Ex Parte Johnson

Patent Trial and Appeal Board

Sep 25, 2017

13113174 (P.T.A.B. Sep. 25, 2017)

United States Patent and Trademark Office
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.
13/113,174 05/23/2011 Kyle M. Johnson 208-044US2 9118
09/27/201727791 7590
ALLISON JOHNSON, P.A.
3600 AMERICAN BLVD. W., SUITE 410
MINNEAPOLIS, MN 55431
EXAMINER
BRANSON, DANIEL L
ART UNIT PAPER NUMBER
1616
NOTIFICATION DATE DELIVERY MODE
09/27/2017 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):
patent@ ajiplaw.com
allison@ ajiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE M. JOHNSON1
Appeal 2016-001410
Application 13/113,174
Technology Center 1600
Before ERIC B. GRIMES, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.
CHANG, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
effervescent composition, which have been rejected as obvious. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
The Specification states that
[gjelatin dessert products are often prepared by boiling water on a
stove, placing the boiling water in a container such as a bowl, adding
the gelatin powder to the boiling water, stirring, adding ice or cold
water to the mixture and stirring, and then placing the liquid in a
1 Appellants identify the Real Party in Interest as Amerilab Technologies,
Inc. (Appeal Br. 3.)
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Application 13/113,174
refrigerator. The acts of boiling water on a stove and transferring
boiling water from a pot to a bowl can be very dangerous, especially
for young children.
(Spec. 1:13-17.)
The Specification describes a method of making a gelled composition
using an effervescent tablet containing gelatin which, according to the
Specification, “is simple to perform,” “does not require the transfer of
boiling liquid from one vessel to another,” and eliminates the need to boil
water on a stove and for stirring. (Id. at 3:8—12.) Further according to the
Specification, “[t]he single serving and single dose formulations [of the
invention] provide[s] gelatin in a form that enables consumers to easily
prepare a dessert or a tasty vehicle for delivering an active agent such as a
medicament or a vitamin.” (Id. at 4:13—15.)
Claims 21—27 and 40-42 are on appeal. Claim 21 is illustrative and
reproduced below:
21. An effervescent composition comprising:
from about 10 % by weight to about 30 % by weight of an
effervescent couple comprising an acid and a base;
from at least 5 % by weight to about 20 % by weight of the
acid;
from at least 1 % by weight to about 15 % by weight of the
base; and
at least 200 mg of a gelatin that forms a gel, the gelatin
comprising gelatin derived from a cow, gelatin derived from a pig, or
a mixture thereof,
the effervescent composition forming a gel when the
effervescent composition is dissolved in heated water to form an
aqueous composition and the aqueous composition is subsequently
chilled.
(Appeal Br. Ai (Claims App.).)
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Application 13/113,174
The Examiner rejects claims 21—27 and 40-42 under 35 U.S.C. pre-
AIA § 103(a) as obvious over Welding,2 Silvestrini,3 Bonanomi,4 and Pam.5
(Final Act. 3.)
DISCUSSION
Issue
The Examiner finds that Wehling teaches an effervescent tablet
comprising the claimed effervescent couple and an active agent, but does not
“specifically teach that the active is gelatin comprising gelatin derived from
a cow, pig or mixture thereof.” (Final Act. 4—5.) The Examiner finds that
Silvestrini, Bonanomi, and Pam cure this deficit. (Id.) In particular, the
Examiner finds that Silvestrini teaches administering 8—16 grams of gelatin
a day to a patient to treat hair thinning or loss; that Pam also teaches daily
administration of 0.5—7 grams of gelatin, which may comprise a mixture
hydrolyzed and non-hydrolyzed gelatin, for a similar purpose, and that
“Bonanomi suggests] administering a partly hydrolyzed gelatin via an
effervescent tablet which comprises 44 wt. % partly hydrolyzed gelatin . . . ,
about 19.5 wt. % metal base salt calcium carbonate, about 26.6 wt. % citric
acid, about 1 wt. % dimethicone lubricant and about 19.5 wt. % maltodextrin
binder.” (Id. at 5.)
The Examiner concludes that a skilled artisan would be motivated to
incorporate the gelatin of Silvestrini or Pam in Wehling’s effervescent tablet,
with a reasonable expectation of success, because “Wehling envisions
2 Wehling, US 2003/0170301 Al, published Sept. 11, 2003.
3 Silvestrini, U.S. Patent No. 4,749,684, issued June 7, 1988.
4 Bonanomi, EP 1 407 677 A2, published Apr. 14, 2004.
5 Pam, WO 2008/075333 A2, published June 26, 2008.
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Application 13/113,174
utilizing the effervescent tablet to administer a protein or amino acid active”
and “Bonanomi provide an example of an effervescent tablet that comprises
gelatin,” e.g., 2.5 grams (Id. at 6.) The Examiner concludes that it would
likewise be obvious to a skilled artisan to use porcine or bovine gelatin in
order to prevent allergic reactions that might occur if fish gelatin were used,
as suggested by Pam. (Id.)
With respect to the claimed amounts of acid, base, and gelatin, the
Examiner finds that a prima facie case of obviousness exists because “the
prior art range overlaps or touches a claimed range” and because the amount
of gelatin active in a composition is an optimizable result effective variable.
(Id.)
Appellant contends among other things that there is no suggestion in
the cited art of “an effervescent composition that forms a gel when dissolved
in heated water and then subsequently chilled.” (Appeal Br. 8.)
The issue with respect to this rejection is whether a preponderance of
the evidence of record supports the Examiner’s conclusion that the claims
are obvious over Wehling, Silvestrini, Bonanomi, and Pam.
Analysis
On balance, we find Appellant has the better argument. In particular,
we agree that the Examiner has not sufficiently articulated a rationale why a
skilled artisan would combine the components of Wehling’s effervescent
tablet and the non-hydrolyzed gelatin (i.e., gelatin that forms a gel)6 of
Silvestrini and Pam such that “the composition form[s] a gel when the
6 Gelatin that is hydrolyzed such that it loses its native structure no longer
gels, because “[t]he native structure is responsible for gelatin gelation.”
(Bonanomi 121.)
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Application 13/113,174
effervescent composition is dissolved in heated water to form an aqueous
composition and the aqueous composition is subsequently chilled.” (Appeal
Br. Ai (Claims App.).)
The Examiner argues that “the claim is ... a composition claim and
the [limitation cited above] is directed to an intended use and resulting
inherent properties of the composition when prepared in a specified way.”
(Final Act. 7; see also Ans. 2—3, 4 (arguing that “the combination of
references suggest all of the limitations . . ., including gelatin which gels,
inherently resulting in a composition that is capable of gelling as
claimed”).) The Examiner further argues that,
even though Pam does not specifically teach preparing a gel in the
same manner as required by Claim 21, Pam clearly teaches that use of
a native porcine or bovine gelatin results in a gelled product (which
contains water) and one of ordinary skill in the art would . . . likewise
[have] recognized that use of a native gelatin, such as a bovine or
porcine gelatin[,] would have given the composition the required
gelling properties.
(Final Act. 7.)
We are not persuaded. While Pam shows that using native porcine or
bovine gelatin can create a gelled product (e.g., a chewy candy), it does not
suggest that any composition containing the amounts of acid, base, and gel-
forming gelatin recited in claim 21 in any proportion will necessarily be
capable of “forming a gel when it is dissolved in heated water to form an
aqueous composition and the aqueous composition is subsequently chilled.”
(Appeal Br. Ai (Claims App.).) Neither has the Examiner pointed to any
other evidence supporting this proposition. On the record before us,
therefore, we find that the Examiner has not established a prima facie case
that the above-recited limitation is merely an intended use or an inherent
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Application 13/113,174
property of a composition having the recited components, or that the cited
art suggests a composition that explicitly or inherently meets this limitation.
Scaltech Inc. v. Retec/Tetra L.L.C., 178 F.3d 1378, 1384 (Fed. Cir. 1999)
(holding that “[ijnherency may not be established by probabilities or
possibilities” and that “[t]he mere fact that a certain thing may result from a
given set of circumstances is not sufficient to establish inherency”) (citations
omitted).
SUMMARY
For the reasons above, we reverse the Examiner’s decision rejecting
claims 21—27 and 40-42.
REVERSED
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