Ex Parte 5804596 et al

Board of Patent Appeals and Interferences

Jan 30, 2009

90007327 (B.P.A.I. Jan. 30, 2009)

`UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SAMI CHEMICALS AND EXTRACTS, LTD.,
Appellant
____________________

Appeal 2007-3482
Reexamination Control 90/007,327
Patent 5,804,596
Technology Center 3900
____________________

Decided: February 2, 2009
____________________

Before CAROL A. SPIEGEL, ROMULO H. DELMENDO, and
ERIC GRIMES, Administrative Patent Judges.1

SPIEGEL, Administrative Patent Judge.

DECISION ON REHEARING

Appellant requests rehearing under 37 C.F.R. § 41.52 of the Decision
on Appeal mailed December 13, 2007 ("BPAI Decision"). Appellant argues
that the Decision was based on a new claim interpretation not previously

1 Administrative Patent Judges Teddy S. Gron and Adriene Lepiane Hanlon
participated in our 13 December 2007 Decision but Judge Gron has retired
and Judge Hanlon is unavailable. Accordingly, Administrative Patent
Judges Eric Grimes and Romulo H. Delmendo have replaced them on this
panel. Cf. In re Bose Corp., 772 F.2d 866, 869 (Fed. Cir. 1985).
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Patent 5,804,596

presented to Appellant during prosecution, thereby constituting a new
ground of rejection (RR2 1). Appellant argues it is entitled to a full and fair
opportunity to respond to the alleged new ground of rejection (RR 1-2). "To
this end, Appellants respectfully request reopening of prosecution under 37
C.F.R. § 41.50(b)(1) and remand of the case to the Examiner, so that
Appellants may amend the claims and otherwise respond to the outstanding
rejections in a manner consistent with the new claim construction adopted by
the Board" (RR 2). (Prosecution after a final decision of the Board can only
be reopened under 37 C.F.R. § 41.50 in reexamination proceedings. See 37
C.F.R. §§ 1.114, 1.114(e)(5), and 1.198.) We conclude that our affirmance
of the Examiner's rejections under 35 U.S.C. §§ 102(b) and 103(a) does not
amount to a new ground of rejection.
Claims 1 and 5, the only independent claims on appeal, are illustrative
of the subject matter on appeal and read (emphasis added):
1. A method of promoting lean body mass in a
human individual in need thereof, comprising
administering to the individual a lean body mass
promoting effective amount of forskohlin.
5. A method of shifting the proportion between
lean body mass and adipose tissue in favor of lean
body mass in a human individual in need thereof,
comprising administering to the individual a
proportion shifting effective amount of forskohlin.
Findings of fact set forth in this Decision are supported by a
preponderance of the evidence of record.

2 Request For Rehearing Under 37 C.F.R. § 41.52 filed 25 September 2008
("RR").
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Patent 5,804,596

I. Procedural History
[1] U.S. Patent 5,804,596 ("the 596 patent") issued on September 8, 1998
with eight claims.
[2] A request for ex parte reexamination of the 596 patent was filed by
the patent owner (Appellant) on December 1, 2004, and assigned
reexamination control number 90/007,327.
[3] An Order granting reexamination of all of the claims of the 596
patent was mailed on February 4, 2005.
[4] The reexamination proceeding progressed to a point where, on
December 23, 2005, an Office action was mailed, in which all of the
claims then pending in the reexamination, claims 1-34, were finally
rejected.
[5] An improper Request for Continued Examination (RCE) with an
amendment, affidavit, drawings, and translation, was filed on
February 23, 2006. On March 9, 2006, Appellant was notified that
the amendment was improper because it failed to comply with 37
C.F.R. § 1.530(d)-(j). Another response was filed on March 20,
2006.
[6] In a decision mailed April 6, 2006, the improper RCE papers were
returned to Appellant and the amendment was placed in the file for
consideration by the Examiner as a response to the final rejection.
[7] The Examiner mailed an advisory action on April 21, 2006, stating
that the response to the final rejection had been considered but did
not overcome all of the rejections and that the amendment would be
entered upon filing an appeal.
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[8] The final rejection was appealed. An Appeal Brief was filed on June
27, 2006. An Examiner's Answer was mailed on November 7, 2006.
A Reply Brief was filed on January 5, 2007.
[9] After an oral hearing on October 17, 2007, the BPAI Decision was
mailed on December 13, 2007. In the BPAI Decision, the rejection of
claims 31 and 32 under 35 U.S.C. § 112, first paragraph, was
reversed, but the rejections of (a) claims 1, 5, 9, 10, and 31-34 under
35 U.S.C. § 102(b) as anticipated by Kazuo, (b) claims 1, 5, 11, 12,
and 31-34 under 35 U.S.C. § 102(b) as anticipated by Greenway III
or Greenway IV, and (c) claims 1-34 under 35 U.S.C. § 103(a) as
obvious over Kazuo were sustained.
[10] On February 11, 2008, Appellant filed a petition under 37 C.F.R.
§ 1.182 requesting continued examination of the 596 patent, which
included a supplemental amendment seeking to cancel claims 5-8, 10,
12, 14, 16, 18, 20, 22, 24, 26, 28, 30, 32, and 34 and to replace the
terms "promoting" or "promotes" in claims 1 and 31, respectively,
with "increasing" or "increases." Concurrently, Appellant filed a
notice of appeal to the U.S. Court of Appeals to the Federal Circuit
for review of the Decision.
[11] On March 6, 2008, the Office of Patent Legal Administration granted
the petition under 37 C.F.R. § 1.182.
[12] On March 28, 2008, the Office of Patent Legal Administration mailed
a decision vacating its March 6, 2008 decision, stating it lacked
jurisdiction and referring the matter to the Office of the Solicitor.
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[13] On April 3, 2008, Appellant filed a motion requesting a limited
remand from the Federal Circuit to the Office for the purpose of
allowing the Office to decide Appellant's February 11, 2008 petition.
[14] On May 29, 2008, the Federal Circuit granted Appellant's motion for
limited remand. The Federal Circuit's order stated that the "motion
for a limited remand is granted for the purpose of allowing the Board
to consider" Appellant's position.
[15] On June 9, 2008, Appellant and the USPTO jointly moved under
Federal Circuit Rule 27(1) for reconsideration of the Court's May 29,
2008 order, requesting that the Court clarify its order to specify that
the remand was to the USPTO rather than to the Board.
[16] On July 17, 2008, the Court issued an order granting the parties'
motion for reconsideration and clarifying that the "case is remanded
for the limited purpose of allowing the PTO to consider Sami
Chemicals' petition."
[17] On July 28, 2008, the Office of the Solicitor denied Appellant's
petition under 37 C.F.R. § 1.182 because prosecution can only be
reopened after a final decision by the Board under 37 C.F.R. § 41.50
in reexamination proceedings. See 37 C.F.R. §§ 1.114, 114(e)(5),
and 1.198. The Solicitor concluded Appellant had directed its
petition to the wrong entity.
[18] Concurrently, the Board sua sponte ordered the applicable rules
waived and gave Appellant sixty days from July 28, 2008 in which to
file a request for rehearing under 37 C.F.R. § 41.52 of the BPAI
Decision of December 13, 2007.
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[19] Appellant timely filed its request for rehearing on 25 September
2008.
II. Request for Rehearing
[20] Appellant summarized its request for reconsideration as follows:
Appellants request rehearing under 37
C.F.R. § 41.52 and submit that the Board issued a
new ground of rejection in the Decision on Appeal.
Appellants submit that the new ground of rejection
is based on a new claim interpretation not
previously presented to Appellants during
prosecution. Appellants submit that they are
entitled to a full and fair opportunity to respond to
the new ground of rejection. To this end,
Appellants respectfully request reopening of
prosecution under 37 C.F.R. § 41.50(b)(1) and
remand of the case to the Examiner, so that
Appellants may amend the claims and otherwise
respond to the outstanding rejections in a manner
consistent with the new claim construction adopted
by the Board. (RR 2.)
[21] Four claim terms were construed by the Board in the BPAI Decision -
--"promoting," "administering," "effective amount," and "human
individual in need thereof" (BPAI Decision 7-10).
[22] The Board found the ordinary meaning of "promoting" is to further or
help bring into being and that the language, "[a] method of promoting
lean body mass," of claim 1 was unambiguous on its face (BPAI
Decision 7).
[23] The Board
broadly interpret[ed] "promoting" lean body mass,
consistent with the '596 specification, as
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"furthering or bringing about" lean body mass.
"Promoting" lean body mass is not limited solely
to "increasing" lean body mass, but also
encompasses furthering lean body mass by
maintaining lean body mass; reducing body fat
relative to lean body mass; inducing cAMP
mechanisms; and, improving absorption of
nutrients and their preferential incorporation into
lean body mass. (BPAI Decision 8).
[24] Appellant contends that during prosecution "both the Appellants and
the Examiner presumed the term 'promoting' in claim 1 meant
'increasing'" (RR 4).
[25] However, according to the Background of the Invention section of the
'596 patent, prior art
weight control means do not take into account the
importance of maintaining or increasing the lean
body mass in the process of weight loss. (Spec.
1:58-60).
. . . By maintaining or increasing the lean body
mass while simultaneously reducing body fat, the
weight loss regimen would serve the general
purpose of improving the overall health of the
individual.
Maintaining or increasing the lean body
mass (for example, skeletal muscles) is one of the
important considerations for any weight loss
strategy because lean body mass determines the
rate of metabolism and the body's thermogenic
response to food, and food induced thermogenesis
and the metabolic rate, in turn, control body weight
by an increased metabolism of body fat. (Spec.
2:3-13).
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[26] The '596 patent describes the invention as
. . . shift[ing] the proportion between lean body
mass and adipose tissue in favor of lean body mass
in order to restore the ideal physiological
proportions between lean and fat body mass . . .
(Spec. 3:37-41).
. . . the present inventors believe that the invention
increases the lean body mass by stimulating the
enzyme adenylate cyclase (AC), with a resulting
increase in the levels of cAMP. The increase[d]
levels of cAMP in the tissues correspond well to
enhancing the thermogenic response to food. An
increase in the thermogenic response to food, in
turn, improves absorption of nutrients and their
preferential incorporation into lean body mass.
Thus, the formation of lean body mass is
promoted. (Spec. 3:45-53)
[27] According to Appellant, "[b]y focusing on the maintenance of lean
body mass during dieting, the present inventors have made a
significant advance in approaches to weight management" (App. Br.3
4).
[28] Further according to Appellant, prior art "weight control programs do
not take into account the importance of maintaining or increasing
lean body mass in the process of weight loss. . . By maintaining or
increasing the lean body mass while reducing body fat, the present
invention serves the general purpose of improving the overall health
of the individual" (App. Br. 4).

3 Brief on Appeal filed 27 June 2006 ("App. Br.").
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[29] Appellant argues that "[t]he distinctions of a 'lean body mass
promoting effective amount' or a 'proportion shifting effective
amount' of forskohlin, and the administration to a ‘human individual
in need thereof’ . . . distinguish the invention not only from the art
cited in the initial prosecution of the '596 patent, but also from the art
currently cited by the Examiner" (App. Br. 5-6).
[30] Appellant presented essentially the same patentability arguments
against claims 1 and 5 (App. Br. 17, 24, and 27).
[31] The Examiner found, in part, that claims 1 and 5 are anticipated
under 35 U.S.C. § 102(b) over the same references, i.e., Kazuo,
Greenway III, or Greenway IV (Ans.4 4-8).
[32] For example, the Examiner stated "[t]he Greenway references have
clearly shown that the forskohlin-treated thigh loses more girth than
the control thigh . . . Lean body mass has the ordinary meaning of the
mass of the body minus fat. Accordingly, reduction of thigh girth,
which is indicative of localized fat reduction, would translate to
promotion of localized lean body mass" (Ans. 22).
[33] Appellant does not dispute the reasonableness of the Board's claim
construction or dispute its holding that (i) claims 1, 5, 9, 10, and 31-
34 are unpatentable under § 102(b) as anticipated by Kazuo, (ii)
claims 1, 5, 11, 12, and 31-34 are unpatentable § 102(b) as
anticipated by Greenway III or Greenway IV, and (iii) claims 1-34
are unpatentable under § 103(a) as obvious over Kazuo.

4 Examiner's Answer mailed 7 November 2006 ("Ans.").
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III. Discussion
Appeal to the Board is from a decision of the Examiner, not from the
reasons upon which such decision is based. Apparently, it is Appellant's
position that whenever the Board sets forth a claim construction that was not
expressed in the same words by the Examiner, it follows that the claim
construction constitutes a new ground of rejection. We disagree.
The criterion of whether a rejection is considered "new" in a decision
by the Board is whether Appellant has had a fair opportunity to react to the
thrust of the rejection. In re Kronig, 539 F.2d 1300, 1303 (CCPA 1976).
Here, we agree with the Examiner's basis for rejecting (a) claims 1, 5, 9, 10,
and 31-34 under 35 U.S.C. § 102(b) as anticipated by Kazuo, (b) claims 1, 5,
11, 12, and 31-34 under 35 U.S.C. § 102(b) as anticipated by Greenway III
or Greenway IV, and (c) claims 1-34 under 35 U.S.C. § 103(a) as obvious
over Kazuo. We also agree with the Examiner that Appellant has not
provided sufficient evidence on this record to establish that the subject
matter defined in claims 1-34 is patentable over the prior art. The Examiner
reviewed Appellant's evidence, as did we (see BPAI Decision 12-16 and 18-
20). The basic thrust of the rejection by the Examiner and the Board was the
same, and we believe that Appellant has had a fair opportunity to react to
those rejections.
In particular, the Examiner (FF 31-32) and the '596 patent
specification (FF 25-26) both suggest that promoting lean body mass is not
limited to increasing lean body mass, but also encompasses maintaining lean
body mass while decreasing adipose tissue and that increasing lean body
mass may further enhance promoting lean body mass. Indeed, the fact that
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the Examiner rejected claims 1 and 5 together under § 102(b) suggests that
she deemed a method of promoting lean body mass (claim 1) and a method
of shifting the proportion between lean body mass and adipose tissue in
favor of lean body mass (claim 5) to be the same method discussed in the
prior art, i.e., Kazuo and the Greenway references (FF 31). Moreover, the
Examiner indicates in her discussion of the Greenway references that body
mass is the sum of lean body mass plus body fat and, thus, reduction of fat
would translate into promotion of lean body mass (FF 32). Thus, it
reasonably appears the Examiner broadly interpreted "promoting" lean body
mass to not only include increasing lean body mass as argued by Appellant,
but also to include reducing body fat relative to lean body mass. Therefore,
it appears on its face that the Examiner and the Board were all construing
"promoting" in a similar manner consistent with the '596 patent
specification.
Therefore, we will not designate our affirmance as constituting a new
ground of rejection under 37 C.F.R. § 41.50(b).
IV. Conclusion
Appellant's request for rehearing has been granted to the extent that
the BPAI Decision on Appeal mailed December 13, 2007 has been
reconsidered in light of Appellant's arguments. However, the request is
denied because we decline to modify the BPAI Decision in any respect.
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.
§§ 1.550(c) and 41.52(b).

REHEARING DENIED
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rvb

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