Ex Parte Baldenius et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10468610 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KAI-UWE BALDENIUS, ANDREAS FISCHER, CHRISTINE
BECK, HANS-PETER HARZ, MARKUS LOHSCHEIDT,
and MARTIN LEEMANN,
____________

Appeal 2009-007377
Application 10/468,610
Technology Center 1600
____________

Decided: April 30, 2010
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1, 5-21, 29, and
30, the only claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).

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STATEMENT OF THE CASE
The claims are directed to a process for preparing D-pantothenic acid
and/or salts thereof. Claim 1 is illustrative:
1. A process for preparing D-pantothenic acid and/or salts thereof
which comprises

a) culturing at least one bacterium from the Bacillaceae family which
produces D-pantothenic acid and in which the biosynthesis of pantothenic
acid (pan) and/or isoleucine/valine (ilv) is deregulated and which forms at
least 2 g/l of salts of D-pantothenic acid by fermentation in a culture
medium,

b) passing the D-pantothenate-containing fermentation solution
through at least one ion-selective membrane by applying an electric field,
ammonium, potassium, sodium, iron, chloride, phosphate and/or sulfate ions
being removed from the D-pantothenate-containing solution,

c) adding a calcium base and/or magnesium base to the resulting
solution containing free D-pantothenic acid to set the pH to between 3-10, a
solution being obtained which contains calcium and/or magnesium
pantothenate and

d) subjecting the calcium pantothenate- and/or magnesium
pantothenate-containing solution to drying and/or formulation

wherein no free β-alanine and/or β-alanine salt is fed to the culture
medium.

The Examiner relies on the following evidence:
Yocum et al. US 2005/0089973 A1 Apr. 28, 2005
Appellants’ Statement Under 37 C.F.R. § 1.104(c)(4), executed May 2,
2007.

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The rejection presented by the Examiner follows:
Claims 1, 5-21, 29, and 30 stand rejected under 35 U.S.C. § 102(f).
We reverse.

ISSUE

Does the evidence of record support the Examiner’s finding that
Appellants’ did not invent the claimed subject matter?

FINDINGS OF FACT
FF 1. The Examiner finds that Yocum “disclose the subject matter of claim
1, step (a) and the claim 1 wherein clause” (Ans. 3).
FF 2. The Examiner states that “[t]he rejection is not that Yocum et al.
invented all four steps of claim 1. The rejection . . . is that Yocum et al. are
clearly the inventors of step (a) with its ‘wherein’ clause and, as a result,
should be added as inventors” (Ans. 5).
FF 3. “Examiner never stated that Yocum et al. invented the subject matter
of steps (b) - (d)”, instead the Examiner states that the instant inventors,
Baldenius et al., “appear to be the inventors of steps (b) - (d)” (id.).
FF 4. The Examiner finds that Yocum “has a U.S. filing date of September
21, 1999” (id.). Office records indicate that Yocum is currently pending.
FF 5. “In the Office [A]ction of February 20, 2007, the instant claims were
rejected as being obvious over Yocum . . . in combination with additional
references that teach the separation or purification of small anionic and
cationic molecules from aqueous solutions by the technique of
electrodialysis” (Ans. 3). This rejection was subsequently withdrawn “in
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view of Appellants’ Statement regarding the joint research agreement” (June
13, 2007 Office Action 4).
FF 6. Yocum “and the presently claimed invention were made by or on the
behalf of parties to a joint research agreement” that “was in effect on or
before the date the claimed invention was made, and the claimed invention
was made as a result of activities undertaken within the scope of the joint
research agreement” (Appellants’ Statement Under 37 C.F.R. § 1.104(c)(4)).

PRINCIPLES OF LAW
“A person shall be entitled to a patent unless . . . (f) he did not himself
invent the subject matter sought to be patented.” 35 U.S.C. § 102(f).

[(c)] (4) Subject matter which is developed by
another person which qualifies as prior art only under 35 U.S.C.
102(e), (f) or (g) may be used as prior art under 35 U.S.C. 103
against a claimed invention unless the entire rights to the
subject matter and the claimed invention were commonly
owned by the same person or subject to an obligation of
assignment to the same person at the time the claimed invention
was made.
(i) Subject matter developed by another person and
a claimed invention shall be deemed to have been commonly
owned by the same person or subject to an obligation of
assignment to the same person in any application and in any
patent granted on or after December 10, 2004, if:
(A) The claimed invention and the subject
matter was made by or on behalf of parties to a joint research
agreement that was in effect on or before the date the claimed
invention was made;
(B) The claimed invention was made as a
result of activities undertaken within the scope of the joint
research agreement; and
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(C) The application for patent for the claimed
invention discloses or is amended to disclose the names of the
parties to the joint research agreement.
(ii) For purposes of paragraph (c)(4)(i) of this
section, the term “joint research agreement” means a written
contract, grant, or cooperative agreement entered into by two or
more persons or entities for the performance of experimental,
developmental, or research work in the field of the claimed
invention.
(iii) To overcome a rejection under 35 U.S.C.
103(a) based upon subject matter which qualifies as prior art
under only one or more of 35 U.S.C. 102(e), (f) or (g) via 35
U.S.C. 103(c)(2), the applicant must provide a statement to the
effect that the prior art and the claimed invention were made by
or on the behalf of parties to a joint research agreement, within
the meaning of 35 U.S.C. 103(c)(3) and paragraph (c)(4)(ii) of
this section, that was in effect on or before the date the claimed
invention was made, and that the claimed invention was made
as a result of activities undertaken within the scope of the joint
research agreement.

37 C.F.R. § 1.104(c)(4).
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The Manual of Patent Examining Procedure (MPEP) sets forth the
following example:

MPEP § 706.02(k), Example 5 (Rev. 6, Sept. 2007).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987).

ANALYSIS
Claim 1 is drawn to a four step process for the preparation of D-
pantothenic acid and/or salts thereof and requires that no free β-alanine
and/or β-alanine salt is fed to the culture medium recited in the process steps
(Claim 1). Claims 5-21, 29, and 30 depend from claim 1.
The Examiner finds that Yocum only teaches part of Appellants’
claimed invention, specifically one of the four steps of the claimed process
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and the use of culture medium that has not been fed β-alanine and/or β-
alanine salt (FF 1-3). Accordingly, Yocum alone fails to teach each and
every element of Appellants’ claimed invention. See Verdegaal Bros. v.
Union Oil Co. of California, 814 F.2d at 631; see also App. Br. 4-5.
Therefore, a rejection under 35 U.S.C. § 102 is not applicable.
While the Examiner rejected the claims under 35 U.S.C. § 103 over
the combination of Yocum and others, this rejection was subsequently
withdrawn in view of Appellants’ evidence establishing a joint research
agreement in compliance with 35 U.S.C. § 103(c) (FF 5).
The Examiner makes no finding on this record to suggest that
Appellants’ Statement Under 37 C.F.R. § 1.104(c)(4) is not sufficient to
provide evidence establishing a joint research agreement in compliance with
35 U.S.C. § 103(c) (see FF 6). Accordingly, the facts on this record appear
to conform to the fact scenario set forth in MPEP § 706.02(k), Example 5.
To be complete, we recognize the commentary both Appellants and
the Examiner enter into with regard to the Decision in Appeal No. 2006-
3250 (see e.g., App. Br. 6 and Ans. 6) and Appellants’ inferential reference
to the Decision in Appeal No. 2007-2604, by reference to Application No.
10/468,609 (see e.g., App. Br. 6). Suffice it to say that in both Decisions the
obviousness rejection of record was reversed because, on the record
presented to Board in those Appeals, the Examiner failed to meet the
required burden of providing an evidentiary basis to support a conclusion of
obviousness.

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CONCLUSION OF LAW
The evidence of record fails to support the Examiner’s finding that
Appellants’ did not invent the claimed subject matter.
The rejection of claims 1, 5-21, 29, and 30 under 35 U.S.C. § 102(f) is
reversed.

REVERSED

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