an amount ranging from 1 g to 30 g per meal of the food" (Wakabayashi, col. 3, 11. 37--41). 2. Wakabayashi teaches that "indigestible dextrin used in the invention shows various physiological effects such as an effect of controlling the intestinal function, an effect of improving serum lipids and an effect of inhibiting the insulin-secretion in response to sugar-intake" (Wakabayashi, col. 9, 11. 25-29). 3. Wakabayashi teaches that the "inhibitory effect of the indigestible dextrin was significant when it was used in an amount ranging from 0.065 to 1.3 g as expressed in terms of the amount of the indigestible components per 1.5 g of sugar" (Wakabayashi, col. 10, 11. 57---61). 4. Example 15 of Wakabayashi teaches an ice cream mixture as reproduced below: Componenl Raw cream Butter Condensed m1lk (sugar content 44.2%) Skim milk Sugar Indigestible dextrin of Example l Emulsion stabilizer Vanilla flavor Water Amount (parts by weight) 8.4 4.2 19.2 2.3 2.5 5 0,7 0.1 57.6 Wakabayashi teaches that these components were "mixed, heated to 80Q C. to be dissolved and homogenized. Then, the mixture was aged for 24 hours 4 Appeal2013-008367 Application 13/031,088 and rapidly cooled to -40Q C. to obtain ice cream" (Wakabayashi, col. 18, 11. 28--44). 5. In addition to ice cream, Wakabayashi teaches that dextrin may be added to pudding in Example 14, to strawberry jam in Example 16, to chocolate in Example 12, and to sponge cake in Example 11 (see Wakabayashi, col. 17, 1. 28 to col. 18, 1. 59). 6. Wolkstein teaches that "ice cream normally contains about 15- 17% sucrose and com syrup sweetener, about 10% or more butterfat and about 35% total milk solids .... Other frozen desserts normally contain from about 10 to 25% sucrose and other caloric sugar sweeteners and about 2 to 20% butterfat and milk solids" (Wolkstein, col. 2, 11. 55---63). 7. Wolkstein teaches that "[h ]igh fat content ice creams such as Haagen-Dazs, Frusen Gladje or Alpen Zauber which have about 16% fats and about 20% air and Godiva which has about 20% fat and 20% air are considered quality products characterized as rich desserts" (Wolkstein, col. 2, 1. 67 to col. 3, 1. 4). 8. Carey teaches a powdered ice cream product comprising "a ratio by weight of approximately 8-18% butterfat, 15% non-fat milk solids, 12% sugar[,] 0.3-1 % stabilizer" (Carey, col. 4, 11. 5-7; claim 1). 9. Ohkuma teaches "a dextrin which contains an indigestible component in an increased amount of at least 60%" (Ohkuma, col. 5, 11. 9- 10). 10. Ohkuma teaches that male rats were "given the same meals in same quantities, and the sample was administered after breakfast on Monday through Friday" (Ohkuma, col. 25, 11. 48-50). 5 Appeal2013-008367 Application 13/031,088 11. Ohkuma teaches that the "dextrin further acts to diminish cholesterol and neutral fats among other serum lipids, consequently preventing arterial sclerosis and hypertension .... The dextrin further has an effect to reduce the rise of blood sugar and insulin secretion after meals" (Ohkuma, col. 29, 11. 27-32). 12. Ohkuma teaches the addition of dextrin to ice cream (see Example 13, col. 38, 11. 45---67). Principles of Law "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). As noted by the Court in KSR, "[a] person of ordinary skill is also a person of ordinary creativity, not an automaton." 550 U.S. at 421. Analysis We adopt the Examiner's findings of fact and reasoning regarding the scope and content of the prior art (Ans. 3-5; FF 1-12) and agree that claim 1 is rendered obvious by Wakabayashi, Wolkstein, Carey, and Ohkuma. We address Appellants' arguments below. Appellants contend that "Wakabayashi et al do not disclose or suggest a high fat-content meal that has a fat content of 20-30% by mass, [and] do not disclose or suggest that the ratio of fat to hardly digestible components in such a meal should be controlled" (Br. 4). Appellants contend that "one seeking to control obesity as in Wakabayashi et al would not have been led to increasing the fat content in Example 15, since the fat in a food is known to contribute to obesity" (Br. 4). 6 Appeal2013-008367 Application 13/031,088 We do not find these arguments persuasive because Wakabayashi broadly teaches the addition of dextrin to any food (FF 1 ), and in particular to high calorie foods including ice cream, pudding, sponge cake, chocolate andjam (FF 5). While Wakabayashi does not exemplify foods with 20% fat, W olkstein evidences that frozen treats such as ice cream may normally contain high levels of sugar and fat (FF 6) including brands such as Godiva with 20% fat (FF 7). We agree with the Examiner that it is the combination of the cited references that renders the claims obvious (see Ans. 7). We also agree that the ordinary artisan would have been motivated by Wakabayashi to add dextrin to high fat ice creams such as Godiva (FF 7) in order to obtain the benefits identified by Wakabayashi including "controlling the intestinal function, an effect of improving serum lipids and an effect of inhibiting the insulin-secretion in response to sugar-intake" (FF 2). Obviousness is not based on increasing the fat content of Example 15, but rather in obtaining Wakabayashi's benefits of added dextrin in known ice cream compositions such as the 20% fat Godiva brand taught by Wolkstein (FF 7). While Wakabayashi is clearly interested in obesity, Wakabayashi is also interested in impaired glucose tolerance and the incorporation of dextrin into Godiva ice cream products would reasonably be expected to prevent impaired glucose tolerance (FF 2). We recognize, but find unpersuasive, Appellants' argument that the "ratio of fat to indigestible components in Example 15 of Wakabayashi et al thus is about 1:0.434 (10/4.34), which does not overlap and does not suggest the presently claimed range" (Br. 6). We also recognize, but find unpersuasive, Appellants' argument that the "Examiner has provided no 7 Appeal2013-008367 Application 13/031,088 reason why one would be motivated to change the ratio of sugar and indigestible component in Example 15" (Br. 8). As explained by the Examiner, if an ice cream, as per Example 15 of Wakabayashi, contains 5 parts(%) by weight of dextrin (FF 4) where 30% of the dextrin is indigestible fiber (FF 1 ), then the total indigestible fiber content will be 1.5% by weight (see Ans. 4). If the same 5% by weight of dextrin is added to Godiva brand ice cream with 20% fat as taught by Wolkstein (FF 7), "the ratio of fats to indigestible dextrin is 1:.075 [i.e., 20%: 1.5%], thus demonstrating that the art teaches ratios that overlap with those instantly claimed" (Ans. 4). Moreover, Wakabayashi teaches that the amount of indigestible dextrin may vary from 1 to 30 g in the food product (FF 1) with a varying range of indigestible dextrin (FF 3) while Wolkstein teaches that the amount of fat in ice cream and frozen desserts may vary from 2 to 20% (FF 6). Thus, the evidence suggests that the dextrin and fat amounts in frozen desserts are routinely optimizable variables. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456 (CCPA 1955). Appellants do not identify any secondary considerations or unexpected results regarding the amount of dextrin used in the food product. Conclusion of Law The evidence of record supports the Examiner's conclusion that Wakabayashi, Wolkstein, Carey, and Ohkuma render claim 1 obvious. 8 Appeal2013-008367 Application 13/031,088 SUMMARY In summary, we affirm the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious over Wakabayashi, Wolkstein, Carey, and Ohkuma. Claims 2 and 3 fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 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 9 Copy with citationCopy as parenthetical citation