DSM IP Assets B.V.

Patent Trials and Appeals Board

Nov 25, 2020

2019006943 (P.T.A.B. Nov. 25, 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.
14/303,553 06/12/2014 Antonietta GLEDHILL 24829-US-CNT 1998
109143 7590 11/25/2020
DSM North America Inc.
Patent Department
6480 Dobbin Road
Columbia, MD 21045
EXAMINER
COX, AMBER M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/25/2020 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):
dsm_PAIR@firsttofile.com
dsmna.ip@dsm.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTONIETTA GLEDHILL and NEIL MACFARLANE

Appeal 2019-006943
Application 14/303,553
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
MONTÉ T. SQUIRE, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–6, 11–14, and 17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as DSM IP
Assets B.V. Appeal Br. 3.
Appeal 2019-006943
Application 14/303,553
2
Appellant’s invention is directed to a method of rejuvenating an aged
oil rich in polyunsaturated fatty acids having a fishy odor by adding ascorbyl
palmitate to the aged oil (Spec. 2: 13–15; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A method of rejuvenating an oil containing
polyunsaturated fatty acids (PUFAs), or a composition
containing said oil, wherein the oil has been previously
stabilized by the addition of at least one tocopherol or
tocotrienol and at least one antioxidant or deodorant, and
wherein the oil or composition shows signs of deterioration as a
whole or of some of their components on their sensory quality,
wherein said method of rejuvenating consists essentially of the
addition of ascorbyl palmitate to the oil or composition when a
decrease of the sensory quality of the oil or composition has
been determined and which method confers to the oil or
composition the sensory quality of an oil containing PUFAs or
composition containing a PUFA-containing oil which has been
freshly prepared or is stored for only a short time.

Appellant appeals the following rejections:
1. Claims 1–3, 6, 11, 12, and 17 are rejected under 35 U.S.C. § 103
as unpatentable over Rubin (US 5,006,281; Apr. 9, 1991) as
evidenced by Chang (US 4,101,673; July 18, 1978).
2. Claims 4, 5, and 13 are rejected under 35 U.S.C. § 103 as
unpatentable over Rubin as evidenced by Chang in view of
Shimatani (JP 05-140584 A; June 8, 1993).
3. Claims 4, 5, and 14 are rejected under 35 U.S.C. § 103 as
unpatentable over Rubin as evidenced by Chang in view of
Heise (US 2006/0110521 A1; May 25, 2006).
Appellant’s arguments focus on the subject matter of claim 1 only
(Appeal Br. 4–5). Appellant’s arguments regarding rejections (2) and (3)
Appeal 2019-006943
Application 14/303,553
3
amount to an argument that Shimatani or Heise fails to cure the deficiencies
argued regarding Rubin and Chang (Appeal Br. 5–6). Accordingly, claims
2–6, 11–14, and 17 will stand or fall with our analysis of the rejection of
claim 1 over Rubin and Chang.
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding the § 103
rejection of claim 1 over Rubin as evidenced by Chang are located on pages
3 to 7 of the Non-Final Action, which a preponderance of the evidence
supports.
Appellant argues that Rubin fails to teach using ascorbyl palmitate to
rejuvenate an oil that shows signs of deterioration in its sensory quality
(Appeal Br. 4). Appellant contends that Rubin uses thiodipropionic acid or
an ester thereof to rejuvenate the rancid oil and the antioxidant is added to
avoid degradation of the oil, not to remove the peroxides and epoxides that
cause the rancid smell and taste (Appeal Br. 4). Appellant contends that
Rubin’s process contrasts with the present claims where ascorbyl palmitate
is used to rejuvenate the oil (Appeal Br. 4). Appellant argues that Rubin’s
teaching that “the mere addition of antioxidants to oils according to known
methods is insufficient for the production of an odorless oil from [a] highly
unstable marine animal oil,” teaches away from merely adding ascorbyl
palmitate to the rancid oil (Appeal Br. 5).
Claim 1 recites, in relevant part, that the rejuvenating method
“consists essentially of the addition of ascorbyl palmitate to the oil.” The
transitional phrase consists essentially of limits the recited steps to those
recited in the claim but does not exclude any additional step that does not
materially affect the basic and novel characteristics of the claimed invention.
Appeal 2019-006943
Application 14/303,553
4
In re Janakirama, 317 F.2d 951, 954 (CCPA 1963). See also, PPG
Industries v. Guardian Industries Corp., 156 F.3d 1351, 1354 (Fed. Cir.
1998). Appellant has the burden of establishing the basic and novel
characteristics of the claimed invention. In re De Lajarate, 337 F.2d 870,
874 (CCPA 1964).
In the present case, claim 1’s use of “consists essentially of”
transitional language does not exclude Rubin’s two-step process that
includes a first step of using thiodipropionic acid to remove hydroperoxides
and epoxides and a second step of adding antioxidants and a metal scavenger
(i.e., γ-tocopherol and ascorbyl palmitate) to prevent further peroxidation
(Rubin col. 3, ll. 51-65). The Examiner correctly finds that the addition of
the ascorbyl palmitate to the oil as the second step is a crucial step in the
process of rejuvenating the oil (Ans. 10). Rubin teaches the step of adding
the antioxidant and the ascorbyl palmitate is important in order to avoid
further autoxidation after separation (col. 7, ll. 65–68).
Based on the proper claim construction, we do not find that Rubin
teaches away from using ascorbyl palmitate in the oil rejuvenation process.
To the contrary, Rubin teaches using ascorbyl palmitate and an antioxidant
such as a γ-tocopherol is an important part of the rejuvenating process.
On this record, we affirm the Examiner’s § 103 rejections (1) to (3).

Appeal 2019-006943
Application 14/303,553
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CONCLUSION
In summary:
Claims
Rejected
Basis Prior Art Affirmed Reversed
1–3, 6, 11, 12, 17 § 103 Rubin,
Chang
1–3, 6, 11,
12, 17

4, 5, 13 § 103 Rubin,
Chang,
Shimatani
4, 5, 13
4, 5, 14 § 103 Rubin,
Chang,
Heise
4, 5, 14
Overall
Outcome
1–6,
11–14, 17

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

AFFIRMED