Ex Parte Trudsoe

Patent Trial and Appeal Board

Mar 22, 2013

11767617 (P.T.A.B. Mar. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/767,617 06/25/2007 Jens Eskil Trudsoe 06-517 (29776-0025) 1693
62488 7590 03/22/2013
CP Kelco US, INC
c/o Pete Pappas, Sutherland, Asbill & Brennan LLP
999 Peachtree Street, NE
SUITE 2300
ATLANTA, GA 30309-3996
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/22/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL
BOARD
____________

Ex parte JENS ESKIL TRUDSOE
____________

Appeal 2012-001762
Application 11/767,617
Technology Center 1700
___________

Before HUBERT C. LORIN, KAREN M. HASTINGS, and
DEBORAH KATZ, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-001762
Application 11/767,617

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Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1-13, 15-19, 22, and 24-32. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is representative of the claimed subject matter:
1. A process for producing a carrageenan composition,
comprising the steps of:
cleaning an iota carrageenan-containing seaweed in
water;
treating the cleaned seaweed with an aqueous treatment
solution at a temperature ranging from about 5 °C to about
35 °C, the aqueous treatment solution comprising a treatment
compound at a concentration of about 10 - 25 wt%, wherein the
treatment compound comprises sodium cations and excludes
calcium, potassium, and magnesium cations;
subjecting the treated seaweed to washing with water;
and
processing the washed seaweed to produce the
carrageenan composition.
Independent claims 19 and 29 encompass a method similar to claim 1,
further comprising a second treatment step (see Claims Appendix).
Claims 1-13, 15-19, 22, and 24-32 are rejected under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement.
Claims 1-13, 15, 19, 22, and 24, 27-30 and 32 are rejected under
35 U.S.C. § 103 as unpatentable over the combined prior art of Therkelsen1
and Bost2.

1 US 2005/0020828 A1 published Jan. 27, 2005.
2 US 2002/0098553 A1 published July 25, 2002.
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Claims 16-18, 25, 26, and 31 are rejected under 35 U.S.C. § 103 as
unpatentable over the combined prior art of Therkelsen, Bost, and Larsen3.
The claims were also provisionally rejected on the grounds of non-
statutory obviousness-type double patenting over various previously co-
pending applications4, all of which are now abandoned. Accordingly, these
provisional rejections are moot.
ANALYSIS
The § 112 Rejection
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s Specification must “‘convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.’” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
After review of the respective positions provided by Appellant and the
Examiner, we find that a preponderance of the evidence supports
Appellant’s position that the original disclosure provides support for the
phrase “and excludes calcium, potassium, and magnesium cations” as recited
in each independent claim (App. Br. 8-10; Spec. paras. [0040], [0047]). As
Appellant explains, the Specification describes that the alkali treatment
solution supplies cations that prevent the diffusion of potassium, calcium
and magnesium ions into the carrageenan, such that one of ordinary skill

3 US 5,502,179 issued Mar. 26, 1996.
4 Application Nos. 11/767,693, 11/767,729, and 11/767,676 (see Ans. 13-
15, 24) are all abandoned.
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Application 11/767,617

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would “immediately recognize that the treatment solution should necessarily
be devoid of those particular cations” (Reply Br. 5).
Accordingly, we reverse the Examiner’s § 112 rejection on appeal.

The § 103 Rejection
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer, including the Response to Argument
section, and we add the following primarily for emphasis.
It is well established that “the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”). KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). “For obviousness under § 103, all that is
required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d
894, 904 (Fed. Cir. 1988).
Appellant’s arguments that the prior art does not teach or suggest the
claimed invention, in part because Therkelsen teaches away from the recited
temperature range of 5 to about 35 °C because it teaches that the temperature
should be in the range of 45 to 85 °C when using sodium hydroxide as the
alkali (App. Br. 3-4; Reply Br. 1-3), are unavailing since they fail to
consider the prior art as a whole (see, e.g., Ans. 17, 18). As pointed out by
the Examiner, claim 1 does not require the use of sodium hydroxide, and
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Therkelsen also teaches that its treatment is usually for three hours and may
be in the range of 20 to 95 °C (id. at 17). The law is replete with cases in
which the difference between the claimed invention and the prior art is some
range or other variable within the claims. It is well settled that, generally
speaking, it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for result-effective parameters.
In re Woodruff, 919 F.2d 1575, 1577 (Fed. Cir. 1990); In re Boesch, 617
F.2d 272, 276 (CCPA 1980). These cases have consistently held that the
Appellants must show that the particular range is critical, generally by
showing that the claimed range achieves unexpected results relative to the
prior art range. Woodruff, 919 F.2d at 1578. Appellant has not provided any
credible evidence or persuasive technical reasoning to refute the Examiner’s
reasonable determination that temperature and time are known result
effective variables for a chemical treatment to produce a carrageenan, and
accordingly the claims encompass Therkelsen’s process for producing a
carrageenan composition as modified by Bost (e.g., Ans. 10-12, 18, 21, 22;
generally App. Br.; Reply Br.).
Appellant has also not adduced any persuasive technical reasoning or
evidence in response to the Examiner’s reasonable determination that the
process described in Therkelsen would encompass multiple treatment steps
as recited in independent claims 19 and 29 (see, e.g., Ans. 7, 20; generally
App. Br.; Reply Br). In any event, it is well established that ordinary
creativity is presumed on the part of one of ordinary skill in the art. KSR,
550 U.S. at 421 (“[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.”). To repeat a known treatment step as
encompassed in these claims would have been using no more than ordinary
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creativity to enhance the treatment and prima facie obvious to one of
ordinary skill in the art.
The preponderance of the evidence supports the Examiner’s § 103
rejections on appeal; thus, we sustain the § 103 rejections of all the claims
on appeal.

DECISION
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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