Bhagat, Urvashi

Patent Trials and Appeals Board

Oct 7, 2020

13877847 - (R) (P.T.A.B. Oct. 7, 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.
13/877,847 04/04/2013 Urvashi Bhagat 4620
111481 7590 10/07/2020
Asha Nutrition Sciences, Inc.
P.O. Box 1000
Palo Alto, CA 94302
EXAMINER
BHAT, NINA NMN
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
10/07/2020 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 URVASHI BHAGAT
Appeal 2019-005232
Application 13/877,847
Technology Center 3600

Before ROMULO H. DELMENDO, JEFFREY T. SMITH, and
JAMES T. MOORE, Administrative Patent Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
The Appellant’s1 Request for Rehearing filed June 29, 2020
(“Request” or “Req. Reh’g”) is now before us following the Decisions on
Petitions entered August 17, 2020 and April 14, 2020, which were
responsive to the Appellant’s Petitions Under 37 C.F.R. §§ 41.3 and 1.181
filed April 28, 2020, March 10, 2020, and March 5, 2020. The Appellant
requests rehearing of our Decision on Appeal entered February 20, 2020
(“original Decision” or “Dec.”), in which we affirmed the Primary
Examiner’s final decision to reject claims 82–89, 91–104, 107–110, and

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies “Asha Nutrition Sciences, Inc.”
as the real party in interest (Appeal Brief filed February 11, 2019, as revised
March 6, 2019 (“Appeal Br.”) at 3).
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113–120 (Req. Reh’g 1–24).2 Specifically, in our original Decision, we
reversed Rejection A,3 which the Appellant does not contest in this Request,
summarily affirmed Rejections B4 and C,5 and affirmed Rejection D6 on the
merits (Dec. 3–16).
Because the Appellant’s arguments in the Request fail to establish that
we misapprehended or overlooked any point in our original Decision, as
discussed further below, we decline to modify our original Decision in any
substantive respect for the reasons given in our original Decision and below.
37 C.F.R. § 41.52(a) (2018).

2 The caption for the Appellant’s Request refers to both 37 C.F.R. §§ 41.52
and 42.71. The provisions of 37 C.F.R. § 42.71, however, are inapplicable
to ex parte appeals as § 42.71 is from Part 42, which relates generally to the
Board’s trial practice and specifically to decisions on petitions and motions
in trials. Therefore, we decline to address any argument based on Part 42 or
37 C.F.R. § 42.71.
3 Rejection A: Claims 82 and 89 were rejected under pre-AIA 35 U.S.C.
§ 112, ¶ 1, as failing to comply with the written description requirement
(Ans. 3–5; Final Act. 3–4).
4 Rejection B: Claims 82, 87, 91–93, 96, 97, 99–102, 109, 110, and 113–
120 were rejected under 35 U.S.C. § 112, ¶ 2, as indefinite (Ans. 5; Final
Act. 4–10). In our original Decision (Dec. 3), we inadvertently omitted
claims 115–120, which the Examiner listed separately as rejected (Final Act.
4).
5 Rejection C: Claims 88, 89, 95, 103, and 107–110 were rejected under 35
U.S.C. § 112, ¶ 4, as being in improper dependent form for failing to further
limit the subject matter of the claims from which they depend or failing to
include all the limitations of the claims upon which they depend (Ans. 5–6;
Final Act. 10–11).
6 Rejection D: Claims 82–89, 91–104, 107–110, and 113–120 under 35
U.S.C. § 103(a) as unpatentable over Morris (US 2008/0213239 A1,
published September 4, 2008) in view of Anthony et al. (US 2007/0166411
A1, published July 19, 2007; “Anthony”).
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As a preliminary matter, the Appellant contends that “there were
procedural violations in affirming Rejections B, C, and D” (Req. Reh’g 1).
To the extent that the arguments in support of this contention relate to
petitionable matters, we refer to the Decisions on Petitions entered August
17, 2020 and April 14, 2020, which are binding on this panel.
Turning to the substantive merits of this appeal, the Appellant asserts
that “almost all of the arguments and 100% of the evidence submitted with
respect to Rejection D were overlooked” (Req. Reh’g 1). According to the
Appellant, “the Decision is based on an erroneous interpretation of law and
clear errors, and the decision represents an unreasonable judgment in
weighing relevant facts and factors” (id.). The Appellant’s assertions are
incorrect. As required, we reviewed each of the rejections, including
Rejection D, for reversible error based upon the issues identified in the
Appeal Brief and “in light of the arguments and [any] evidence produced
thereon” (see Dec. 3–15). In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Citing 37 C.F.R. § 42.71 and two inter partes review decisions, the
Appellant argues that an abuse of discretion standard applies in this appeal
(Req. Reh’g 2). As we indicated above, the matter before us is an ex parte
appeal—not an inter partes review or trial. Neither 37 C.F.R. § 42.71 nor
the two inter partes review decisions have any binding bearing on our
decision, either in the first instance or on rehearing.
With respect to Rejections B and C, which were summarily upheld
(Dec. 6–7), the Appellant argues that we erred because: (1) the Appellant
listed the rejections in the “GROUNDS OF APPEAL” section and stated
that “the rejection[s] should be reversed” (Appeal Br. 8); (2) in the
“ARGUMENT” section, the Appellant stated that it was “not conceding to
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the merits of the rejection[s]” (id. at 10–11); and (3) in the Reply Brief, the
Appellant asserted that “[we] should reverse the rejections based upon
arguments (such as submitted on June 15, 2018) and evidence of record
(such as Examiner’s admissions) . . .” as determination of patentability is
based upon the entire record (Req. Reh’g 3–4 (citing In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992)). According to the Appellant, we overlooked
good cause or special circumstances showing the Appellant’s “diligence,”
resulting in “a grave procedural violation,” and that we misapprehended case
law (Req. Reh’g 4–7).
We refer to the two Decisions on Petitions, which fully address the
Appellant’s arguments in connection with our summary affirmance of
Rejections C and D (Decision on Petition entered August 17, 2020 at 8–14;
Decision on Petition entered April 14, 2020 at 8–10). As explained in the
August 17, 2020 Petition Decision at pages 13–14, the mere filing of an
appeal does not, by itself, entitle an appellant to a de novo review of all
aspects of the rejection, and the Appellant’s contrary reading of legal
precedents, such as Oetiker, constitutes a misunderstanding of the law as
applicable to the Board’s review on appeal of an examiner’s rejection. Ex
parte Frye, 94 USPQ2d 1072, 1075–76 (BPAI 2010) (precedential) (cited
with approval in Jung, 637 F.3d at 1365–66 (explaining that although the
examiner retains the burden to show unpatentability and the Board’s review
is made de novo, the Board’s review is based upon the applicant’s
identification of what the examiner did wrong—i.e., “the issues identified by
[the] appellant, and in light of the arguments and evidence produced
thereon”)).
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Additionally with respect to Rejection D, the Appellant contends that
the Reply Brief referred to arguments made in the Appeal Brief and in the
Appellant’s Replies filed January 11, 2018, and June 15, 2018 (Req. Reh’g
7). This position is without persuasive merit. First, we considered all
arguments raised in the Appeal Brief (Dec. 7–15). Second, to the extent that
the Appellant’s Replies filed January 11, 2018, and June 15, 2018 in
response to the Examiner’s Actions contain additional arguments, the
belated attempt in the Reply Brief to “backdoor” these arguments into the
previously-filed Appeal Brief is improper. Jung, 637 F.3d at 1365–66; Frye,
94 USPQ2d at 1075–76. See also 37 C.F.R. §§ 41.37(c)(1)(iv) and
41.41(b)(2).
As in Rejections B and C, the Appellant appears to be arguing that
cases such as Oetiker stand for the proposition that the patentability
determination for Rejection D must be based on the entire record, and that,
therefore, all arguments and evidence made throughout prosecution—even if
not included in the Appeal Brief—must be considered in a Board’s decision
(Req. Reh’g 7). Again, the Appellant’s position lacks persuasive merit. If
the Appellant’s logic is followed, an appeal brief outlining the issues for
review would not be required at all. But that is not the case, as an appeal
brief serves the important function of defining the Board’s de novo review
(e.g., without deference to the Examiner’s factual findings) and identifying
what the Examiner did wrong. See 37 C.F.R. § 41.37(a) (“Appellant must
file a brief under this section . . .”) (emphasis added); 37 C.F.R. § 41.37
(c)(1)(iv) (“The arguments shall explain why the examiner erred as to each
ground of rejection contested by appellant. Except as provided for in
§§ 41.41, 41.47 and 41.52, any arguments or authorities not included in the
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appeal brief will be refused consideration by the Board for purposes of the
present appeal.”). See also Jung, 637 F.3d at 1365–66; Frye, 94 USPQ2d at
1075–76.
The Appellant argues that we overlooked certain issues because they
were not listed in “The Appellant’s Contentions” section of our Decision
(Dec. 9). For example, the Appellant contends that the “[p]rior art as a
whole leads away from the claimed inventions” because, e.g., Lands 2005
restricts omega-6 dosages to less than 1 g/day (Req. Reh’g 8 (referring to
Appeal Br. 13)). We focused, however, on the dispositive issues based on
the Appellant’s arguments. The relevant question is not whether the claimed
subject matter would have been obvious to a person having ordinary skill in
the art in view of Lands 2005 (or some other document not applied in the
rejection) as teaching away from the claimed invention, but whether the
claimed subject matter would have been obvious over the combined
teachings of Morris and Anthony.
For example, we discussed dosages extensively in our Decision (Dec.
11–12). Although non-applied prior art references such as Lands 2005 are
pertinent in that they fall within the general field of endeavor, they are far
less relevant for purposes of assessing obviousness than Morris, which is the
closest prior art and directly contradicts the Appellant’s position based on
the non-applied prior art references. Yorkey v. Diab, 601 F.3d 1279, 1284
(Fed. Cir. 2010) (The Board has discretion to give more weight to one item
of evidence over another “unless no reasonable trier of fact could have done
so.”); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir.
2004) (“The Board has broad discretion as to the weight to give to
[evidence] offered in the course of prosecution.”).
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Similarly, the Appellant contends that we did not address the
argument that Morris teaches omega-6 and omega-3 fatty acids are
interchangeable (Req. Reh’g 8). We pointed out, however, that claim 82
does not require omega-3 fatty acids and discussed Morris’s teachings
relative to claim 82’s subject matter (Dec. 10–13).
Additionally, the Appellant contends that we did not address the
argument that the problem to be solved by Morris or Anthony is different
from that disclosed for the claimed subject matter (Req. Reh’g 8). But see
Dec. 13–14. KSR Int’l Co. Teleflex Inc., 550 U.S. 398, 420 (2007) (“The
first error of the Court of Appeals in this case was to foreclose [an
obviousness] reasoning by holding that . . . patent examiners should look
only to the problem the patentee was trying to solve.”). “Under the correct
analysis, any need or problem known in the field of endeavor at the time of
invention and addressed by the [prior art] can provide a reason for
combining the elements in the manner claimed.” Id. See also In re Kemps,
97 F.3d 1427, 1430 (Fed. Cir. 1996) (the motivation or reason in the prior art
need not be the same as that of the inventor).
The remaining issues listed in the Request (Req. Reh’g 8–10) are also
inapt as they are not germane to the Examiner’s rejection and our Decision
sustaining it. For example, the Appellant points out what certain dependent
claims recite (Req. Reh’g 10). But see Dec. 7.
The Appellant argues that “Morris identifies close to 500 antioxidants
over 24 paragraphs . . . and yet leaves the list open-ended” and, therefore,
we overlooked that Morris recites a “long incomplete and infinite list of
antioxidants” (Req. Reh’g 13–14; see also id. at 14–15). We did not
overlook Morris’s teachings. Morris provides a finite list of identified
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antioxidants—one of which is a polyphenol antioxidant (Morris ¶ 128), as
we discussed in our Decision at pages 10–11. See also In re Corkill, 771
F.2d 1496, 1500 (Fed. Cir. 1985) (finding an argument based on the notion
that the prior art taught “an infinite number of zeolites are possible” to be
unpersuasive because the prior art suggested that “hydrated zeolites will
work” in detergent formulations).
The Appellant argues that the dosages recited in claim 82 are the same
as the relative amounts for each component recited in the claim (Req. Reh’g
15–16; see also id. 17–18). That argument is unpersuasive for the reasons
given in our Decision (Dec. 11–12). Claim 82 does not specify the relative
amounts for each of the formulations (or ingredients) that make up the
packaged product but rather a label (presumably a piece of paper with
printed matter) that indicates “suitability for consumption that collectively
provide a dosage” for various ingredients (Appeal Br. 20).
The Appellant argues that we misapprehended In re Ngai, 367 F.3d
1336, 1337–38 (Fed. Cir. 2004), arguing that the Ngai issue was raised in the
Appeal Brief at pages 11–12 (Req. Reh’g 16–17). The Appeal Brief at
pages 11–12 does not address Ngai, which was cited in the Final Action
(Final Act. 20), let alone address why a functional relationship between the
printed matter and the substrate exists. In any event, we did not
misapprehend Ngai for the reasons discussed in our Decision (Dec. 8, 11–
12).
The Appellant expresses a disagreement with our Decision, arguing
that it is inconsistent with binding precedent such as KSR, 550 U.S. 416
(Req. Reh’g 18–20). Mere disagreement with our Decision that the
Appellant failed to identify reversible error in the obviousness conclusion
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9
based on Morris and Anthony is insufficient to establish that we overlooked
or misapprehended any point.
The Appellant argues that objective evidence in the form of peer-
reviewed papers and nutritional policy (e.g., Land 2005 restricting dosages
of omega-6 fatty acids) provides validation from persons skilled in the art
establishing nonobviousness (based on long-felt need) and that we
overlooked such evidence (Req. Reh’g 21–22). We did not overlook such
evidence, as it does not outweigh the strong evidence in support of
obviousness based on Morris and Anthony. Yorkey, 601 F.3d at 1284; Am.
Acad. of Sci. Tech Ctr., 367 F.3d at 1368.
Moreover, as we discussed in our original Decision (Dec. 14),
nonobviousness based on long-felt need requires a showing that both a
demand existed and that others tried but failed to satisfy that demand.7
Merely referring to other less pertinent documents, while ignoring the
breadth of the claims and the scope and content of the applied prior art
teachings, fails to satisfy a showing of a demand and that others tried but
failed to satisfy that demand.
The Appellant argues that in pointing out that claim 82 does not
require the presence of omega-3 fatty acids, we overlooked claims 92, 107,
and 113, which do require such acids (Req. Reh’g 22). The Appellant,
however, overlooks our finding (Dec. 8) as well as the Examiner’s
determinations (Ans. 7–8; Final Act. 14 (citing Anthony ¶ 27)) that Morris
would have suggested the combination of ingredients and that Anthony

7 See In re Cyclobenzaprine Hydrochloride Extended-Release Capsule
Patent Litig., 676 F.3d 1063, 1082–83 (Fed. Cir. 2012).
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teaches a ratio of omega-6 fatty acids to DHA omega-3 fatty acid ratio of
about 6:1 or less (Req. Reh’g 22).
Notwithstanding the Appellant’s argument (Req. Reh’g 22–23) that it
is the Examiner’s burden to establish a prima facie case of obviousness, the
allocation of the procedural burdens during the examination process (35
U.S.C. § 132) does not excuse the Appellant from identifying reversible
error in the Examiner’s rejection in the appeal process. Jung, 637 F.3d at
1365–66; Frye, 94 USPQ2d at 1075–76. 37 C.F.R. §§ 41.37(c)(1)(iv) and
41.41(b)(2).
To the extent that the Examiner’s rejections were “so uninformative
that they prevent[ed] the Appellant from recognizing and seeking to counter
the grounds [of] rejection” (Req. Reh’g 23), which does not appear to be the
case, the Appellant should have filed a timely petition pursuant to 37 C.F.R.
§ 1.181 requesting supervisory intervention to compel the Examiner’s
compliance with 37 C.F.R. § 1.104.8 See Jung, 637 F.3d at 1364
(“[C]oncerns only arise where the examiner has failed to meet the notice
requirement of § 132. Here, as discussed above, Jung was on notice of the
full basis for the examiner’s rejection.”).
Finally, we note the Appellant’s reference to Exhibits A–C, which are
said to be “pleadings in the Applicant’s prior-filed application US
12/426,034 to the United States Supreme Court” (Req. Reh’g 24). But the
relevance of such pleadings to the current appeal is not readily apparent.
Therefore, we do not address them. Cf. In re Borkowski, 505 F.2d 713, 718
(CCPA 1974).

8 See Petition Decision entered August 17, 2020 at 11.
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For these reasons, we do not modify our original Decision in any
substantive respect.

OUTCOME OF DECISION ON REHEARING
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Denied Granted
82, 87, 91–93,
96, 97, 99–102,
109, 110, 113–
120
112,
second
paragraph
Indefiniteness 82, 87, 91–93,
96, 97, 99–
102, 109, 110,
113–120

88, 89, 95, 103,
107–110
112, fourth
paragraph
Improper
Dependency
88, 89, 95,
103, 107–110

82–89, 91–104,
107–110, 113–
120
103(a) Morris, Anthony 82–89, 91–
104, 107–110,
113–120

Overall
Outcome
82–89, 91–
104, 107–110,
113–120

FINAL OUTCOME OF APPEAL AFTER REHEARING
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
82, 89 112, first
paragraph
Written Description 82, 89
82, 87, 91–93,
96, 97, 99–102,
109, 110, 113–
120
112,
second
paragraph
Indefiniteness 82, 87, 91–93,
96, 97, 99–
102, 109, 110,
113–120

88, 89, 95, 103,
107–110
112, fourth
paragraph
Improper
Dependency
88, 89, 95,
103, 107–110

82–89, 91–104,
107–110, 113–
120
103(a) Morris, Anthony 82–89, 91–
104, 107–110,
113–120

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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Overall
Outcome
82–89, 91–
104, 107–110,
113–120

DENIED