Ex parte Chrysam et al.

Board of Patent Appeals and Interferences

May 20, 1998

07794764 (B.P.A.I. May. 20, 1998)

Application for patent filed November 18, 1991. 1
According to the appellants, this application is a
continuation-in-part of Application 07/665,629, filed March 6,
1991, now abandoned; which is a continuation-in-part of
Application 07/624,056, filed December 7, 1990, now abandoned;
which is a continuation-in-part of Application 07/410,161,
filed September 20, 1989, now abandoned.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MICHAEL M. CHRYSAM
and TURIDDU A. PELLOSO
__________
Appeal No. 95-3328
Application 07/794,7641
__________
ON BRIEF
__________
Before WILLIAM F. SMITH, ELLIS, and WEIMAR, Administrative
Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 2
Appeal No. 95-3328
Application 07/794,764
2
and 4 through 24, all the claims pending in the application.
As a preliminary matter we acknowledge the appellants’
request for a postponement of the oral hearing originally set
for May 6, 1998. However, during a conference held by this
merits panel in preparation for said hearing, it was
determined that an oral hearing would not be necessary in view
of our disposition of the issues on appeal.
The three independent claims, claims 1, 12 and 22, are
illustrative of the subject matter on appeal and read as
follows:
1. A fat product having a solids content at 80EF of at
least about 4% and a solids content of at least about 1% at
92EF consisting essentially of an interesterified blend of
high stearic soybean oil and another oil or fat.
12. A fat product comprising an interesterified blend of
at least about 50% high stearic soybean oil and another oil or
fat, said blend having a solids content at 80EF of at least
about 6% and a solids content at 92EF of at least about 1%,
and containing essentially no hydrogenated fat.
22. A fat product comprising a blend of at least about
75% high stearic soybean oil and another oil, said blend
having been interesterified in the presence of 1,3-specific
lipase under conditions effective to achieve a solids content
of at least about 6% at 80EF and at least about 1% at 92EF,
and containing essentially no hydrogenated fat.
The references relied on by the examiner are:
List et al. (List), “‘Zero Trans’ Margarines: Preparation,
Appeal No. 95-3328
Application 07/794,764
3
Structure, and Properties of Interesterified Soybean Oil-Soy
Trisaturate Blends,” Journal of the American Oil Chemists’
Society, vol. 54, pp. 408-413 (1977).
Miller et al. (Miller), “High-Temperature Stabilities of Low-
Linolenate, High Stearate and Common Soybean Oils,” Journal of
the American Oil Chemists’ Society, vol. 65, pp. 1324-1327
(1988).
Claims 1, 2, and 4 through 24 stand rejected under 35
U.S.C.
§ 103 as being unpatentable over List in view of Miller. We
reverse.
OPINION
It is apparent from the independent claims set forth
above, that all of the claims on appeal require that the fat
product have a solids content of at least 4% or 6% at 80EF,
and at least 1% at 92EF.
However, the examiner states on p. 4 of the Answer that
It is appreciated that the particular melting properties
of the product are not recited [in the applied prior art]
however, with regard to claims 1 and 2, these are
preamble limitations carrying no weight in product
claims.
We find that this reading of the referenced limitations
out of the claims constitutes clear error on the part of the
examiner. In re Geerdes, 491 F.2d 1260, 1262, 180 USPQ 789,
Appeal No. 95-3328
Application 07/794,764
4
791 (CCPA 1974)(“every limitation in the claim must be given
effect rather than considering one in isolation from the
others”). Accordingly, the rejection is summarily reversed.
In response to the rejection, the appellants have
proffered as evidence of an “unexpected result,” a table of
fat products with their respective solids content. Brief, p.
7. However, since we find, on these facts, that the examimer
has failed to establish a prima facie case of obviousness,
there is no burden on the appellants to provide such a
showing. Accordingly, we have not considered the appellants’
arguments with respect to the referenced table.
Other Issues
In the case before us, it appears that the examiner has
not properly considered the scope of the claims. The
appellants are not claiming all interesterified blends of high
stearic soybean oils but, rather, they are only claiming those
subsets which possess specific melting points. In addition,
we point out that independent claim 1 does not specify the
amount of high stearic soybean oil, oil or fat present in the
Appeal No. 95-3328
Application 07/794,764
5
blend. Thus, it appears that the claimed fat product can
contain almost 100% tallow, lard, etc.; i.e., fat products
which naturally possess a solids content of at least about 4%
or 6% at 80EF and at least about 1% at 92EF. See claim 9.
Accordingly, upon return of this application to the corps, the
examiner should consider whether (i) the claims were properly
interpreted, and (ii) all relevant areas of the art were
searched.
The decision of the examiner is reversed.
REVERSED
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
Appeal No. 95-3328
Application 07/794,764
6
ELIZABETH C. WEIMAR )
Administrative Patent Judge )
Kathleen Gallagher
One South Wacker Drive
Suite 2740
Chicago, IL 60606