David Rutenberg et al.

Patent Trials and Appeals Board

Jul 25, 2019

15230494 - (D) (P.T.A.B. Jul. 25, 2019)

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.
15/230,494 08/08/2016 David Rutenberg 50508-6-05-CIP 9002
89602 7590 07/25/2019
FlashPoint IP Ltd.
Rehov Rabban Gamliel 2
Elad, 4083201
ISRAEL
EXAMINER
SOROUSH, LAYLA
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
07/25/2019 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):
FPIP-USPTO@FlashPointIP.com
ydm@FlashPointIP.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte DAVID RUTENBERG and ILAN PERRY1
__________

Appeal 2019-002195
Application 15/230,494
Technology Center 1600
__________

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making phospholipid-enriched dairy products, which have been rejected
as obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
“Phospholipids . . . have been used extensively in pharmaceutical
compositions, nutritional compounds, and functional foods.” Spec. 1:19–21.
The Specification states that “the importance of phosphatidylserine (PS) as a

1 Appellants identify the Real Party in Interest as Lipogen Ltd. Appeal Br. 3.
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functional ingredient is supported by the US FDA’s qualified health claims
in which the usage of phosphatidylserine was related to the reduction of
cognitive dysfunction and dementia in the elderly.” Id. at 1:21–24. The
Specification describes “enzymatically-processed lecithin” as being
a PS-calcium and/or -magnesium salt . . . produced via
transphosphatidylation with lecithin and phospholipase D in the
presence of L-serine and a calcium and/or magnesium salt . . . ,
which involves the exchange of the choline group in
phosphatidylcholine for serine using phospholipase D as the
active enzyme for the PS-production reaction to occur.
Id. at 10:11–16.
Claims 1–13 are on appeal. Claim 1 is the only independent claim and
reads as follows (formatting added to step (a)):
1. A process for the preparation of phospholipid-enriched (PL-
enriched) dairy products as nutraceuticals for the formulation of functional
foods, the process comprising the steps of:
(a) combining
a non-dairy-based PL-containing material, having
phosphatidylserine (PS) in said PL-containing material, wherein
said PS is derived in part from an enzymatically-processed
lecithin as a PS-calcium and/or -magnesium salt via
transphosphatidylation with phospholipase D in the presence of
L-serine and a calcium and/or magnesium salt, with
water and
an oil component to form a paste;
(b) removing an excess amount of said water from said paste to
form a PL-oil solution having a residual amount of said water;
and
(c) mixing said PL-oil solution with a dairy component, thereby
obtaining a PL-enriched dairy product.

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The claims stand rejected as follows:
Claims 1–13 under 35 U.S.C. § 103(a) as obvious based on
Rutenberg2 and Szuhaj3 (Ans. 4) and
Claims 1–13 for obviousness-type double patenting based on claims
1–6 of Rutenberg (Ans. 7).
I
The Examiner has rejected all of the claims on appeal as obvious
based on Rutenberg and Szuhaj. The Examiner finds that Rutenberg teaches
that
lecithin (namely, phosphatidylcholine) selected from soy bean
lecithin, rapeseed lecithin and egg yolk lecithin is subjected to
the process of transphosphatidylation and hydrolysis with
phospholipase-D in the presence of L-serine and water, thereby
substituting the choline group with the serine group . . . , to
produce the rearranged phosphatidyl-L-serine . . . .
Ans. 4. The Examiner finds that Rutenberg suggests that the PS product can
be blended into foods and beverages, but does not teach combining it with a
dairy component as required by all the claims on appeal. Id. at 5.
The Examiner finds that Szuhaj teaches that lecithin is used as an
ingredient in, among other things, cheese products and dairy products. Id.
The Examiner concludes that it would have been obvious
to combine the phospholipid with a diary component. The
motivation comes from the teaching of Szuhaj that lecithin
containing the claimed phospholipids are useful as an
ingredient in . . . cheese products, . . . [and] dairy and imitation
dairy products, and dietary supplements; and further by

2 Rutenberg, US 6,410,522 B1, issued June 25, 2002.
3 B.F. Szuhaj, Lecithin Production and Utilization, 60 JAOCS 306 (1983).
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Ru[t]enberg that the phospholipid containing composition
alleviates symptoms associated with depression and mental and
emotional stress [and] may be blended into daily foods and
beverages.
Id.
Appellants argue, among other things, that “the instant invention
provides a novel and non-obvious process in which, inter alia, the removal
of an excess amount of water [] from the paste to form the PL-oil solution
having a residual amount of water (as recited in Step (b) of claim 1) is an
essential aspect of the instant invention.” Appeal Br. 16. See also Reply
Br. 5 (“These aspects (as cited in the Opening Brief), which form in part the
basis of the instant invention, have been given short shrift by the Examiner
when considering the relevance of the cited art.”).
Appellants argue that certain dependent claims add further limitations
to the PL-oil solution resulting from step (b) of the claimed method. Appeal
Br. 16. Finally, Appellants point out that the Specification states that the
basis of the effect of the residual water in the PL-oil solution “on the
solubility of enzymatically-produced PS . . . in the PL-oil solution, and
ultimately the PL-enriched dairy product” is unknown, but “it may be that
such residual water in the PL-oil solution mitigates the hydrophilic/
hydrophobic properties of the enzymatically-produced PS . . . when
combined with the water-based dairy component” and “mitigation of the
hydrophilic/hydrophobic properties of the enzymatically-produced PS . . .
containing a residual water component is likely the cause for the solubility,
and hence the resulting, stable final product.” Id. at 16–17 (quoting Spec.
14:9–20).
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We agree with Appellants that the Examiner has not shown that a
process meeting the limitations of claim 1, including “removing an excess
amount of said water from said paste to form a PL-oil solution,” as recited in
step (b), would have been obvious based on Rutenberg and Szuhaj.
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011). “The test for obviousness is what the combined teachings of the
references would have suggested to one of ordinary skill in the art,” In re
Young, 927 F.2d 588, 591 (Fed. Cir. 1991); i.e., “whether the teachings of
the prior art, taken as a whole, would have made obvious the claimed
invention.” In re Gorman, 933 F.2d 982, 986 (Fed. Cir. 1991).
Rutenberg discloses that “a complex of phosphatidyl-L-serine and
phosphatidic acid produced by an enzymatic conversion utilizing
phospholipase-D of at least one raw material lecithin” has antidepressant
effects. Rutenberg 2:11–18. Rutenberg states that “lecithin (namely,
phosphatidylcholine) . . . is subjected to the process of
transphosphatidylation and hydrolysis with phospholipase-D in the presence
of L-serine and water, thereby substituting the choline group with the serine
group” to produce phosphatidylserine. Id. at 2:40–46.
Rutenberg’s Example 1-1 states that soybean lecithin, soybean oil,
ethyl acetate, L-serine (in sodium phosphate buffer), and phospholipase-D
were combined and allowed to react. Id. at 3:1–9. The reaction solution was
heated to inactivate the enzyme, then cooled to separate the solution into two
layers; the “lower layer was extracted in chloroform, which was then dried.”
Id. at 3:10–16. Rutenberg discloses that a product prepared as in Example
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1-1 was administered to “[f]ive volunteers with depression symptoms . . .
[at] 200 mg. three times per day.” Id. at 3:45–50.
Rutenberg does not describe a method of preparing a product that
involves removing excess water from a paste to form a phospholipid-oil
(PL-oil), as recited in claim 1. The only teaching in Szuhaj that the Examiner
points to is its disclosure that lecithin is used as an ingredient in cheese
products and dairy products, among other things. Ans. 5. We have reviewed
Szuhaj but do not find a description of removing excess water from a
PL-containing paste to form a PL-oil.
Thus, regardless of whether Rutenberg’s product meets the limitations
of the one recited in step (a) of the claims on appeal, we agree with
Appellants that the Examiner has not shown that a process meeting all of the
limitations of the claims would have been obvious to a person of ordinary
skill in the art based on the teachings of Rutenberg and Szuhaj. We therefore
reverse the rejection of claims 1–13 under 35 U.S.C. § 103(a).
II
The Examiner has rejected all of the claims on appeal for
obviousness-type double patenting, on the basis that they are not patentably
distinct from claims 1–6 of Rutenberg. The Examiner reasons that Rutenberg
claims “a pharmaceutical or nutritional composition for treating depression
. . . comprising Phosphatidyl-L-serine,” while “the claims herein are drawn
to a nutraceutical and/or pharmaceutical preparation of phospholipid-
enriched (PL-enriched) dairy products as nutraceuticals for the formulation
of functional foods, the process comprising the steps of . . . .” Ans. 7–8.
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Appellants argue that “Claims 1–6 of Rutenberg ’522 relate to
pharmaceutical or nutritional compositions for treating depression” while
“[t]he instant invention . . . provides novel and nonobvious processes to
obtain . . . enriched dairy formulations.” Appeal Br. 17. Appellants conclude
that “the claims of the instant invention . . . are considered to be patentably
distinct from claims 1–6 of Rutenberg ’522.” Id. at 18.
We agree with Appellants that the Examiner has not persuasively
shown that the instant claims are an obvious variant of those of Rutenberg.
As Appellants have pointed out, Rutenberg’s claims are directed to a
product, while the instant claims are directed to a method. The Examiner has
not explained why the product claimed by Rutenberg would have made
obvious a method comprising the steps (a), (b), and (c) of claim 1,
particularly since, as discussed above, Rutenberg neither claims nor
discloses a method that includes step (b) of the instantly claimed method.
We therefore reverse the rejection of claims 1–13 for obviousness-
type double patenting based on claims 1–6 of Rutenberg.
SUMMARY
We reverse both of the rejections on appeal.

REVERSED