Ex Parte Nakhasi et al

Board of Patent Appeals and Interferences

Jun 1, 2012

11375162 (B.P.A.I. Jun. 1, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/375,162 03/14/2006 Dilip K. Nakhasi 11631-033-999 3129
20583 7590 06/04/2012
JONES DAY
222 EAST 41ST ST
NEW YORK, NY 10017
EXAMINER
KING, FELICIA C
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
06/04/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DILIP K. NAKHASI, ROGER L. DANIELS, and
DANIELLE N. CORBIN
____________

Appeal 2010-008882
Application 11/375,162
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/375,162

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-12 and 14-25. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.1
The invention is directed to oil compositions containing a structured
lipid component formed by random interesterification of a reaction charge of
one or more isomers of conjugated linoleic acid (CLA) in addition to
medium chain triglyceride and long chain domestic oil. The invention
further relates to a method of making a consumable oil product in which a
reactant charge of medium chain triglyceride, long chain domestic oil, and at
least one isomer of CLA are randomly interesterified. (Spec. ¶¶ [0001],
[0006], and [0007]). The oil composition may include a phytosterol ester
and/or additional edible oils. (Spec. ¶ [0013]).
Claims 1 and 21, reproduced below, are illustrative of the subject
matter on appeal.

1. An oil composition comprising a randomly
interesterified structured lipid component; said structured lipid
component being a reaction product of an interesterification
reactant charge, said reactant charge comprising (i) an amount
of a medium chain triglyceride having fatty acid chains from C6
to C12 in length, (ii) an amount of a long chain domestic oil
having fatty acid chains of at least C 16 in length, and (iii) an
amount of a conjugated linoleic acid material comprising one or
more isomers of conjugated linoleic acid.

1 Our decision makes reference to Appellant’s Brief (App. Br.) filed
November 2, 2009, Appellants’ Reply Brief (Rep. Br.) filed April 1, 2010,
and the Examiner’s Answer (Ans.) mailed February 4, 2010.

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21. A method for making a consumable oil product,
comprising: providing a reactant charge comprising an amount
of medium chain triglycerides having carbon chain lengths of
between C6 and C12, an amount of domestic oil having carbon
chain lengths of between C 16 and C22, and an amount of at
least one isomer of conjugated linoleic acid; introducing said
reactant charge to a reaction location; and randomly
interesterifying said reactant charge to form a randomized
interesterified structured lipid component, said randomly
interesterified structured lipid component being a consumable
oil product.
REJECTION
The Examiner relies on the following references as evidence of
obviousness:
Nakhasi US 2005/0196512 A1 Sep. 8, 2005
Brown 5,288,619 Feb. 22, 1994
Lee WO 2005/052102 Jun. 9, 2005

Braun, W. Q., "Interesterification of Edible Fats", The Journal of
American Oil Chemists' Society, vol. 37, pgs. 598-601 (November 1960).

Under 35 U.S.C. § 103(a), the Examiner rejects claims 1-10, 12, and
14-25 as unpatentable over Nakhasi and Brown, further in view of Braun.
Further under 35 U.S.C. § 103(a), the Examiner rejects claim 11 as
unpatentable over Nakhasi, Brown, and Braun, as applied to claim 1, further
in view of Lee.
We will sustain these rejections for the reasons expressed in the
Answer with the comments below added for emphasis.
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Appellants do not present arguments for the separate patentability of
claims 1-12 and 14-252. (App. Br. 8-14; Reply Br. 5-7). For purposes of
this appeal, we select claim 1 to decide the issues raised by the first ground
of rejection. Claims 2-12 and 14-25 stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(1)(vii) (“When multiple claims subject to the same ground
of rejection are argued as a group by appellant, the Board may select a single
claim from the group of claims that are argued together to decide the appeal
with respect to the group of claims as to the ground of rejection on the basis
of the selected claim alone.”).
ISSUE
Have the Appellants demonstrated that the Examiner reversibly erred
by: (1) relying on improper hindsight reasoning in determining it would
have been obvious to have included CLA in Nakhasi’s composition; (2)
failing to take into account that Brown specifically teaches away from the

2 We note that both the Appeal Brief and the Reply Brief contain
sections addressing the separate § 103 rejection of claim 11 (App. Br. 13-14;
Reply Br. 6-7). However, separate patentability is not argued for claim 11.
“A statement which merely points out what a claim recites will not be
considered an argument for separate patentability of the claim.” 37 C.F.R. §
41.37(c)(1)(vii)(last sentence). See In re Lovin, 652 F.3d 1349, 1357 (Fed.
Cir. 2011) (“we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art”). Appellants’ sections addressing the
separate §103 rejection of claim 11 (App. Br. 13-14; Reply Br. 6-7) are
exemplary of this failure to present an argument for separate patentability.
As to claim 11, Appellants present no substantive arguments regarding the
claim other than merely restating the limitations recited in this claim and a
naked assertion that the additionally applied reference to Lee fails to cure the
deficiencies argued with regard to the §103 rejection of claim 1 from which
claim 11 depends.
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random interesterification of a reactant charge that includes CLA in addition
to medium chain triglycerides and long chain domestic oils; and/or (3)
failing to give sufficient weight to Appellants’ evidence of unexpected
results?3
ANALYSIS
The Examiner found that Nakhasi discloses an oil composition
comprising a randomly interesterified structured lipid component, formed
from a reactant charge containing medium chain triglycerides and a long
chain domestic oil (Ans. 3). The Examiner admitted that Nakhasi fails to
teach the inclusion of CLA in the reactant charge (id.). However, the
Examiner directs attention to Brown, which describes the inclusion of CLA
in oil compositions for its anti-carcinogenic and anti-oxidant properties,
though the composition was subjected to directed, rather than random,
interesterification (id. at 4). Further, the Examiner points to Braun who
describes random interesterification as appropriate for liquid phase fats and
directed/ non-random interesterification as appropriate for more solid phase
fats (id.). The Examiner concludes that it would have been obvious to one
of ordinary skill in the art to have included CLA in Nakhasi’s reactant
charge to gain the known health benefits disclosed by Brown, wherein
interesterification would be random, rather than directed, given that
Nakhasi’s oil composition is in the liquid phase (id.).

3 Although Appellants identified the second §103 rejection as
presenting a separate issue, the Appeal Brief failed to separately argue the
sole claim that is the subject of this issue. Accordingly, our decision is
limited to the first §103 rejection only. (App. Br. 5)
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Appellants argue that the Examiner has failed to establish a prima
facie case of obviousness (App. Br. 6-10; Reply Br. 2-4). In particular,
Appellants assert that there is neither motivation nor a reasonable
expectation of success in making the combination set forth in this rejection,
and that the rejection is the product of improper hindsight (App. Br. 9; Reply
Br. 4). Appellants also argue that there is no explanation for including CLA
in Nakhasi’s oil composition (App. Br. 8-10; Reply Br. 3-4).
We have considered these arguments, in the context of the entirety of
the record before us, and find no reversible error in the Examiner’s
obviousness conclusion or the findings upon which it is based. To support a
conclusion that a claim is directed to obvious subject matter, an Examiner
must present a “convincing line of reasoning” as to why one of ordinary skill
in the art would have found the claimed invention to have been obvious. See
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections 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.”), quoted with
approval in KSR, 550 U.S. at 418.
The Examiner presented the proposed modification to include CLA in
Nakhasi’s randomly interesterified oil composition based on the reasoning
that one skilled in the art would have done so to improve the health and
nutrition characteristics thereof given that Brown discloses that CLA is
thought to have anti-carcinogenic properties (Ans. 4). Thus, the Examiner
has articulated reasoning having rational underpinnings for making the
proposed combination. This reasoning demonstrates both the motivation for
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the combination, and further demonstrates that the rejection is not based on
improper hindsight.
Appellants also argue that Brown specifically teaches away from the
combination since Brown describes the use of directed or non-random
interesterification to improve the oxidative stability of the resulting oil
composition (App. Br. 11-12; Reply Br. 5-6). Appellants point out that
Brown describes the use of a 1,3-lipase that directs interesterification such
that stearic acid moieties are in the 1, 3 positions of the glyceride
component, while esterified unsaturated fatty acid moieties are in greater
concentration in the 2 position (App. Br. 11-12; Reply Br. 5-6; Brown, col.
8, ll. 27-45). Thus, Appellants argue that Brown specifically teaches away
from the random interesterification of a reactant charge that includes CLA in
addition to medium chain triglycerides and long chain domestic oils (App.
Br. 12; Reply Br. 6).
Assertions of “teaching away” are evaluated by determining whether
the prior art directly warns against the claimed invention or teaches that the
claimed invention would not work, e.g. Ricoh Co., Ltd. v. Quanta Computer
Inc., 550 F.3d 1325, 1332 (Fed. Cir. 2008) (“A reference may be said to
teach away when a person of ordinary skill, upon reading the reference,
would be discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was taken by the
applicant.”) (internal quotation omitted); Baxter Int’l, Inc. v. McGaw, Inc.,
149 F.3d 1321, 1328 (Fed. Cir. 1998) (finding no teaching away where
nothing in the prior art device suggested that the claimed invention was
unlikely to work); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A
reference may be said to teach away when a person of ordinary skill, upon
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reading the reference, would be discouraged from following the path set out
in the reference, or would be led in a direction divergent from the path that
was taken by the applicant.”).
We have evaluated this argument and find it unpersuasive. Neither
Nakhasi nor Brown would have led one skilled in the art down an errant path
or discourage using the combination as proposed by the Examiner. As
explained by the Examiner, the rejection is based not on Brown’s directed
interesterification for oxidative stability, but on Brown’s description of the
inclusion of CLA for its anti-carcinogenic properties (Ans. 4, 9). Moreover,
the Examiner provided evidentiary support for the use of CLA in Nakhasi’s
oil composition via random interesterification based on Braun’s disclosure
that random interesterification is more appropriate for liquid oils, whereas
directed interesterification is more appropriate for solid oils (Ans. 4). As
Nakhasi is a liquid oil composition, Braun suggests the desirability of
random interesterification, whereas Brown suggests the use of CLA for its
anti-carcinogenic properties (id.).
Appellants next argue that both the prior art and their own disclosure
provide evidence of unexpected results (App. Br. 12-13). Appellants direct
our attention to Specification Tables 2-9, which compare a non-
interesterified oil composition to a randomly interesterified oil composition
(id.; Spec. pgs. 21-22). Appellants note that the randomly interesterified oil
composition provides significantly enhanced oxidative stability as shown by
the oxidative stability index or OSI values (id.). Moreover, Appellants
assert that Brown suggests that random interesterification of CLA would
likely result in unstable compositions (App. Br. 12). Appellants derive this
conclusion from Brown’s teaching that directed interesterification places
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highly unsaturated fatty acid moieties in the 2 position, between saturated
fatty acid moieties in the 1,3 positions, thereby increasing the triglycerides
oxidative stability (App. Br. 13).
We note that Appellants may overcome a prima facie case of
obviousness by establishing unexpected results relative to the prior art (In re
Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997)). Appellants have failed
to persuade us that the comparison evidence set forth in the Specification
demonstrates unexpected results with regard to random versus directed
interesterification of an oil composition including CLA, medium chain
triglycerides and long chain domestic oils. See In re Klosak, 455 F.2d 1077,
1080 (CCPA 1972) (noting the burden of analyzing and explaining data to
support an argument of unexpected results rests on party asserting it). As
noted by the Examiner, the Specification fails to compare the invention to
the closest prior art, in this case random versus directed interesterification
(Ans. 10-11). See In re Fenn, 639 F.2d 762, 765 (CCPA 1981) (“Although
it is well settled that comparative test data showing an unexpected result will
rebut a prima facie case of obviousness, the comparative testing must be
between the claimed invention and the closest prior art.”). We also note that
while Brown discloses the use of directed interesterification for increasing
oxidative stability, such does not indicate that random interesterification
would not provide acceptable oxidative stability, especially as compared to
no interesterification. Accordingly we find no evidentiary support for
Appellants’ assertion of unexpected results. As such, Appellants’ assertion
is merely speculative and does not amount to persuasive evidence of
nonobviousness. See In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
(argument by counsel cannot take the place of evidence); In re Lindner, 457
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F.2d 506, 508 (CCPA 1972) (mere conclusory statements of superiority in
the Specification and/or the Brief, unsupported by factual evidence, are of
little probative value). Thus, we agree with the Examiner’s statement that
“Appellant[s] [have] not provided substantiated evidence regarding
unexpected results” (Ans. 11). Accordingly, Appellants have not adequately
established unexpected results for the claimed process, nor the product
produced thereby.
We are not persuaded of error in the Examiner’s findings or rationale
underpinning the obviousness conclusion.
Accordingly, we sustain the Examiner’s § 103 rejections as to
appealed claims 1-12 and 14-25.

CONCLUSION
The decision of the Examiner 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)(iv).

AFFIRMED

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