10487317 (B.P.A.I. Jan. 21, 2009)

Ex Parte Leuenberger

Board of Patent Appeals and InterferencesJan 21, 2009

10487317 (B.P.A.I. Jan. 21, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BRUNO LEUENBERGER ____________ Appeal 2008-6069 Application 10/487,317 Technology Center 1700 ____________ Decided: January 21, 2009 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and KAREN M. HASTINGS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-16 and 24-33, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). Appeal No. 2008-6069 Serial No. 10/487,317 The Invention The Appellant claims a carotenoid and/or fat-soluble vitamin composition. Claim 1 is illustrative: 1. A composition comprising a carotenoid and/or fat-soluble vitamin in a matrix of a protein which is cross-linked with a reducing substance, and a solid vegetable fat. The References Schneider 5,356,636 Oct. 18, 1994 Akamatsu 5,780,056 Jul. 14, 1998 The Rejection Claims 1-16 and 24-33 stand rejected under 35 U.S.C. § 103 over Schneider in view of Akamatsu. OPINION We affirm the Examiner’s rejection. The Appellant addresses the claims as a group (Br. 15-23). We therefore limit our discussion to one claim, i.e., claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2007). Issue Has the Appellant shown reversible error in the Examiner’s determination that the combined disclosures of Schneider and Akamatsu would have led one of ordinary skill in the art to include a solid vegetable fat in Schneider’s vitamin and/or carotenoid stable dry powder? Findings of Fact Schneider discloses a composition comprising one or more fat soluble vitamins and/or one or more carotenoids, a gelatin matrix (which corresponds to the Appellant’s matrix of a protein) and reducing sugars Appeal No. 2008-6069 Serial No. 10/487,317 (col. 1, ll. 6-12). The vitamins can be in the form of solutions in oils (col. 3, ll. 60-62). Akamatsu discloses a microcapsule having an oil phase core comprising natural carotenoid and an edible oil, surrounded by an aqueous phase coating based on gelatin (col. 3, ll. 7-15). Akamatsu’s “term oil is used to encompass both oils and fats” (col. 3, ll. 33-34). “Exemplary plant oils are peanut oil, soybean oil, cotton seed oil, and corn oil” (col. 3, ll. 36- 37). Analysis The Appellant argues that “Schneider is completely silent as to any vegetable oil or fat” (Br. 17). If Schneider’s composition included an oil phase, the Appellant argues, it never would cure (Br. 19). Schneider discloses that the vitamins can be in the form of solutions in oils (col. 3, ll. 60-62). That disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to use any of the types of oil suitable for use in an edible composition, including vegetable oil. See KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007) (In making an obviousness determination one “can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). The Appellant’s argument that oil would prevent Schneider’s composition from curing is merely unsupported attorney argument. Such argument of counsel cannot take the place of evidence. See In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Moreover, that argument appears contradicted by the above-mentioned disclosure by Schneider that the vitamins can be in the form of solutions in oils. Appeal No. 2008-6069 Serial No. 10/487,317 The Appellant argues that there is nothing that would have led one of ordinary skill in the art to combine Schneider’s single phase aqueous dispersion cured at high temperature with Akamatsu’s two phase oil/water emulsion dried at low temperature (Br. 18-19). That argument is not well taken because the rejection is not based upon physically combining the compositions of Schneider and Akamatsu (Ans. 3). See In re Keller, 642 F.2d 413, 425 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference. . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art”). The Appellant argues that all of Akamatsu’s plant oils are liquids at minus 5°C or below and, therefore, are not a solid vegetable fat as required by the Appellant’s claims (Br. 22).1 Schneider discloses that the powders are made by dissolving gelatin in 50-70°C water and then adding the other components (col. 5, ll. 19-26). That disclosure would have led one of ordinary skill in the art, through no more than ordinary creativity, to use, as an alternative to adding the vitamins in solution in oil, adding them with a solid vegetable fat, such as a hardened version of Akamatsu’s plant oils, that melts at the process temperature. See KSR, 127 S. Ct. at 1741. The melted solid vegetable fat would perform the function of the oil and appears more consistent than an oil with the solid form of Schneider’s product (col. 1, l. 6). 1 The Appellant’s Specification states that “[t]he vegetable fat should be solid at room temperature (20-25°C)” (Spec. 2:11). Appeal No. 2008-6069 Serial No. 10/487,317 The Appellant argues that one of ordinary skill in the art would not have combined Akamatsu and Schneider because Akamatsu discloses that the gelatin’s jelly strength is at least 100 blooms (col. 2, ll. 33-34, 55-56), whereas Schneider’s particularly advantageous Bloom value of about 50 to about 250 blooms (col. 4, ll. 8-10) can be above or below 100 blooms (Br. 20). The Appellant does not explain, and it is not apparent, how the gelatin Bloom value pertains to the relevant issue of whether the applied references would have led one of ordinary skill in the art to include a solid vegetable fat in Schneider’s composition. Regardless, because Akamatsu’s Bloom value range overlaps that of Schneider, Akamatsu’s disclosure of the Bloom value would not have discouraged one of ordinary skill in the art from combining the disclosures of Schneider and Akamatsu. Conclusion of Law The Appellant has not shown reversible error in the Examiner’s determination that the combined disclosures of Schneider and Akamatsu would have led one of ordinary skill in the art to include a solid vegetable fat in Schneider’s vitamin and/or carotenoid stable dry powder. DECISION/ORDER The rejection of claims 1-16 and 24-33 under 35 U.S.C. § 103 over Schneider in view of Akamatsu is affirmed. It is ordered that the Examiner’s decision is affirmed. Appeal No. 2008-6069 Serial No. 10/487,317 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 cam STEPHEN M. HARACZ BRYAN CAVE 33RD FLOOR 1290 AVENUE OF THE AMERICAS NEW YORK NY 10104