Ex parte COVINGTON et al.

Board of Patent Appeals and Interferences

May 27, 1998

08078383 (B.P.A.I. May. 27, 1998)

Application for patent filed June 17, 1993.1
-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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT M. COVINGTON, JR. and ERNIE H. UNGER
________________
Appeal No. 95-2823
Application No. 08/078,3831
________________
ON BRIEF
________________
Before WINTERS, METZ and GARRIS, Administrative Patent Judges.
WINTERS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal was taken from the examiner's decision
rejecting claims 1 through 7 and 10, which are all of the
claims remaining in the application. The examiner added a new
ground of rejection of claim 10 under 35 U.S.C. § 112, fourth
paragraph (Answer,
Appeal No. 95-2823
Application No. 08/078,383
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page 5), giving appellants two months from the mailing date of
the Examiner's Answer to reply to the new ground (Answer,
page 6). Appellants did not reply to the new ground of
rejection within that period and, accordingly, the appeal with
respect to claim 10 is dismissed. This leaves claims 1
through 7 for our consideration.
The claimed invention relates to a shortening comprising
a partially hydrogenated plastic canola having three essential
properties: (1) a maximum saturated fatty acid content of
about 11.7%; (2) a maximum polyunsaturated fatty acid content
(C +C ) of about 3.4%; and (3) a maximum iodine value of18:2 18:3
about 83.6. As stated in the Appeal Brief, paragraph bridging
pages 5 and 6, appellants are able to achieve a shortening
having the claimed properties because of their starting oil
IMC 01. This oil is derived from a particular Brassica napus
plant line, a Spring canola variety, developed by mutagenesis.
See the instant specification, page 3, last paragraph, for a
further description of appellants' starting oil. Claim 1,
which is illustrative of the subject matter on appeal, reads
as follows:
1. A shortening comprising a partially hydrogenated
plastic canola having a maximum saturated fatty acid content
Appeal No. 95-2823
Application No. 08/078,383
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of about 11.7%, a maximum polyunsaturated fatty acid content
(C +C ) of about 3.4%, and a maximum iodine value of about18:2 18:3
83.6.
The references relied on by the examiner are:
J. D. Bansal et al. (Bansal), "Effect of Hydrogenation on the
Chemical Composition of Canola Oil," 47 Journal of Food
Science 1338-44 (1982)
Unichema International (Unichema), Hydrogenation of Canola
Oil, Pricat 9920 (1992)
The issue presented for review is whether the examiner
erred in rejecting claims 1 through 7 under 35 U.S.C. § 103 as
unpatentable over "Unichema alone or in view of Bansal"
(Answer, page 3). For the reasons set forth below, we reverse
the examiner's prior art rejections.
DISCUSSION
Independent claim 1 requires that the shortening have a
maximum polyunsaturated fatty acid content (C +C ) of about18:2 18:3
3.4%. Acknowledging that Unichema does not disclose "the
particular extent of unsaturation" recited in claim 1, never-
theless, the examiner relies on Bansal, Figure 7, to reach
that feature. See the Examiner's Answer, page 4, lines 7
through 12; and page 5, section (11) entitled "Response to
argument," lines 4 through 9 thereunder. This being the case,
we summarily reverse the rejection of claims 1 through 7 under
Appeal No. 95-2823
Application No. 08/078,383
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35 U.S.C. § 103 as unpatentable over Unichema alone. The
Examiner's Answer is internally inconsistent in (1) stating a
prior art rejection based on Unichema alone; (2) acknowledging
that Unichema falls short with respect to an essential claim
limitation relating to the polyunsaturated fatty acid content;
and (3) relying on Figure 7 of Bansal to cure the noted
deficiency of Unichema. Manifestly, the rejection of claims 1
through 7 under 35 U.S.C. § 103 over Unichema alone is
untenable. This rejection is reversed.
Considering now the rejection of claims 1 through 7 under
35 U.S.C. § 103 over Unichema "in view of" Bansal, we have
carefully reviewed these references in their entireties
including Bansal, Figure 7. We have also reviewed the
Examiner's Answer and the explanation of the rejection
therein. In our judgment, the examiner does not establish how
a person having ordinary skill in the art, armed with the
disclosures of Unichema and Bansal, would have arrived at the
specifically defined shortening in independent claim 1
comprising a partially hydrogenated plastic canola having (1)
a maximum saturated fatty acid content of about 11.7%; (2) a
Appeal No. 95-2823
Application No. 08/078,383
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maximum polyunsaturated fatty acid content (C +C ) of about18:2 18:3
3.4%; and (3) a maximum iodine value of about 83.6.
We emphasize that, during hydrogenation of a canola oil,
the saturated fatty acid content increases, the
polyunsaturated fatty acid content decreases, and the iodine
value decreases. Unichema and Bansal disclose hydrogenating
canola oils. Each reference discloses numerous hydrogenation
runs, and each reports the saturated fatty acid content, the
polyunsaturated fatty acid content, and the iodine value in
products resulting from those runs. The examiner does not,
however, point to any portion or portions of Unichema or
Bansal, including Figure 7 of Bansal, which would have led a
person having ordinary skill in the art to the claimed
shortening having the specifically recited combi-nation of
saturated fatty acid content, polyunsaturated fatty acid
content and iodine value. Again, during hydrogenation,
saturated fatty acid content increases as polyunsaturated
fatty acid content decreases and iodine value decreases. On
this record, appellants and appellants alone describe the
preparation of a shortening where the saturated fatty acid
content, the polyunsaturated fatty acid content, and the
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Application No. 08/078,383
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iodine value are interrelated according to the specific terms
of claim 1. Appellants are able to achieve a shortening
having the claimed properties because of their starting oil
IMC 01. See the Appeal Brief, paragraph bridging pages 5 and
6 and see the instant specification, page 3, last paragraph.
The references relied on by the examiner contain copious
disclosure relating to partially hydrogenated canola oils.
The examiner, however, has not established that those
references would have led a person having ordinary skill in
the art to the shortening products defined in independent
claim 1. The rejection of claims 1 through 7 under 35 U.S.C.
§ 103 as unpatentable over Unichema "in view of" Bansal is
reversed.
CONCLUSION
For the reasons set forth in the body of this opinion, we
do not sustain the rejection of claims 1 through 7 under
35 U.S.C. § 103 as unpatentable over Unichema alone, or
Unichema "in view of" Bansal. Accordingly, the examiner's
decision rejecting those claims is reversed. The appeal with
respect to claim 10 is dismissed.
REVERSED
Appeal No. 95-2823
Application No. 08/078,383
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SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
ANDREW H. METZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
Appeal No. 95-2823
Application No. 08/078,383
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Mark S. Ellinger, Esq.
Fish & Richardson P.C., P.A.
60 South Sixth St., Ste. 3300
Minneapolis, MN 55402