Ex Parte Henriksen et al

Board of Patent Appeals and Interferences

Jan 22, 2009

10618477 (B.P.A.I. Jan. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LOTTE RUGHOLM HENRIKSEN and ERIK MARCUSSEN
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Appeal 2008-1881
Application 10/618,477
Technology Center 1600
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Decided: January 22, 2009
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Before TONI R. SCHEINER, DEMETRA J. MILLS, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUEST TO REOPEN PROSECUTION
Appellants have requested that prosecution be reopened pursuant to
37 C.F.R. § 41.50(b)(1) to respond to the new ground of rejection
(“Request”) set forth in the Board decision entered July 8, 2008
(“Decision”).
ISSUE
Whether Appellants made a proper request under 37 C.F.R.
§ 41.50(b)(1) to reopen prosecution?

Appeal 2008-1881
Application 10/618,477

REPRESENTATIVE CLAIM
Claim 34 is representative of the appealed subject matter:
34. A solid phytase composition, comprising:
(a) an enzyme having a phytase activity of above 20
FYT[ ]1 /g of the composition, and
(b) corn steep liquor in an amount sufficient to stabilize
the enzyme having phytase activity.

DISCUSSION
In the Decision entered July 8, 2008, we affirmed the Examiner’s
rejection of claims 34-38 and 40-52. Because our rationale differed from the
Examiner’s, we designated it as a new ground of rejection under 37 C.F.R.
§ 41.50(b) to provide Appellants with an opportunity to respond to it (Dec.
9-10).
The background of the case is as follows:
Claims 34-38 and 40-52 stand rejected under 35 U.S.C. § 103(a) as
obvious over prior art (Ans. 4). The claims are directed to a phytase
composition comprising phytase enzyme and corn steep liquor “in an
amount sufficient to stabilize the enzyme having phytase activity.”
In their Appeal Brief, Appellants did not challenge the adequacy of
the Examiner’s prima facie case. Rather, Appellants’ took the position that
Examples 4-7 of the Specification provided evidence of “surprising and
unexpected” results sufficient to rebut the Examiner’s conclusion of
obviousness (App. Br. 13). These results purport to show that the corn steep
liquor “significantly” improves the stability of phytase in a composition as

1 “FYT” refers to a unit of enzyme activity, “one FYT being the amount of
enzyme that liberates 1 micro mole inorganic ortho-phospate per min” under
specific conditions (Spec. 2: 32-36).
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Appeal 2008-1881
Application 10/618,477

compared to a control which lacks the liquor (App. Br. 12-13). The
Examiner rejected this evidence, asserting that the prior art suggests
combining phytase with corn steep liquor and that the liquor’s effect in
stabilizing phytase would have been an inherent property of the obvious
combination (Ans. 8-9).
In our Decision, we concluded that the Examiner erred in not
considering Appellants’ evidence of unexpected results (Dec. 7).
Unexpected results are invoked to rebut prima facie obviousness. The
properties relied upon as a basis for the unexpected results are inseparable
from, and therefore “inherent” to whatever materials and methods are
utilized to generate the results. However, this does not demean their ability
to serve as a basis for patentability. Rather, the question is whether the
evidence of unexpected results is based on a comparison with the closest
prior art and whether the property relied upon as the basis for the results
would also have been possessed by the closest prior art (Dec. 9). Applying
these correct principles, we reviewed the evidence of unexpected results and
found them inadequate on the record before us to rebut the prima facie case.
An appellant may respond to new ground of rejection by (1)
reopening prosecution or (2) requesting rehearing of the Decision on the
same record. See 37 C.F.R. § 41.50(b). According to § 41.50(b)(1),
Appellant must:
Submit an appropriate amendment of the claims so rejected or
new evidence relating to the claims so rejected, or both, and
have the matter reconsidered by the examiner, in which event
the proceeding will be remanded to the examiner. The new
ground of rejection is binding upon the examiner unless an
amendment or new evidence not previously of record is made
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Appeal 2008-1881
Application 10/618,477

which, in the opinion of the examiner, overcomes the new
ground of rejection stated in the decision.
In this case, Appellants have not submitted a claim amendment, nor
have they provided new evidence as necessary under § 41.50(b)(1) to have a
proceeding remanded to the Examiner. As neither requirement has not been
met, we deny Appellants’ request to reopen prosecution.
In their Request, Appellants argue as they did in the Appeal Brief.
They do not identify any defect in our Decision. Rather, they re-argue the
same position taken in the Appeal Brief.
They state in the Request, without explanation, that the
“formulations containing phytase without corn steep liquor [used in the
Examples as the basis for the comparison] represent the closest prior art”
(Request 2). However, Appellants have not stated that the formulations are
those represented by DeLima, which the Examiner relied upon as the closest
prior art, or whether Appellants are referring to other uncited prior art. The
Examiner made specific findings about the enzyme-containing granules
described in DeLima (see Ans. 4-5; FF1-42), but Appellants have not
explained whether the granules utilized in their Examples have these
characteristics. Finally, Appellants have not explained how the results are
commensurate in scope with the full scope of the claims, a necessary
condition to rebut prima facie obviousness of the claimed subject matter.
See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).

2 “FF” refers to the Findings of Fact set forth in the Decision.
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Appeal 2008-1881
Application 10/618,477

CONCLUSION OF LAW
Appellants did not make a proper request under 37 C.F.R.
§ 41.50(b)(1) to reopen prosecution because they did not submit a claim
amendment or new evidence as necessary under the rule to have a
proceeding remanded to the Examiner. The Request to Reopen Prosecution
is therefore denied.

DENIED

Ssc:

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