Ex Parte K¿psel

Patent Trial and Appeal Board

Jun 29, 2018

12744571 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121744,571 05/25/2010
123223 7590 07/03/2018
Drinker Biddle & Reath LLP (WM)
222 Delaware A venue, Ste. 1410
Wilmington, DE 19801-1621
FIRST NAMED INVENTOR
Christian Kwsel
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.
074008-1022-US (286130) 3551
EXAMINER
LEE, WILLIAM Y
ART UNIT PAPER NUMBER
1629
NOTIFICATION DATE DELIVERY MODE
07 /03/2018 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):
IPDocketWM@dbr.com
penelope.mongelluzzo@dbr.com
DBRIPDocket@dbr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTIAN KOPSEL
Appeal2017-006733
Application 12/744,571 1
Technology Center 1600
Before FRANCISCO C. PRATS, MICHAEL J. FITZPATRICK, and
ELIZABETH A. LA VIER, Administrative Patent Judges.
PRATS, Administrative Patent Judge.
DECISION ON APPEAL
This appeal under 35 U.S.C. § 134(a) involves claims to
carotenoid-containing pulverulent (powder) compositions. The Examiner
rejected the claims for obviousness.
We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner's rejection of
claims 14--21and26-362 under 35 U.S.C. § 103(a) as being obvious over
Voelker, 3 Auweteret al., 4 and Musaeus et al. 5 Final Act. 2-17.
1 Appellant identifies BASF SE as the real party in interest. Br. 2.
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Application 12/744,571
Claims 14 and 35, the independent claims on appeal, are
representative and read as follows:
14. A pulverulent composition comprising:
1 to 20% by weight of at least one carotenoid
selected from the group
consisting of B-carotene,
astaxanthin, canthaxanthin,
citranaxanthin, lycopene and
lutein
3 to 60% by weight of modified starch,
20 to 60% by weight of glucose,
0.5 to 10% by weight of at least one antioxidant, and
0.5 to 6.5% by weight of water-residual moisture,
wherein the percentages by weight relate to the dried
powder still comprising residual moisture and wherein
the weight ratio of the carotenoids to the modified starch
is 1:3 to 1:7.
35. A pulverulent composition comprising:
1 to 20% by weight of at least one carotenoid
selected from the group
consisting of B-carotene,
astaxanthin, canthaxanthin,
citranaxanthin, lycopene and
lutein,
3 to 60% by weight of modified starch,
3 to 60% by weight of glucose,
0.5 to 10% by weight of at least one antioxidant, and
0.5 to 6.5% by weight of water-residual moisture,
wherein the percentages by weight relate to the dried
powder still comprising residual moisture and wherein
2 According to the Amendment filed Sept. 28, 2015, Claims 1-13 and 25
have been cancelled and claims 22-24 have been withdrawn.
3 WO 20071009601 Al (published Jan. 25, 2007).
4 US 2002/0110599 Al (published Aug. 15, 2002); hereinafter "Auweter".
5 US 2008/0026124 Al (published Jan. 31, 2008); hereinafter "Musaeus".
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Application 12/744,571
the weight ratio of the carotenoids to the modified starch
is 1 :3 to 1 :7 produced by a process comprising the steps
a) dissolving the carotenoids in a water-miscible organic
solvent or in a mixture of water and a water-miscible
organic solvent at temperatures above 30°C,
b) mixing the solution obtained according to a) with an
aqueous molecularly disperse or colloidally disperse
solution of a mixture of glucose and the modified starch,
wherein the hydrophobic phase of the carotenoids is
formed as nanodisperse phase, and
c) converting the dispersion formed into a dry powder by
separating off the majority of the water and, optionally,
solvents additionally used, and subsequent drying.
Br. 18, 20-21.
DISCUSSION
The Examiner's Prima Facie Case
The Examiner found that Voelker described a carotenoid-containing
powder composition having all of the ingredients recited in Appellant's
claim 14, in the claimed amounts, except that the concentration range of
glucose described in Voelker was lower than the range recited in claim 14.
Final Act. 3--4. 6
As evidence that the composition of Appellant's claim 14 nonetheless
would have been obvious, the Examiner cited Auweter as disclosing that
including plasticizers, in the form of sugars such as glucose at a
concentration range overlapping the range recited in claim 14, improves the
stability of carotenoid-containing powder compositions similar to those
described in Voelker. Id. at 5.
6 We herein refer to the Final Office Action, mailed Jan. 5, 2016 ("Final
Act."); Appeal Brief, filed Jul. 28, 2016 ("Br."); Examiner's Answer, mailed
Jan. 13, 2017 ("Ans."). No Reply Brief has been filed.
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Application 12/744,571
The Examiner reasoned, therefore, that it would have been obvious to
include glucose in Voelker' s powder compositions at the concentration
ranges taught in Auweter as imparting improved stability. Id. at 6.
As to Appellant's claim 3 5, the Examiner advanced a similar rationale
for including glucose in Voelker's powder composition. Id. at 13-14. As to
the limitations recited in claim 3 5 reciting the process by which the claimed
composition is made, the Examiner found that Musaeus taught preparing
carotenoid-containing powder compositions using the steps claimed. Id. at
15-16.
The Examiner noted in particular that "the claimed pulverulent
compound is taught by Voelker and see also the teachings of '599 US
publication (Auweter). Yet even if these process steps were accorded any
patentable weight, they would remain obvious as taught by the combination
of Voelker, '599 US publication (Auweter) and Musaeus as described
above." Id. at 16.
Analysis
As stated inin re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden ... of presenting a
prima facie case of unpatentability ....
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In the present appeal, having carefully considered the arguments and
evidence advanced by Appellant and the Examiner, Appellant does not
persuade us that the preponderance of the evidence fails to support the
Examiner's conclusion obviousness.
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Claim 14
As the Examiner found, and Appellant does not dispute, Voelker
describes carotenoid-containing powder compositions having each of the
ingredients recited in Appellant's claim 14, at concentration ranges
overlapping the ranges recited in claim 14, with the exception that Voelker's
composition includes a mono- or disaccharide at concentrations of 5 to about
15 percent by weight (Voelker 4), whereas claim 14 requires about 20 to
60% by weight of glucose (Br. 18).
Voelker lists glucose among a number of other mono- and
disaccharides that may be included Voelker's compositions. Voelker 3.
Given Voelker's express disclosure that glucose is a useful
monosaccharide for inclusion in its compositions, Appellant does not
persuade us (see Br. 7-8) that Voelker's alleged failure to use glucose in its
examples constitutes a teaching away from including glucose in the
disclosed compositions. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir.
2004) ("The prior art's mere disclosure of more than one alternative does not
constitute a teaching away from any of these alternatives because such
disclosure does not criticize, discredit, or otherwise discourage the solution
claimed .... ").
As the Examiner found, moreover, Auweter provides ample reason for
including glucose in Voelker's compositions, at a concentration range
overlapping the range recited in claim 14. Final Act. 6.
The Supreme Court has explained that "if a technique has been used
to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond his or her skill."
KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
In the present case, Auweter, like Voelker, discloses "the preparation
of carotenoid-containing dry powders." Auweter i-f 108. Auweter discloses
that the powders are produced by preparing a colloid composition containing
the carotenoid, and then removing the solvent to yield the dried product. Id.
,-r,-r 11 0-114.
Auweter discloses that "[t]o increase the mechanical stability of the
end product, it can be expedient in some cases to add a plasticizer to the
colloid, such as sugars or sugar alcohols, for example sucrose, glucose,
lactose, invert sugar, sorbitol, mannitol or glycerol." Id. i-f 123 (emphasis
added).
states:
As to the amount of stabilizing plasticizer to be included, Auweter
The ratio of protecting colloid and plasticizer to
carotenoid is generally selected in such a manner that the dry
powder comprises from 0.5 to 65% by weight, preferably from
1 to 25% by weight, of carotenoid, from 10 to 50% by weight,
preferably from 15 to 35% by weight, of a protecting colloid,
from 20 to 70% by weight, preferably from 30 to 60% by
weight, of a plasticizer, all percentages based on the dry mass
of the powder, with or without minor amounts of a stabilizer.
Id. i-f 183 (emphasis added).
Thus, as is evident, Auweter discloses that when preparing
carotenoid-containing powder compositions, the stability of the
compositions can be increased by including plasticizers, in the form of
sugars such as glucose, at a concentration range of 30 to 60% by weight of
the powder. We therefore agree with the Examiner that an ordinary artisan
had good reason for, and a reasonable expectation of success in, modifying
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Voelker's carotenoid-containing powder compositions to include glucose at
a concentration range of 30 to 60% by weight, a range that significantly
overlaps the glucose concentration range of 20 to 60% recited in Appellant's
claim 14.
That the glucose concentration ranges of Voelker and Auweter might
differ (see Br. 9-10) does not negate Auweter's teaching that including
glucose in carotenoid-containing powder compositions at a concentration
range significantly overlapping the range recited in Appellant's claim 14
increases the stability of the composition. Moreover, because the
Examiner's conclusion of obvious is based on the noted teachings in the
cited prior art, Appellant does not persuade us that the Examiner's
conclusion is based on improper hindsight. See Br. 10-11.
In sum, because Appellant does not persuade us, for the reasons
discussed, that the preponderance of the evidence fails to support the
Examiner's conclusion of obviousness as to claim 14, we affirm the
Examiner's rejection of claim 14. Because they were not argued separately,
claims 15-21, 26-28, 33, 34, and 36 fall with claim 14. 37 C.F.R.
§ 41.31(c)(l)(iv).
Claims 29 and 30
Appellant's claim 29 recites, "[t]he pulverulent composition according
to claim 14, wherein glucose is present in an amount from 30 to 60% by
weight." Br. 19.
As is evident, the glucose concentration range recited in Appellant's
claim 29 is identical to the plasticizer (glucose) concentration range
disclosed in Auweter (see Auweter i-f 183) as being useful for increasing the
stability of carotenoid-containing powder compositions. Appellant,
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therefore, does not persuade us (see Br. 11-12) that the cited references fail
to suggest the composition recited in claim 29, nor are we persuaded that the
rejection is based on hindsight. Accordingly, we affirm the Examiner's
rejection of claim 29. Because claim 30 was argued in the same claim
grouping (see Br. 11 ), claim 30 falls with claim 29.
Claims 31 and 32
Appellant's claim 31 recites, "[t]he pulverulent composition according
to claim 14, wherein glucose is present in an amount from 35 to 60% by
weight." Br. 19.
As is evident, the glucose concentration range recited in Appellant's
claim 31 significantly overlaps the plasticizer (glucose) concentration range
disclosed in Auweter (see Auweter i-f 183) as being useful for increasing the
stability of carotenoid-containing powder compositions. Appellant,
therefore, does not persuade us (see Br. 12-14) that the cited references fail
to suggest the composition recited in claim 31, nor are we persuaded that the
rejection is based on hindsight. Accordingly, we affirm the Examiner's
rejection of claim 31. Because claim 32 was argued in the same claim
grouping (see Br. 12), claim 32 falls with claim 31.
Claim 35
Appellant's claim 35 recites a carotenoid-containing powder
composition similar to that recited in claim 14, discussed above, except that
claim 3 5 recites a broader range as to glucose concentration (3 to 60% by
weight), and recites three specific steps by which the powder composition
must be prepared. Br. 20-21.
Voelker discloses powder compositions containing each of the
ingredients recited in claim 35, in concentrations overlapping the ranges
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recited in claim 35. See Voelker 3--4. We note in particular that claim 35's
glucose concentration range (3 to 60% by weight (Br. 20)), overlaps the
monosaccharide range taught in Voelker ( 5 to 15 weight percent (Voelker
4)), and that Voelker teaches glucose as a suitable monosaccharide (id. at 3).
Voelker, thus, suggests a composition having all of the ingredients recited in
claim 35, at the concentrations recited in the claim.
As to the process limitations in claim 35, it is "well settled that the
presence of process limitations in product claims, which product does not
otherwise patentably distinguish over the prior art, cannot impart
patentability to that product." SmithKline Beecham Corp. v. Apotex Corp.,
439 F.3d 1312, 1318 (Fed. Cir. 2006) (quoting Jn re Stephens, 345 F.2d
1020, 1023 (CCPA 1965)).
As explained further in In re Thorpe, 777 F.2d 695, 697 (Fed. Cir.
1985) (citations omitted, emphasis added):
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based
on the product itself. ... The patentability of a product does not
depend on its method of production .... If the product in the
product-by-process claim is the same as or obvious from a
product of the prior art, the claim is unpatentable even though
the prior product was made by a different process.
In the present case, although the Examiner found the process
limitations of claim 35 were entitled to little weight in view of the cited
references' suggestion of a composition having all of the ingredients
required by the claim at the claimed concentrations, the Examiner
nonetheless found that Musaeus disclosed preparing carotenoid-containing
powder compositions according to the process steps recited in claim 35.
Final Act. 15-16.
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Appellant does not address the Examiner's findings regarding
Musaeus. Rather, Appellant acknowledges that the Examiner "is correct that
the claims are product[-]by[-]process claims, but the [A ]ppellant believes
that the product of Voelker is different than the [A ]ppellant' s claimed
product." Br. 15.
In particular, Appellant contends that Voelker's process, which
includes formation of an emulsion, would produce a product distinct from
that recited in claim 35. Id. at 15-16. Consequently, Appellant contends,
with removing step a) in claim 35 the person of ordinary skill in
the art would no longer consider Voelker in order to find
inspiration for using glucose as a sugar, since Voelker deals
with "emulsions" and the [A ]ppellant is working with
"suspensions". Therefore, there are substantial differences
between an emulsion and a suspension. The [A ]ppellant
believes that the composition made by the [A ]ppellant' s
claimed process is different than the product made by Voelker
process.
Id. at 16.
Appellant, however, does not identify any specific evidence of record
supporting the asserted belief that the composition suggested by Voelker
would be different than the composition recited in claim 35. To the
contrary, on this record, Appellant's assertions in that regard are
unsupported attorney argument which is entitled to little persuasive weight.
See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997).
In sum, Appellant does not address the Examiner's finding that the
process steps recited in claim 3 5 were known in the art for producing
carotenoid-containing powder compositions. Appellant moreover does not
advance any persuasive evidence supporting their position that the product
suggested by Voelker is different than the product recited in claim 35.
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Appellant, therefore, does not persuade us that the preponderance of the
evidence fails to support the Examiner's conclusion of obviousness as to
claim 35. Accordingly, we affirm the Examiner's rejection of claim 35 over
the cited references.
SUMMARY
For the reasons discussed, we affirm the Examiner's rejection of
claims 14--21and26-36 under 35 U.S.C. § 103(a) for obviousness over
Voelker, Auweter, and Musaeus.
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).
AFFIRMED
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