Ex Parte Flaherty et al

Board of Patent Appeals and Interferences

May 29, 2012

11001845 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/001,845 12/02/2004 Jaime Davis Flaherty 1410/77139 9797
48940 7590 05/29/2012
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
05/29/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JAIME DAVIS FLAHERTY, YEONG-CHING
ALBERT HONG, TIA MICHELLE RAINS, CECILY
ELIZABETH BROSE, RICARDO VILLOTA, CATHY JEAN
LUDWIG, ANILKUMAR GANAPATI GAONKAR, and
DENNIS ANN KIM
____________________

Appeal 2010-007986
Application 11/001,845
Technology Center 1700
____________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 1-21, 30, and 32-34 under 35 U.S.C. § 112, ¶ 1 as
failing to comply with the written description requirement. We have
jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
The claims are directed to a pasta meal or dinner kit for microwave
oven cooking of dry pasta and methods for preparing such pasta meals (see,
e.g., Claims 1, 12, 30, 33, and 34). The pasta preparation contains an anti-
boil-over composition that significantly reduces boil-over in limited volume
containers during microwave oven cooking (Spec. 1:4-7). All of the claims
require an amount of surfactant of about 6 to about 30 weight percent.
Claim 1 is directed to the method for preparing the pasta and is illustrative:
1. A method for preparing pasta, said method comprising
forming a mixture comprising an effective amount of an
anti-boil-over composition, dried pasta, and water in a
container; and
heating the mixture in the container until the pasta is
sufficiently cooked to achieve the desired degree of tenderness;
wherein the anti-boil-over composition comprises about
6 to about 30 weight percent surfactant, about 50 to about 70
weight percent instant starch, and at least about 15 weight
percent salt, the surfactant, starch and salt in amounts effective
to reduce boil over during heating in a limited volume
container, and
wherein the anti-boil-over composition can reduce boil-
over during heating in a limited volume container relative to a
similar pasta and water mixture, but without the anti-boil-over
composition, heated in a similar manner using the limited
volume container.
(Claims App. A at Br. 32 (formatting and italics added).)
The Examiner rejects the claims because there is no support for
portions of the lower end of the range “about 6% to about 30 weight
percent” surfactant (Final OA 2; Ans. 3). The rejection is twofold: The
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Examiner finds that “about” before 6% is not supported and also finds that
values such as 7, 8, 9, etc. are not supported (id.).
Appellants contend that persons skilled in the art would consider a
surfactant range of 6-10% to be a part of Appellants’ invention (Br. 23-24).
According to Appellants, trials 7 and 8 of Example 3 and Example 4 (Spec.
11) provide support for the 6-30% range (Br. 19-20). Appellants rely upon
calculations indicating that trials 7 and 8 include 6.1 wt% surfactant and
Example 4 includes 12.3 wt% surfactant (id.). Appellants further contend
that “about” before 6% is supported because the Examiner’s position is
inconsistent with the use of “about” in the Specification and Claims, and
maximum precision is not required when the tenor of the disclosure indicates
approximation (Reply Br. 3-5).
The issue is: Does the evidence support the Examiner’s finding that
Appellants’ originally filed disclosure fails to reasonably convey to the
ordinary artisan that Appellants were in possession of an anti-boil-over
composition comprising “about 6 to about 30 weight percent surfactant” as
recited in the claims?
We answer this question in the affirmative.
The original Specification describes an anti-boil-over composition
comprising at least one surfactant, an instant starch, and salt (Spec. 3:1-2).
The broadest concentration range disclosed in the Specification for the
amount of surfactant effective for reducing boil-over is a range of about 10
to about 30 percent (Spec. 3:8-9; 3:15-16; 4:29-30).
The Specification discloses narrower ranges that all contain more than
10 wt% surfactant. Namely, there is a preference for concentrations of about
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10 to about 20 percent surfactant, and about 12 to about 17 percent
surfactant (Spec. 5:1-6). The Specification does not disclose any ranges
encompassing values less than 10 wt% (Spec., generally).
Example 3 describes eight trials in which thin wall dry elbow
spaghetti was cooked in water using anti-boil-over compositions containing
varying amounts of salt and acetylated monoglyceride (surfactant) plated
onto an instant starch. Trials 7 and 8 use 0.2 grams acetylated
monoglyceride, 2.3 grams instant starch, and 0.8 grams salt.
Appellants and the Examiner agree that the values in trials 7 and 8
translate to 6.06 wt% acetylated monoglyceride surfactant, which when
rounded up equals 6.1 wt% (Br. 20; Ans. 4; Reply Br. 2). Boil-over was
significantly reduced in trials 7 and 8 (Spec. 11:8-9).
The test for compliance with the written description requirement is
“whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. Based on that inquiry, the
specification must describe an invention understandable to that skilled
artisan and show that the inventor actually invented the invention claimed.”
Id.
When determining whether a claimed range is supported by the
original specification, mere comparison of ranges is not necessarily enough.
In re Wertheim, 541 F.2d 257, 263 (CCPA 1976). Nor are mechanical rules
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a substitute for an analysis of each case on its facts to determine whether an
application conveys to those skilled in the art the information that the
applicant invented the subject matter of the claims. Id.
With respect to the use of “about” before a range endpoint, one way
an application can provide support is by indicating to a person skilled in the
art that the range was intended to be approximate, i.e., to mean “about.”
Eiselstein v. Frank, 52 F.3d 1035, 1039 (Fed. Cir. 1995). “The meaning of
the word “about” is dependent on the facts of a case, the nature of the
invention, and the knowledge imparted by the totality of the earlier
disclosure to those skilled in the art.” Id., at 1040.
In the present case, the broad disclosure seems to indicate that
Appellants’ invention was intended to encompass only those anti-boil-over
compositions including about 10 to about 30 percent surfactant. However,
trials 7 and 8 of Example 3 reasonably convey that Appellants were in
possession of anti-boil-over compositions including 6.06 wt% acetylated
monoglyceride surfactant. There is, however, no convincing evidence that
Appellants intended the concentration of trials 7 and 8 to be approximate.
Nor is there any evidence that Appellants intended to include employing
6.06 wt% of any surfactant based on trials 7 and 8 drawn to acetylated
monoglyceride surfactant in specific anti-boil-over compositions. See, e.g.,
Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326-27 (Fed. Cir.
2000) (“What the…patentees have done is to pick a characteristic possessed
by two of their formulations [in Examples]… then make it the basis of
claims that cover not just two formulations, but any formulations that has
that characteristic. That is exactly the type of overreaching the written
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description requirement was designed to guard against.”) Under these
circumstances, we cannot say that Appellants have reasonably conveyed by
their Specification that they possessed anti-boil-over compositions including
concentrations less than 6 wt% of any surfactant in a broadly claimed anti-
boil-over composition. Even were we to determine that the concentrations
of acetylated monoglyceride surfactant can be a basis for the claimed
concentrations of any surfactant, the non-supported concentrations would be
included in the “about 6” lower end of the claimed range as explained above.
We emphasize that the Specification itself must convey possession.
Ariad at 1352. While the written description requirement does not demand
any particular form of disclosure, a description that merely renders the
invention obvious does not satisfy the requirement. Id.
CONCLUSION
We sustain the Examiner’s rejection under 35 U.S.C. § 112, ¶ 1.
DECISION
The Examiner’s decision is affirmed.
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)(1).

AFFIRMED

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