09850804 (B.P.A.I. Aug. 6, 2012)

Ex Parte Quinlan

Board of Patent Appeals and InterferencesAug 6, 2012

09850804 (B.P.A.I. Aug. 6, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte PAUL THOMAS QUINLAN ____________ Appeal 2011-008727 Application 09/850,804 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and BEVERLY A. FRANKLIN, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134 from the Examiner's decision rejecting claims 1-12, 16-18, and 20-22. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellant claims a method for promoting cardiovascular health comprising providing a food product containing vitamin K which is at least Appeal 2011-008727 Application 09/850,804 2 predominantly in the form of menaquinone (i.e., vitamin K2) in specified amounts (independent claims 1, 7, 8, 12, 16, 20, 21, and 22). Representative claim 1 reads as follows: 1. A method for promoting cardiovascular health, comprising providing a food product which is not an egg, the food product containing vitamin K, wherein the total amount of vitamin K in the food product predominantly comprises menaquinone in an amount of 50 to 200 mcg per 100 g of product, with the proviso that if the menaquinone is a MK-n menaquinone, wherein n ≥ 4, then the food product is not a cheese or natto. The references relied upon by the Examiner in the rejections before us are listed below: Bangert 3,949,098 Apr. 06, 1976 Horrobin 2002/0025983 A1 Feb. 28, 2002 Clayton WO 99/00135 Jan. 07, 1999 Hidetoshi Kawashima et al., Effects of Vitamin K2 (Menatetrenone) on Atherosclerosis and Blood Coagulation in Hypercholesterolemic Rabbbits, in 75 Japanese Journal of Pharmacology 135-143 (1997). L. J. Schurgers et al., Nutritional Intake of Victamins K1 (Phylloquinone) and K2 (Menaquinone) in the Netherlands, in 9 Journal of Nutritional & Environmental Medicine 115-122 (1999). The Examiner's statement of rejection is expressed in the following manner: Claims 1-12,16-18, 20-22 are rejected under 35 U.S.C. 102(b) as anticipated by or, in the alternative, under 35 U.S.C. 103(a) as obvious over Schurgers et al. (XP- 000983689) or Clayton (WO 99/00135), or Bangert (3,949,098) and further in view of Horrobin (2002/0025983 A1) and further in view of Kawashima et al. (XP 009020469). (Ans. 3). Appeal 2011-008727 Application 09/850,804 3 The § 102 Rejections We cannot sustain the Examiner's § 102 rejections of the appealed claims as being anticipated by Schurgers or Clayton or Bangert. As correctly argued by Appellant (see, e.g., App. Br. 19-28 and amended App. Br. (i.e., as modified by the amendment filed February 28, 2008) 11-20), the Examiner's findings regarding the respective disclosures of these references do not address each of the limitations required by the independent claims. For example, the Examiner finds that Schurgers discloses "that it is known to take in 45 microns a day of menaqui[n]ones (page 121, 3rd para.)” (Ans. 3). However, the Examiner fails to make any finding that this reference discloses the menaquinone amount of 50 to 200 mcg required by the majority of independent claims or the limitation wherein the total amount of vitamin K is at least predominately menaquinone as required by all independent claims. The § 103 Rejections As an initial matter, we agree with Appellant that the Horrobin published application is not prior art because it was filed July 5, 2001 which is after the May 8, 2001 filing date of Appellant's application (see, e.g., App. Br. 16). In response, the Examiner states that, "[e]ven though the date on this reference is after applicant's filing date, it is being used for prior art information only" (Ans. 4). However, the record contains no evidence that the Horrobin disclosures cited by the Examiner (i.e., paragraphs 1 and 2) were known in the art prior to Appellant's application filing date. Under these circumstances, we will not consider the Horrobin reference in our assessment of the § 103 rejections. Appeal 2011-008727 Application 09/850,804 4 As support for the § 103 rejections, the Examiner finds that Kawashima discloses "it is known to use large amounts of VK2 in treating atherosclerosis" (id.) and concludes that "it would have been obvious to use K2 in whatever amounts was [sic] required to promote cardiovascular health" (id. at 5). Appellant correctly points out that Kawashima discloses suppressing atherosclerosis in rabbits by administering vitamin K2 in dosages (e.g., 31-39 mg) far exceeding the maximum amount (i.e., 200 mcg) permitted by the appealed claims (see, e.g., App. Br. 16-17), and the Examiner does not contend otherwise. As a consequence, the record contains no evidence in support of the Examiner's conclusion that it would have been obvious "to use K2 in whatever amounts was [sic] required to promote cardiovascular health" (Ans. 5). Based on the record of this appeal, the Examiner's obviousness conclusion is merely a conclusory statement with no articulated reasoning and rational underpinning. Such a statement is inadequate to establish a prima facie case of obviousness. 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 Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007). For the above reasons, we also cannot sustain the Examiner's § 103 rejections of the appealed claims. Appeal 2011-008727 Application 09/850,804 5 Conclusion The decision of the Examiner is reversed. REVERSED ssl