Ex Parte Imada et al

Patent Trial and Appeal Board

Oct 25, 2016

12972670 (P.T.A.B. Oct. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/972,670 12/20/2010
38108 7590 10/27/2016
CERMAK NAKAJIMA MCGOWAN LLP
127 S. Peyton Street
Suite 210
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Toshifumi Imada
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.
US-452 1371
EXAMINER
DECK, JASON A
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
10/27/2016 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):
cgoode@cnmiplaw.com
ip@cnmiplaw.com
scermak@cnmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TOSHIFUMI IMADA, SHUZHEN HAO,
TATSURO TANAKA, MIKI TOMOE, EIICHIRO KIMURA,
RISA YUKI UNEY AMA, and KUNIO TORII 1
Appeal2015-002977
Application 12/972,670
Technology Center 1600
Before ERIC B. GRIMES, RICHARD J. SMITH, and RY ANH. FLAX,
Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims directed to a method for suppressing overeating. Claims 1--4, 6-11,
and 13-15 are on appeal as rejected under 35 U.S.C. § 103(a). We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We understand the Real Party in Interest is Ajinimoto Co., Inc. Br. 3.
Appeal2015-002977
Application 12/972,670
STATEMENT OF THE CASE
The Specification states, "[t]his invention relates to agents for the
inhibition, suppression, or prevention of overeating that have the effect of
amplifying a sense of fullness or satiety, or sustaining the effect or of
inhibiting appetite stimulation that arises regardless of whether one feels full
with respect to sweets or delicacies or one has enough calorie intake for
maintaining daily energy expenditure." Spec. i-f 2. The Specification
describes, inter alia, the "use of glutamic acid and/or at least one type of its
salts for the purpose of manufacturing agents for the prevention of
overeating." Id. i-f 15. The Specification also describes "[t]he data indicates
that MSG provides a superior effect of satiety,"-MSG, or monosodium
glutamate (also known as sodium glutamate), is the sodium salt of glutamic
acid. Id. ,-r 123.
The Specification explains that an "EDI Section A score" above zero
is indicative of a person with "drive for thinness," and, therefore, indicates a
suitable target for therapy with the invention. See, e.g., id. i-f 34--35, 132.
The Specification explains that EDI stands for "Eating Disorder Inventory"
and consists of questionnaires of three sections; section A relates to "Drive
for Thinness," and is indicative of excessive concern with dieting,
preoccupation with weight, and entrenchment in an extreme pursuit of
thinness. Id. i-f 131 (citing Gamer et al., Development and Validation of a
Multidimensional Eating Disorder Inventory for Anorexia Nervosa and
Bulimia, 2 INT'L J. EATING DISORDER 15-34 (1983)).
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Application 12/972,670
The appealed claims can be found in the Claims Appendix of the
Appeal Brief. Claims 1 and 9 are the independent claims. 2 Claim 1 is
representative and reads as follows:
1. A method for suppressing overeating, said method comprising
ingesting at least one substance selected from the group
consisting of glutamic acid and a salt thereof, in an amount
sufficient to suppress overeating, by a person who needs
suppression of overeating, wherein said person is a person who
has drive for thinness as indicated by their EDI Section A score.
Br. 17 (Claims App'x).
The following rejection is on appeal:
Claims 1--4, 6-11, and 13-15 stand rejected under 35 U.S.C. § 103(a)
over Ferguson.3 Final Action 3.
DISCUSSION
We adopt the Examiner's findings of fact, reasoning on scope and
content of the prior art, and conclusions set out in the Final Action and
Answer.
The rejection of claim 1under35 U.S.C. § 103(a) over Ferguson.
The Examiner determined that Ferguson disclosed curbing appetite by
ingesting glutamic acid and/or a salt thereof, e.g., MSG. Final Action 3.
Appellants do not dispute this. See Br. 11-14. Rather, in arguing
patentability, Appellants focus on the Examiner's concession that "Ferguson
2 "Claims 2-4 and 6-8 stand or fall with Claim 1; Claims 10, 11, and 13-15
stand or fall with Claim 9." Br. 6; see also 37 C.F.R. § 41.37(c)(l)(iv)
(claims argued together, fall together).
3 U.S. Patent No. 2,631, 119 (issued to Edgar A. Ferguson on Mar. 10, 1953)
(hereinafter "Ferguson").
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Application 12/972,670
does not specifically disclose identifying a person who thinks about dieting
(i.e. has a non-zero EDI Section A score), and prescribing a food comprising
glutamic acid, wherein the person has a drive for thinness." See Final
Action 3 and Br. 11. Appellants contend that, prior to the invention, it was
understood in the art that MSG, in particular, was an appetite stimulant and
that there was no correlation between an EDI score (indicative of drive for
thinness) and appetite suppression with MSG. Br. 12-14; see also
Declaration of Graham Finlayson Under 37 C.F.R. § 1.132 dated Aug. 8,
2013 (hereinafter "Finlayson Deel.") (submitted by Appellants). Appellants'
arguments are not persuasive.
Appellants' evidence does not support their contention that it was
understood in the art that MSG was an appetite stimulant, rather than
suppressant. The references cited in the Finlayson Deel. are not conclusive
on the matter. Some indicate that MSG might stimulate appetite. See, e.g.,
Yeomans4 at 958 (Abstract). Others are indeterminate. See, e.g., Luscombe5
at 929 (Abstract) and 935 (right col.); Beyreuther6 at 307; Yamamoto7 at
4 Martin R. Yeomans et al., Acquired Flavor acceptance and Intake
Facilitated by Monosodium Glutamate in Humans, 93 PHYSIOLOGY &
BEHAVIOR 958---66 (2008) (hereinafter "Yeomans").
5 Natalie D. Luscombe-Marsh et al., The Addition of Monosodium Glutamate
and Inosine Monophosphate-5 to High-protein Meals: Effects on Satiety,
and Energy and Macronutrient Intakes, 102 BRITISH J. NUTRITION 929-37
(2009) (hereinafter "Luscombe").
6 K. Beyreuther et al., Consensus Meeting: Monosodium Glutamate - an
Update, 61 EURO. J. CLIN. NUTRITION 304--13 (2007) (hereinafter
"Beyreuther").
7 Shigeru Yamamoto et al., Can Dietary Supplementation of Monosodium
Glutamate Improve the Health of the Elderly? 90 AM. J. CLIN. NUTRITION
844S-9S (2009) (hereinafter "Yamamoto").
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Application 12/972,670
848S (left col.). Others indicate that MSG may suppress appetite. See, e.g.,
Essed8 at 149; Rogers9 at 801 (Abstract), 802 (right col.), 803 (right col.);
Bellisle 110 at 434 (right col.); Bellisle 2 11 at 106 (Fig. 1); and Bellisle 3 12 at
870-72 (see data tables regarding intake). None of the references take a
definitive position on the matter and because of their inconsistency, we do
not find that Appellants' alleged evidence that "nearly six decades of
research and disclosures [would] uniformly guide those of ordinary skill in
the art directly away from the claimed combinations" (see Br. 14) to be
persuasive.
Further, the evidence presented by Appellants is not commensurate
with the scope of the claims, which encompasses glutamic acid (and its
salts), generally, and is not limited to MSG. Even were the evidence to
indicate that those of ordinary skill in the art as of the invention date
8 Natasja H. Essed et al., No Effect on Intake and Liking of Soup Enhanced
with Mono-sodium Glutamate and Celery Powder Among Elderly People
with Olfactory and/or Gustatory loss, 60 lNT'L J. FOOD SCI. AND NUTRITION
143-54 (2009) (hereinafter "Essed").
9 Peter J. Rogers and John E. Blundell, Umami and Appetite: Effects of
Monosodium Glutamate on Hunger and Food Intake in Human Subjects, 48
PHYSIOLOGY & BEHAVIOR 801---04 (1990) (hereinafter "Rogers").
1° France Bellisle, Glutamate and the UMAMI Taste: Sensory, Metabolic,
Nutritional and Behavioural Considerations. A Review of the Literature
Published 1 n the Last 10 Years' 23 NEUROSCIENCE AND BIOBEHAVIORAL
REV. 423-38 (1999) (hereinafter "Bellisle 1").
11 France Bellisle et al., Monosodium Glutamate and the Acquisition of Food
Preferences in a European Context, 1 FOOD QUALITY AND PREFERENCE 103-
08 (1989) (hereinafter "Bellisle 2").
12 F. Bellisle et al., Monosodium Glutamate as a Palatability Enhancer in
the European Diet, 49 PHYSIOLOGY & BEHAVIOR 869-73 (1991) (hereinafter
"Bellisle 3").
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Application 12/972,670
understood MSG to be an appetite stimulant, this would not be determinative
with respect to claims directed to glutamic acid, generally. Appellants'
evidence is also not commensurate with the breadth of the Ferguson
disclosure, which indicates its appetite-suppressing "invention includes
sodium glutamate, salt, a protein hydrolysate, and glutamic acid," together,
which is within the scope of appealed claim 1 and also not limited to only
MSG. For these reasons, the evidence is not persuasive.
Further, claim 1 recites, "said person [who needs suppression of
overeating] is a person who has drive for thinness as indicated by their EDI
Section A score," which is not expressly disclosed by Ferguson, but would,
nonetheless have been obvious in view thereof. See Final Action 3--4. The
Specification indicates that a "non-zero EDI Section A [drive for thinness]
score" exemplifies a person who has "drive for thinness" and is, therefore,
suitable for treatment by the method of the invention. Spec. i-fi-134--35.
Appellants argue, citing the Finlayson Deel., "a non-zero EDI score is not
indicative of a drive for thinness," but the Specification contradicts this
attorney argument, as identified above.
Moreover, the Finlayson Deel. states both that "I agree it is self-
evident that the original patent by Ferguson, U.S. Patent No. 2,631, 119,
describing an appetite-suppressing application for glutamate would be
applicable to a person who 'thinks about dieting' (also contributing part of
the psychometric EDI trait named 'Drive for thinness')," and also,
"[t]herefore, a 'non-zero score' on the EDI drive for thinness subscale would
not be very discriminatory as it would apply to the great majority of the
general population and would be an [sic] clear extension to the patent filed
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Application 12/972,670
by Ferguson." Finlayson Deel. i-f 4. These statements are not consistent with
Appellants' arguments, but indicate that almost anyone would achieve an
EDI drive for thinness score to place them within the scope of the claims. A
non-zero score is all claim 1 requires, in view of the Specification (see Spec.
i-fi-134--35 and 131-132; see also claim 6). Based on the above, the
preponderance of evidence supports the Examiner's determination that it
would have been obvious to give the appetite suppressing glutamic acid (or
its salt, MSG) to a person who thinks about dieting, who would also be
someone that would score above "zero" on the EDI Drive for thinness
questionnaire subscale.
For the reasons above, we affirm the obviousness rejection of claim 1
and its depending claims.
The rejection of claim 9 under 35 U.S.C. § 103(a) over Ferguson.
Claim 9 is similar to claim 1 and is directed to a method of
suppressing overeating by prescribing glutamic acid (or a salt thereof) or a
food or drink having glutamic acid (or a salt thereof) added to it, and the
patient has an EDI Section A score indicating a drive for thinness. For the
same reasons as set forth above regarding the obviousness of claim 1 and its
depending claims, claim 9 would likewise have been obvious over Ferguson
and we affirm the rejection of claim 9 and its depending claims.
SUMMARY
The rejection of claims 1--4, 6-11, and 13-15 under 35 U.S.C.
§ 103(a) over Ferguson is affirmed. Claims 2--4 and 6-8 fall with claim 1
and claims 10, 11, and 13-15 fall with claim 9. 37 C.F.R. § 41.37(c)(l)(iv).
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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).
AFFIRMED
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