Ex Parte Maruyama et al

Patent Trial and Appeal Board

Apr 14, 2017

12281402 (P.T.A.B. Apr. 14, 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.
12/281,402 09/02/2008 Eizo Maruyama 331218US0PCT 1819
22850 7590 04/18/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EIZO MARUYAMA,
YUKITERU SUGIYAMA, KENICHI SHIKATA,
KEIJI SHIBATA, and HIDEAKIUEOKA
Appeal 2015-003008
Application 12/281,402
Technology Center 1700
Before ADRIENE LEPIANE HANLON, TERRY J. OWENS, and
JAMES C. HOUSEL, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1—7, 10-12, and 19—21.1 A hearing was held on
March 14, 2017. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 13, 14, and 16—18 are also pending but have been withdrawn from
consideration.
Appeal 2015-003008
Application 12/281,402
The claims on appeal stand rejected as follows:
(1) claims 1,3,6, and 10-12 under 35 U.S.C. § 103(a) as unpatentable
over Hara2 in view of Burdick et al.;3 and
(2) claims 2, 4, 5, 7, and 19—21 under 35 U.S.C. § 103(a) as unpatentable
over Hara in view of Burdick and Nicolas et al.4
The Appellants present arguments in support of the separate patentability of
each of the independent claims on appeal (i.e., claims 1, 2, 3, and 5). We address
those claims below.
B. DISCUSSION
1. Claim 1
Claim 1 reads as follows:
1. A process for producing a purified tea extract, comprising
adsorbing a tea extract on a synthetic adsorbent, washing the
synthetic adsorbent with a basic aqueous solution or ethanol at a
solvent concentration of from 0 to 5 wt%, contacting the synthetic
adsorbent with ethanol at a solvent concentration of from 10 to 80
wt% to elute non-polymer catechins, and then bringing the eluate into
contact with activated carbon in ethanol, wherein the synthetic
adsorbent is an acrylic resin, methacrylic resin, polyvinyl resin or
styrene resin.
App. Br., Claims Appendix i (emphasis added).5
The Examiner finds Hara teaches a process for purifying tea extract. The
Examiner finds Hara teaches treating a concentrated solution of tea extract with
activated carbon before subjecting the extract to a liquid chromatographic
2 US 4,613,672, issued September 23, 1986 (“Hara”).
3 US 7,012,149 B2, issued March 14, 2006 (“Burdick”).
4 US 5,820,901, issued October 13, 1998 (“Nicolas”).
5 Appeal Brief dated June 27, 2014.
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Application 12/281,402
treatment. Final 2—3 (citing Hara, col. 2,11. 53—57 and col. 2,1. 64—col. 3,1. 3).6 In
contrast, claim 1 recites that a tea extract is adsorbed on a synthetic adsorbent
before bringing the eluate into contact with activated carbon. App. Br., Claims
Appendix i. Nonetheless, the Examiner concludes:
[I]t would have been obvious to one having ordinary skill in the art to
switch the order or [sic, of] operations. To switch the order of
performing process steps, i.e. the order of bringing the solutions in
contact prior to step containing use of activated carbon, would be
obvious absent any clear and convincing evidence and/or arguments
to the contrary....
Final 3. The Examiner relies on MPEP § 2144.04 and In re Gibson, 39 F.2d 975
(CCPA 1930) for support. Final 3.
In Gibson, the Court stated that “[i]t is conceded that the [prior art] discloses
the same constituents used in substantially the same proportions [as claimed]. The
only claimed difference between appellant and [the prior art] is the process or order
in which the constituents are put together.” 39 F.2d at 976. The Court agreed with
the Board that “the proper sequence of adding the three ingredients to obtain the
most satisfactory mixture of three constituents is within the expected skill and
judgment of a mechanic and such choice of sequence does not involve invention in
making a mix of the constituents named in [the prior art].” Gibson, 39 F.2d at 976.
Similarly, in In re Burhans, 154 F.2d 690, 692 (CCPA 1946), the Court
determined that the claimed order of steps was not patentable “in the absence of
any proof in the record that the order of performing the steps produces any new
and unexpected results.”
In this case, the Appellants direct our attention to a Declaration of Eizo
Maruyama under 37 C.F.R. § 1.132 dated December 13, 2012 (“Maruyama
6 Final Office Action dated January 3, 2014.
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Application 12/281,402
Declaration”). The Appellants argue that the Marayama Declaration “illustrates
the criticality of the order of performing the claimed steps.” App. Br. 6. More
specifically, the Appellants argue:
[I]f the treatment with the synthetic adsorbent is conducted after the
treatment with the activated carbon, it leads to an undesirable color
tone. The present invention, however, wherein a specific process
order of conducting the treatment with the synthetic adsorbent after
the treatment with the activated carbon, unexpectedly provides a
dramatically improved color tone, (see Declaration at paragraphs 7-
10)[.]
App. Br. 6.
The Examiner “admits there is a difference, it just is not unexpected.” Ans.
13.7 The Examiner finds that “[mjaking alterations in factors regarding the
separation techniques ... is well known within the art and obvious to have made
changes as claimed .... Such conditions like the pH, time it takes the solution to
pass through a column, affect the contaminates removed and the desired eluate for
example.” Ans. 13.
In response, the Appellants argue:
[Tjhese allegations have no basis or bearing in this case. The fact is
that the Declaration provides a clear and direct comparison between
the invention as claimed and the method that is disclosed in the cited
art. The Declaration also shows that the claimed order of steps
unexpectedly provides a dramatically improved color tone. There is
nothing in any of the cited art that would permit the artisan to foresee
this result and the Examiner has offered no reasons to rebut the
statement of unexpected results in the Declaration.
Reply Br. 108.
7 Examiner’s Answer dated November 7, 2014.
8 Reply Brief dated December 19, 2014.
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The Appellants’ arguments are persuasive of reversible error. The
Maruyama Declaration presents data for Test A, Test B, and Examples 1 and 2
from the Appellants’ Specification. According to the Maruyama Declaration:
Experiment of Test A is conducted by transposing the orders of
“treatment with the synthetic adsorbent” and “the treatment with the
activated carbon” described in Example 1 according to the present
application into the inverse orders. . . . [Experiment B is conducted
by transposing the orders of “treatment with the synthetic adsorbent”
and “the treatment with the activated carbon” described in Example 2
according to the present application into the inverse order.
Maruyama Decl. 1 8.
The Maruyama Declaration states that “[t]he present invention . . . wherein a
specific process order of conducting the treatment with the synthetic adsorbent
after the treatment with the activated carbon, unexpectedly provides a dramatically
improved color tone.” Maruyama Decl. 110.
The Examiner finds “[t]he declaration isn’t commensurate in scope with the
claims.” Ans. 12. The Examiner, however, does not explain, in any detail, why
“[t]he declaration isn’t commensurate in scope with the claims.” See Ans. 12.
The Examiner also finds the declaration “offers [no] comparative data
sourced from the applied art.” Ans. 12. More specifically, the Examiner explains
that “[t]he declaration . . . shows comparisons to what happens when the subjection
of the extract to synthetic adsorbent is performed last versus first as claimed, which
is not pertinent to the way the Examiner applied the combinations of at least Hara
and Burdick.” Ans. 12.
As we understand it, the Examiner would have the Appellants compare the
claimed invention to the process of Hara, as modified by the Examiner, wherein a
tea extract is adsorbed on a synthetic adsorbent and the eluate is subsequently
brought into contact with activated carbon. However, such a comparison amounts
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Application 12/281,402
to comparing the claimed invention to itself and is not required to show unexpected
results.9 See App. Br. 11 (“the Examiner is looking for Appellants to compare
their invention to itself rather than what Appellants actually did, which is [to]
compare [their invention] to a representation of the Hara disclosure”).
On balance, the evidence of record weighs against the Examiner’s
conclusion of obviousness. Therefore, the § 103(a) rejections of independent claim
1 and dependent claims 4, 6, 7, 10—12, and 19 are not sustained.10
2. Claim 3
Claim 3 reads as follows:
3. A process for producing a purified tea extract, comprising
adsorbing a tea extract on a synthetic adsorbent, washing the synthetic
adsorbent with ethanol at a solvent concentration of from 0 to 5 wt%,
and then contacting the synthetic adsorbent with a basic aqueous
solution or ethanol at a solvent concentration of from 10 to 80 wt% to
fractionate a tea extract having a percentage of non-gallates as non­
polymer catechins in a range of from 55 to 100 wt% and a
caffeine/non-polymer catechins of from 0 to 0.15, wherein the
synthetic adsorbent is an acrylic resin, methacrylic resin, polyvinyl
resin or styrene resin.* [11]
App. Br., Claims Appendix i (emphasis added).
The Examiner finds Hara teaches “bringing a washing basic aqueous or
organic solvent solution into contact with tea extract” but does not teach “bringing
9 See In re Chapman, 357 F.2d 418, 422 (CCPA 1966) (Appellant not required to
compare “the results of the invention with the results of the invention”).
10 The Examiner does not rely on Nicolas to cure the deficiency in the combination
of Hara and Burdick identified above.
11 We interpret the claim limitation “caffeine/non-polymer catechins of from 0 to
0.15” recited in claim 3 to mean that a ratio of caffeine to non-polymer catechins is
from 0 to 0.15. See Spec. 6,11. 1—7.
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Application 12/281,402
the solutions into contact with the synthetic adsorbent” as recited in claim 3. Final
6.
The Examiner finds Burdick teaches “contacting [a] synthetic adsorbent with
ethanol at a solvent concentration of from 10 to 80 wt% to equilibrate a mixture
and purify the EGCG [(—)-epigallocatechin gallate] tea in the chromatography
column.” Final 6 (citing Burdick Example 4). The Examiner concludes that it
would have been obvious to one of ordinary skill in the art to modify Hara’s
process to purify the EGCG tea using the synthetic adsorbent disclosed in Burdick.
Final 7.
The Examiner finds:
The combination [of Hara and Burdick] teaches bringing the
solutions into contact with the synthetic adsorbent... to thus
inherently fractionate a tea extract having a percentage of non-gallates
as non-polymer catechins in a range from 55 to 100% and a
caffeine/non-polymer catechins of not greater than 0.15.
Final 7 (emphasis added).
The Appellants argue:
The present invention defines that a percentage of non-gallates
is from 55 to 100 %. Burdick is intended to obtain a gallate-type
catechin. Thus, in view of a percentage of non-gallates, the disclosure
of Burdick teaches away from the present invention. . . . [T]he
present invention relates to a process for producing the product with a
high percentage of the non-gallates, whereas Burdick relates to a
process for producing the product with a high percentage of gallates.
In this regard, Appellants point to Example 2 of Burdick which
provides a percentage of non-gallates of 7.3 %.
App. Br. 12 (emphasis and footnote omitted).
In response, the Examiner finds Hara “teaches isolated epicatechin which
would read on the percentage claimed.” Ans. 13 (citing Hara, col. 3,11. 6—13).
The portion of Hara relied on by the Examiner does not identify a percentage of
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Application 12/281,402
non-gallates as non-polymer catechins separated by the disclosed liquid
chromatographic treatment. Rather, Hara merely discloses that tea catechins are
separated into four substances, i.e., epicatechin, epigallocatechin, epicatechin
gallate, and epigallocatechin gallate. Hara, col. 3,11. 6—36.
On this record, the Examiner has not provided a sufficient factual basis to
support a finding that Hara’s process, either alone or in combination with the
synthetic adsorbent disclosed in Burdick, inherently results in fractionating a tea
extract having a percentage of non-gallates as non-polymer catechins within the
range recited in claim 3. For that reason, the § 103(a) rejection of claim 3 is not
sustained. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner
bears the initial burden of presenting a prima facie case of unpatentability).
3. Claim 2
Claim 2 reads as follows:
2. A process for producing a purified tea extract, comprising
adsorbing a tea extract on a synthetic adsorbent, eluting said tea
extract with a basic aqueous solution by contacting the synthetic
adsorbent with said basic aqueous solution to elute non-polymer
catechins, adjusting the pH of the eluate to 7 or lower, concentrating
the eluate, and then subjecting the eluate to solid-liquid separation to
remove precipitated and suspended matters, wherein the synthetic
adsorbent is an acrylic resin, methacrylic resin, polyvinyl resin or
styrene resin.
App. Br., Claims Appendix i (emphasis added).
The Examiner finds Hara does not teach adjusting the pH of the eluate to 7
or lower as recited in claim 2. Final 10. Thus, the Examiner turns to Nicolas. The
Examiner finds Nicolas “teaches that the finalized tea extract would have the pH
claimed (4.5-5.5); hence the pH would had to have been adjusted at some point.”
Final 10 (citing Nicolas, col. 5,11. 41—43). Based on the teachings in Nicolas, the
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Application 12/281,402
Examiner concludes that it would have been obvious to one of ordinary skill in the
art to modify the process of Hara to include the step of adjusting the pH as
claimed. Final 10.
The Appellants argue that the pH disclosed in Nicolas relates to the pH of a
reconstituted tea powder, not the pH of the eluate. App. Br. 16. Claim 2 recites
that the pH of the eluate is adjusted to 7 or lower. The Examiner does not direct us
to any portion of Nicolas disclosing an eluate having a pH within the claimed
range.12 Rather, the Examiner merely speculates that “to adjust the pH of the
solution [in Nicolas within the claimed range] would have been conceivably
reached at some point.” Ans. 14. Such speculation is not sufficient to establish
inherency or obviousness. See In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)
(“Inherency . . . may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” (citing Hansgirg v. Kemmer, 102 F.2d 212, 214 (CCPA 1939))); In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“rejections on obviousness grounds
cannot be sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness”).
The § 103(a) rejection of independent claim 2 and dependent claims 20 and
21 is not sustained.
4. Claim 5
Claim 5 reads as follows:
12 The Examiner finds Nicolas teaches eluting the tea extract in Example 1. Ans.
15 (citing Nicolas col. 6,11. 10-15). However, the portion of Nicolas relied on by
the Examiner is directed to determining the enzymatic activity of the tannase, not
preparing a tea extract. See Nicolas, col. 5,1. 60-col. 6,1. 13.
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5. A process for producing a purified tea extract, comprising
treating a tea extract with an enzyme having tannase activity,
adsorbing the tea extract on a synthetic adsorbent, and then eluting
said tea extract with a basic aqueous solution by contacting the
synthetic adsorbent with said basic aqueous solution to elute non­
polymer catechins, wherein the synthetic adsorbent is an acrylic resin,
methacrylic resin, polyvinyl resin or styrene resin.
App. Br., Claims Appendix ii (emphasis added).
The Examiner finds Hara does not teach treating a tea extract with an
enzyme having tannase activity as recited in claim 5. Final 11. The Examiner,
however, finds Nicolas teaches the claimed treating step. Final 11—12. The
Examiner concludes that it would have been obvious to one of ordinary skill in the
art to modify Hara’s process to include a tannase treatment step for the reasons
provided by Nicolas (i.e., to reduce the formation of tea cream13). Final 12.
The Examiner also finds Hara does not teach adsorbing a tea extract on a
synthetic adsorbent as recited in claim 5. Final 12. The Examiner finds Burdick
teaches that limitation. The Examiner concludes that it would have been obvious
to one of ordinary skill in the art to modify Hara’s process “to include a synthetic
adsorbent as claimed because it aids in separating EGCG via chromatography.”
Final 12. The Examiner finds the combination of Hara and Burdick “teaches
bringing [a basic aqueous] solution into contact with the synthetic adsorbent, to
inherently elute non-polymer catechins.” Final 12.
The Appellants argue that “neither Hara nor Nicolas disclose separately
hydrolyzing}141 followed by adsorption on a synthetic adsorbent with elution by
13 Nicolas discloses that “insoluble components are commonly designated by the
expression ‘tea cream.’” Nicolas, col. 1,11. 20-21.
14 The treating step recited in claim 5 is a hydrolysis step. See Spec. 11,11. 20—26
(disclosing that hydrolysis can be conducted by treatment with an enzyme having
tannase activity).
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contacting with a basic aqueous solution.” App. Br. 16 (emphasis added). The
Appellants argue that Nicolas immobilizes tannase on a synthetic adsorbent and
“specifically caution[s] against adsorption of the tea extract to the adsorbent with
the immobilized tannase.” App. Br. 17 (emphasis omitted).
The Appellants’ argument fails to appreciate the rejection on appeal. The
Examiner does not rely on Nicolas to teach the adsorption step recited in claim 5.
Rather, the Examiner finds Nicolas teaches the claimed treatment step and finds
Hara in combination with Burdick teaches the claimed adsorption step. See Ans.
15—16 (finding that Hara and Burdick teach the claimed adsorption step and
Nicolas teaches a separate hydrolysis treatment step that “provides a benefit in
affecting tannase and effecting enzymatic activity”). On this record, the
Appellants have not shown that one of ordinary skill in the art would have been
discouraged from including both the claimed treatment step and the claimed
adsorption step in Hara’s process. Therefore, the § 103(a) rejection of claim 5 is
sustained.
C. DECISION
The Examiner’s decision to reject claims 1,3,6, and 10—12 under 35 U.S.C.
§ 103(a) as unpatentable over Hara in view of Burdick is reversed.
The Examiner’s decision to reject claims 2, 4, 7, and 19—21 under 35 U.S.C.
§ 103(a) as unpatentable over Hara in view of Burdick and Nicolas is reversed.
The Examiner’s decision to reject claim 5 under 35 U.S.C. § 103(a) as
unpatentable over Hara in view of Burdick and Nicolas is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED-IN-PART
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