Ex Parte HUANG et al

Patent Trial and Appeal Board

Mar 30, 2016

13029091 (P.T.A.B. Mar. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/029,091
99715 7590
INNOPHOS, INC
innophos. inc.
FILING DATE
02/16/2011
04/01/2016
259 Prospect Plains Road
Bdg. A
cranbury, NJ 08512
FIRST NAMED INVENTOR
YAN HUANG
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
IN-00013 1038
EXAMINER
BOVA, JUSTIN M
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
04/01/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPRC@Innophos.com
J oseph.DiDonato@Innophos.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YAN HUANG and RUSSELL KEMP
Appeal2014-007155
Application 13/029,091
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 3 and 4. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is best illustrated by independent claim 3,
reproduced below:
Appeal2014-007155
Application 13/029,091
3. A compound having the formula:
( M x H y) +4 ( P 2 0 7) -4 :
where M is a cation selected from the group consisting of
monovalent cations, divalent cations, and trivalent cation; H is
hydrogen, P207 is the pyrophosphate anion, and y is a number
between 2.2- 3.8; and xis a value sufficient to balance the
overall charge of said compound, wherein said compound is
intended for use in treating food to reduce the acrylamide
content of said food.
Appellants request review of the Examiner's rejections of claims 3
and 4 under 35 U.S.C. § 102(b) as anticipated by each of Pettelot et al., (US
2009/0098267 Al, published April 16, 2009 hereinafter "Pettelot"),
Galembeck et al., (US 2009/0217841 Al, published September 3, 2009
hereinafter "Galembeck") and Klein et al., (WO 00/ 68145 A 1, published
November 16, 2000 hereinafter "Klein"). App. Br. 6; Final Act. 3-5. 1
1 The Examiner withdrew the rejections of claims 3 and 4 under 35 U.S.C. §
102(b) based on the references to Diener (US 2005/0069617 Al, published
March 31, 2005) and Tricoit (US 2004/0137124 Al, published July 15,
2004). Ans. 2. Accordingly, these rejections are not before us for review on
appeal.
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Appeal2014-007155
Application 13/029,091
OPINION2
We have thoroughly reviewed each of Appellants' arguments for
patentability. However, we determine that a preponderance of the evidence
supports the Examiner's § 102(b) rejections of representative independent
claim 3. Accordingly, we will sustain all of the Examiner's rejections for
essentially the reasons expressed in the Answer and we add the following for
emphasis.
Independent claim 3 is directed to monobasic pyrophosphate
compounds for reducing acrylamide content in carbohydrate rich foods.
Spec. 1; App. Br. 5.
The Examiner found each of the Pettelot, Galembeck and Klein
references anticipate the subject matter of independent claim 3 by describing
compounds that meet the claimed formula. Final Act. 3-5; Pettelot i-f 58;
Galembeck Table 1 a; Klein Abstract. Pettelot and Klein teach using the
compound in food products. Pettelot i-f 1; Klein 4.
Appellants argue none of the cited art discloses mono basic
pyrophosphate compounds as suitable acrylamide reducing agents. App. Br.
6.
We are unpersuaded by Appellants' argument. It is well settled that
the recitation of a new intended use for an old product does not make a claim
to that old product patentable. See In re Spada, 911 F.2d 705, 708 (Fed. Cir.
1990) ("The discovery of a new property or use of a previously known
2 Appellants argue independent claims 3 and 4 together. See Appeal Brief,
generally. We select independent claim 3 as representative of the subject
matter on appeal and limit our discussion to this claim. Claim 4 will stand
or fall with independent claim 14.
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Appeal2014-007155
Application 13/029,091
composition, even when that property and use are unobvious from prior art,
cannot impart patentability to claims to the known composition."); In re
Pearson, 494F.2d1399, 1403 (CCPA 1974) (intended use of an old
composition does not render composition claim patentable); In re Zierden,
411 F.2d 1325, 1328, (CCPA 1969) ("[M]ere statement of a new use for an
otherwise old or obvious composition cannot render a claim to the
composition patentable."); In re Hack, 245 F.2d 246, 248, (CCPA 1957)
("the grant of a patent on a composition or a machine cannot be predicated
on a new use of that machine or composition"); In re Benner, 174 F.2d 938,
942, (CCPA 1949) ("no provision has been made in the patent statutes for
granting a patent upon an old product based solely upon discovery of a new
use for such product"). Thus, Appellants have not adequately explained a
patentable distinction between the claimed compounds and the compounds
of the prior art.
Therefore, we affirm the Examiner's rejections of claims 3 and 4
under 35 U.S.C. § 102(b) for the reasons presented by the Examiner and
given above.
ORDER
The Examiner's rejections of claims 3 and 4 under 35 U.S.C. § 102(b)
as anticipated by either Pettelot, Galembeck and Klein are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
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Appeal2014-007155
Application 13/029,091
AFFIRMED
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