Ex Parte Ozeki et al

Patent Trial and Appeal Board

Feb 13, 2017

10311972 (P.T.A.B. Feb. 13, 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.
10/311,972 02/11/2003 Makoto Ozeki 1422-0563P 4004
2292 7590 02/15/2017
BIRCH STEWART KOLASCH & BIRCH, LLP
PO BOX 747
FALLS CHURCH, VA 22040-0747
EXAMINER
CHONG, YONG SOO
ART UNIT PAPER NUMBER
1627
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
mailroom @ bskb. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAKOTO OZEKI, TOMOKO KUMAGAI,
TSUTOMU OKUBO, and LEKH RAJ JUNEJA
Appeal 2016-003734
Application 10/311,972
Technology Center 1600
Before DONALD E. ADAMS, TAWEN CHANG, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134(a) involves claims 38, 41, and 43—
48 (Final Act. 2). Examiner entered rejection under 35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Appellants identify the real party in interest as “TAIYO KAGAKU CO.,
LTD.” (Br. 1.)
Appeal 2016-003734
Application 10/311,972
STATEMENT OF THE CASE
Appellants disclose “a composition for improving mind-
concentration, and a method of improving mind-concentration” (Spec. 1: 4—
5). Claims 38, 45, and 46 are representative and reproduced below:
38. A method of suppressing generation of P-waves in brain
waves generated during physical exercise, thereby suppressing
tension or anxieties in a human individual in sports competitions,
comprising the step of:
administering a liquid food comprising theanine to the
human individual at a time during physical exercise when P-
waves in brain waves are generated by physical exercise in sports
competitions in the human individual;
wherein said composition is in a dose that is from 0.6 to
20 mg theanine/kg individual.
(Appellants’ claim 38.)
45. A method of treating a human individual having psychogenic
physical exercise dysfunctions, comprising the step of:
suppressing generation of P-waves in brain waves by
administering a liquid food comprising theanine to the human
individual during physical exercise in sports competitions;
wherein said composition is in a dose that is from 0.6 to
20 mg theanine/kg individual.
(Appellants’ claim 45.)
46. A method of treating a human individual having tension or
anxieties during physical exercise, comprising the step of:
suppressing generation of P-waves in brain waves by
administering a liquid food comprising theanine to the human
individual during physical exercise in sports competitions;
wherein said composition is in a dose that is from 0.6 to
20 mg theanine/kg individual.
(Appellants’ claim 46.)
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Appeal 2016-003734
Application 10/311,972
The claims stand rejected as follows:
Claims 38, 41, and 45—48 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Tsunoda2 and/or Kakuda.3
Claims 43 and 44 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Tsunoda, Kakuda, and Millman.4
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Tsunoda
concerns a brain function enhancer, a food, and a beverage each
capable of contributing to the treatments, ameliorations, and/or
preventions of hindrances of brain metabolisms or brain
functions such as memory, learning, reflexive reaction, etc. as
well as symptoms pathologically & physiologically related to
these hindrances such as Alzheimer’s disease, Parkinson’s
disease, senile dementia, and nerve dysfunctions due to external
injuries.
(Tsunoda^ 1; Ans. 3.)
FF 2. Tsunoda discloses that
theanine is capable, even at a low concentration of approximately
50 gM, of elevating the intracellular Ca2+ concentration as a
result of its interaction with an NMDA-type receptor, and it has
become judged that the brain function enhancer of the present
2 Tsunoda et al., JP H08-73350, published Mar. 19, 1996 (Examiner relied
upon the PTO 06-1159 English translation).
3 Kakuda et al., US 5,736,575, issued Apr. 7, 1998.
4 Millman, US 4,871,550, issued Oct. 3, 1989.
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Appeal 2016-003734
Application 10/311,972
invention is capable of inducing plastic changes of nerve cells
and/or neural networks.
(Tsunoda2: 6—10; Ans. 3.)
FF 3. Tsunoda exemplifies “[a] drink agent” comprising “1000 mg” of
theanine (Tsunoda 130; Ans. 3 and 8; see also Ans. 3 (“Examiner computes
[that Tsunoda’s 1000 mg theanine] amount to fall within the claimed range
of 0.6 to 20 mg/kg . . . because for the average human weighing 70 kg, this
equates to 14.3 mg/kg”).
FF 4. Kakuda “relates to an excitement accelerating agent” (Kakuda 1: 6—
7).
FF 5. Kakuda discloses that
by utilizing the excitement accelerating action given by theanine
efficiently, a safe and effective excitement accelerating agent can
be provided. Furthermore, if the excitement accelerating agent of
the present invention is used regularly for a long period of time,
it is effective also as a nutritious tonic, an energy-increasing
agent, and a stamina-sustaining agent. . . .
(Kakuda 1: 51—61; see id. at 4: 13—15 (“when the excitement accelerating
agent of [Kakuda’s] invention is taken regularly for a long period of time, it
can be used effectively as a nutritious tonic”); Ans. 3.)
FF 6. Kakuda discloses that “the excitement accelerating agent of
[Kakuda’s] invention is preferred to be processed into liquid, granular or
powdery form and to be formed as an additive of food and drinks” (Kakuda
4: 7—10; see Ans. 3).
FF 7. Kakuda discloses “that theanine dosed as an oral agent shows the
excitement accelerating action is considered more preferably to be [in] the
range containing theanine from about 0.50 mg/kg to 2.5 mg/kg . . . based on
. . . weight” (Kakuda 3: 55—59; Ans. 3).
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Appeal 2016-003734
Application 10/311,972
FF 8. Examiner finds that the combination of Tsunoda and Kakuda “fail[s]
to disclose [a method within the scope of Appellants’ claimed invention
wherein the composition administered further comprises] minerals” and
relies on Millman to disclose “sports drink comprising . . . minerals” (Ans.
6-7).
ANALYSIS
The combination of Tsunoda and/or Kakuda:
Based on the combination of Tsunoda and/or Kakuda, Examiner
concludes that, at the time Appellants’ invention was made, it would have
been prima facie obvious “to have administered a liquid food composition
comprising theanine as taught by Tsunoda and Kakuda ... to an individual
during physical exercise in sports competitions to improve mind-
concentration or suppress psychological influences, tension, and anxiety”
(Ans. 4—5). In support of Examiner’s conclusion of obviousness, Examiner
reasons that (1) “enhanced brain functions such as memory, learning, and
reflexive reaction;” (2) “increased energy and stamina;” and (2) “enhanced
memory, learning, and reflexive reaction as well as increased energy and
stamina” are all “advantages that an individual, who is about to engage in
physical exercise in a sports competition where a win or loss is decided,
would like to have” (Ans. 5). In this regard, Examiner finds that the
suppression of the generation of “‘P-waves ... by physical exercise in sports
competitions’ are . . . inherent because P-waves will necessarily be generated
in a person undergoing physical exercise in sports competitions” (Ans. 5—6).
We are not persuaded.
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Application 10/311,972
While Tsunoda discloses that the administration of theanine in an
amount that may fall within Appellants’ claimed invention results in
improved memory, learning, and reflexive reaction; Examiner fails to
identify an evidentiary basis in Tsunoda that identifies when, or for how
long, the theanine must be administered to achieve the foregoing effects (see
FF 3). As Examiner recognizes, however, Kakuda makes up for the
foregoing deficiency in Tsunoda (see Ans. 3 (emphasis added) (“Kakuda
[discloses] that by utilizing theanine regularly, energy and stamina will be
increased” and “theanine can be taken regularly for a long period of time”)',
FF 5).
Thus, while Examiner’s unsupported assertions regarding the
characteristics an “individual, who is about to engage in physical exercise in
a sports competition where a win or loss is decided, would like to have” may
be correct, Examiner failed to provide an evidentiary basis to support that
Tsunoda and/or Kakuda alone or in combination make obvious the
administration of “a liquid food comprising theanine to [a] human individual
at a time during physical exercise” as is required by each of Appellants’
independent claims (see Appellants’ claims 38, 45, and 46; see also Br. 9—
10).
Absent some articulated rationale, a finding that a combination
of prior art would have been “common sense” or “intuitive” is no
different than merely stating the combination “would have been
obvious.” Such a conclusory assertion with no explanation is
inadequate to support a finding that there would have been a
motivation to combine.
In re Van Os, 844 F.3d 1359, 1361 (Fed. Cir. 2017).
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Application 10/311,972
The combination ofTsunoda, Kakuda, andMillman:
Based on the combination ofTsunoda, Kakuda, and Millman,
Examiner concludes that, at the time Appellants’ invention was made, it
would have been prima facie obvious “to have formulated the liquid food
composition comprising theanine as taught by Tsunoda and Kakuda . . . into
the sports drink containing minerals, as taught by Millman, and administer it
to an individual during physical exercise in sports competitions to improve
mind-concentration during physical exercise” (Ans. 7). We are not
persuaded.
For the reasons set forth above, Examiner failed to establish an
evidentiary basis on this record to support a conclusion that the combination
ofTsunoda and Kakuda would have made obvious the administration of a
composition comprising theanine to an individual during physical exercise
and Miller fails to make up for this deficiency in the combination of
Tsunoda and Kakuda (see Br. 23).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner fails to
support a conclusion of obviousness.
The rejection of claim 38, 41, and 45—48 under 35 U.S.C. § 103(a) as
unpatentable over the combination ofTsunoda and/or Kakuda is reversed.
The rejection of claims 43 and 44 under 35 U.S.C. § 103(a) as
unpatentable over the combination ofTsunoda, Kakuda, and Millman is
reversed.
REVERSED
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