Ex Parte Wilkes

Patent Trial and Appeal Board

Aug 23, 2016

12425118 (P.T.A.B. Aug. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/425,118 04/16/2009
45738 7590 08/25/2016
SENNIGER POWERS LLP (MTC)
100 NORTH BROADWAY
17THFLOOR
ST LOUIS, MO 63102
FIRST NAMED INVENTOR
Richard S. Wilkes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
MTC 56786.2 1899
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
08/25/2016 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):
uspatents@senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD S. WILKES
Appeal 2015-001371
Application 12/425,118
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PERCURIAM.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 filed an appeal under 35 U.S.C. § 134 from the Examiner's
decision finally rejecting claims 1, 3, 9, 10, 15, 19, 23, 35, 63, and 64 under
35 U.S.C. § 103(a) as being unpatentable over the combination ofBosco 3 in
1 Our decision refers to the Specification filed Apr. 16, 2009 (Spec.),
Appellant's Appeal Brief filed Feb. 19, 2014 (Br.), the Examiner's Answer
mailed Sept. 2, 2014 (Ans.), and Appellant's Reply Brief filed Nov. 3, 2014
(Reply Br.).
2 Appellant identified the real party in interest as Monsanto Technology
LLC. Br. 2.
3 Bosco et al., US 4,273,790, issued June 16, 1981 (Bosco).
Appeal 2015-001371
Application 12/425, 118
view ofUrsin4 and rejecting claims 12 and 62 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bosco and Ursin and further in
view ofKnowlton. 5 We have jurisdiction under 35 U.S.C. §§ 6(b) and
134(a).
We AFFIRM.
The claims on appeal are directed to spread formulations (see, e.g.,
claim 1 ). Appellant discloses that studies have shown some types of fats to
improve body function in some ways. Spec. i-f 4. In particular, many in the
food industry have focused on the incorporation of omega-3 fatty acids into
the diet. Spec. i-f 5. Omega-3 fatty acids are long-chain polyunsaturated
fatty acids, such as stearidonic acid (SDA), alpha-linolenic acid (ALA),
eicosatetraenoic acid (ET A), eicosapentaenoic acid (EPA),
docosapentaenoic acid (DPA), and docosahexaenoic acid (DHA). Spec. i-f 5.
Although nutritionists have identified DHA and EPA as physiologically
important, SDA has also been shown to have significant health benefits.
Spec. i-f 5.
Securing an appropriate supply of long-chain polyunsaturated fatty
acids, however, is difficult and cost restrictive. Spec. i-f 6. For instance,
omega-3 fatty acids can quickly oxidize, which leads to undesirable odors
and flavors. Spec. i-f 7. To counter this, food processors either distribute oils
of fatty acids in a frozen condition or encapsulate the oil. Spec. i-f 7. These
measures, however, increase cost and processing time for the fatty acids.
Spec. i-f 7. In view of this, Appellant discloses using a comparatively
4 Ursin et al., WO 2005/021761 Al, published March 10, 2005 (Ursin).
5 Knowlton, US 5,981,781 A, issued Nov. 9, 1999 (Knowlton).
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Appeal 2015-001371
Application 12/425, 118
chemically stable omega-3 fatty acid, SDA, to provide a spread formulation
having improved nutritional quality, shelf-life, and cost in comparison to
conventional margarine spread formulations. Spec. i-fi-f l, 12.
Independent claim 1 is illustrative of the subject matter on appeal.
Claim 1 is reproduced from the Claims Appendix of the Appeal Brief:
1. A spread formulation comprising an oil phase and an
aqueous phase, wherein the oil phase comprises an oil having at
least 10% by weight stearidonic acid (SDA) and wherein the oil
phase further comprises a partially hydrogenated oil having a
solids fat index of from about 19% to about 25.5% at 50°F
(10°C), from about 10.5% to about 15.5% at 70°F (21°C), and
from about 0.5% to about 4.0% at 92°F (33°C).
Br. 11 (Claims App'x).
OPINION
Rejection over Bosco and Ursin
Claims 1, 3, 9, 10, 15, 19, 23, 35, 63, and 64 are rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Bosco in
view of Ursin.
Appellant addresses the rejection of various claims under separate
headings. We do the same.
Claim 1
For claim 1, the dispositive issue on appeal is whether Appellant has
shown reversible error in the Examiner's reason to combine Bosco and Ursin
to provide a spread formulation comprising an oil phase including an oil
having at least 10% by weight SDA and the oil phase further comprising a
partially hydrogenated oil having the solids fat index recited in claim 1.
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Appeal 2015-001371
Application 12/425, 118
The Examiner finds Bosco discloses a spread formulation that is a
margarine. Ans. 3. The spread formulation comprises an oil phase
including vegetable oils, such as soybean oil. Ans. 3. The spread further
comprises unhydrogenated or partly hydrogenated oils having a solids fat
index of from 0-35% at 50°F, from 0-25% at 70°F, and less than 8% at
92 °F. Ans. 3. The Examiner finds the ranges of solids fat index disclosed
by Bosco overlap with those of claim 1 and therefore render the solids fat
index ranges of claim 1 obvious. Ans. 3.
The Examiner finds Bosco does not disclose an oil phase comprising
an oil with the SDA content of claim 1. Ans. 3. The Examiner finds Ursin
discloses transgenic soybeans including at least 10 wt% SDA. Ans. 4.
Ursin discloses that oil derived from the soybeans can be used in food, such
as margarine, to provide SDA to consumers in view of its health benefits.
Ans. 4. The Examiner concludes it would have been obvious to substitute
the soybean oil of Ursin for the soybean oil of Bosco to provide the health
benefits associated with the soybeans ofUrsin. Ans. 4. The Examiner also
concludes it would have been obvious to substitute the soybean oil of Ursin
for the soybean oil of Bosco because it would have been a simple
substitution of one known element for another to obtain predictable results.
Ans. 4.
Appellant contends the Examiner failed to provide a reason why "a
person of ordinary skill in the art would have selected the cited prior art
references from the 'scope and content of the prior art,"' stating that "[b]oth
Graham v. John Deere and KSR v. Teleflex require that there be a reason for
selecting the particular prior art reference from the universe of prior art
available at the time the claimed invention was made." Br. 4.
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Application 12/425, 118
Appellant's argument is based on a misunderstanding of the law. The
question of obviousness is resolved on the basis of underlying factual
determinations including ( 1) the scope and content of the prior art, (2) any
differences between the claimed subject matter and the prior art, (3) the level
of skill in the art, and ( 4) where in evidence, so-called secondary
considerations. Grahamv.JohnDeereCo.,383U.S.1, 17-18(1966). See
also KSR, 550 U.S. 398, 407 (2007) ("While the sequence of these questions
might be reordered in any particular case, the [Graham] factors continue to
define the inquiry that controls.").
When combining the teachings of references to establish obviousness,
one must ask what the combined teachings of the references would have
suggested to one of ordinary skill in the art. In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991); In re Keller, 642 F.2d 413, 425 (CCPA 1981). The
question is whether making the combination is more than the predictable use
of prior art elements according to their established functions. KSR Int'! Co.
v. Teleflex Inc., 550 U.S. 398, 417 (2007). An examiner can establish
obviousness by providing a rational reason why one of ordinary skill in the
art would have combined the known elements in the fashion required by the
claim. Id., at 418.
Here, the Examiner's rejection was made within the analytical
framework set forth by the Supreme Court. There is no convincing
argument that Bosco and Ursin fail to be within the scope and content of the
prior art. As stated by the Examiner, Bosco discloses a margarine and Ursin
discloses an ingredient that may be incorporated into margarine to provide
health benefits to a user. Ans. 8. The Examiner also found a difference
between the spread formulation of the claim and the spread formulation of
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Appeal 2015-001371
Application 12/425, 118
Bosco, by determining Bosco does not disclose an oil phase comprising an
oil with the SDA content of claim 1. The Examiner then provided a reason
to include the soybean oil of Ursin in the spread formulation of Bosco by
citing the health benefits disclosed by Ursin as well as noting that the change
is the substitution of a known element (soybean oil) for another (soybean oil
containing SDA) to obtain the predictable result of forming margarine
including the properties of the SD A-containing soybean oil. Ans. 4.
Appellant argues the Examiner engaged in impermissible hindsight by
relying upon insight provided by Appellants' disclosure. Br. 4--5. This is
also unpersuasive of reversible error because Ursin discloses its soybean oil
containing SDA provides "improved nutrition and health benefits." Ursin p.
10. Therefore, the Examiner's reason to combine flows from the knowledge
that was within the level of ordinary skill at the time the claimed invention
was made.
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).
Appellant also traverses the Examiner's reason to substitute the
soybean oil of Ursin for the soybean oil of Bosco because it would have
been a simple substitution of one known element for another to obtain
predictable results. First, Appellant contends the substitution would not
have resulted in the spread formulation of claim 1 because Example VI of
Bosco only includes the soybean oil and does not contain the partially
hydrogenated oil of claim 1. Br. 5---6. This argument is not persuasive
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Appeal 2015-001371
Application 12/425, 118
because, as stated by the Examiner at pages 10-11 of the Answer, examples
and preferred embodiments do not constitute a teaching away from a broader
disclosure. 6 Here, the Examiner finds Bosco discloses a spread formulation
including a soybean oil and further including unhydrogenated or partly
hydrogenated oils having a solids fat index of from 0-35% at 50°F, from 0-
25% at 70°F, and less than 8% at 92°F. Ans. 3. The disclosure of Bosco
supports the Examiner's finding. Bosco col. 3, 11. 3-25.
Appellant further contends that the results of substituting Ursin's
soybean oil for the soybean oil of Bosco would not have been predictable.
Br. 6. In particular, Appellant argues the results would have been
unpredictable because the oxidative properties of soybean oils having a high
SDA content can greatly vary, it was unpredictable whether the soybean oil
of Ursin would have provided the appropriate stability and flavor profile for
the spread formulation of Bosco, the solids fat indices ofUrsin and Bosco
are very different so there would not have been a reasonable expectation of
an acceptable spread, and a fat having a high solids fat index would have
been needed to provide an appropriate consistency for a margarine
formulation. Br. 6-7.
Appellant's arguments are not persuasive of reversible error because
they are mere attorney argument. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence."). Appellant provides no convincing evidence or technical
reasoning to demonstrate why the properties would have been so
6 Disclosed examples and preferred embodiments do not constitute a
teaching away from a broader disclosure or non-preferred embodiments. In
re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
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Application 12/425, 118
unpredictable that an ordinary artisan would not have been capable of
formulating a spread formulation as suggested by the references with a
reasonable expectation of success. "For obviousness under § 103, all that is
required is a reasonable expectation of success." In re 0 'Farrell, 853 F.2d
894, 903---04 (Fed. Cir. 1988) (citations omitted).
In addition, Appellant asserts the spread formulation of claim 1
provides unexpected results. Br. 7. According to Appellant, "the spread
formulation of claim 1 unexpectedly showed that its off flavor sensory score
at 9 months was significantly similar to the spread formulation containing
the control oil as compared to the spread formulations containing other
omega-3 oils." Id. Appellant's showing fails because Appellant does not
cite to any evidence to support this assertion of unexpected results. Id. See
In re Heyna, 360 F.2d 222, 228 (CCPA 1966)("It is incumbent upon
appellants to submit clear and convincing evidence to support their
allegation of unexpected property").
In view of the above, Appellant has not identified a reversible error in
the Examiner's reason to combine Bosco and Ursin to provide the spread
formulation of claim 1. Nor has Appellant provided the type of evidence
required to show that the spread formulation of the claim provides a result
that would have been unexpected to those of ordinary skill in the art.
Claims 19, 35, 62, and 64
Appellant also traverses the rejection of claims 19, 35, 62, and 64,
focusing on the rejection of claim 19. Br. 7-8. We select claim 19 as
representative. Claims 35, 62, and 64 stand or fall with claim 19.
Claim 19 recites "[ t ]he spread formulation of claim 1 comprising a
margarine formulation." Claim 19 (emphasis added). Although, as asserted
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Appeal 2015-001371
Application 12/425, 118
by Appellant, 7 the Specification defines a "margarine spread formulation" as
"an oil-in-water emulsion including about 80% (by weight) fat," 8 as pointed
out by the Examiner, 9 "comprising" is not equal to "is." As determined by
the Examiner, the claim is open to a mixture of a margarine formulation and
other substances. Ans. 15-16. This determination is not disputed by
Appellant. Reply Br. 4.
Appellant contends one would not have looked to the disclosure of
Bosco for guidance to prepare a margarine spread formulation of claim 19
because Bosco discloses a low fat liquid spread formulation having 5 to 40
weight percent fat. Br. 7. But as explained above, claim 19 is not limited to
a higher fat composition. Thus, Appellant's argument is not convincing.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1, 3, 9, 10,
15, 19, 23, 35, 63, and 64 over the combination of Bosco and Ursin.
Rejection over Bosco, Ursin, and Knowlton
Claims 12 and 62 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Bosco and Ursin and further in view of
Knowlton. Claim 12 is representative of the issues on appeal for claims 12
and 62.
Claim 12 depends from claim 1 and further recites "wherein the oil
phase further comprises at least one high stability oil selected from the group
consisting of low linolenic soybean oil, high oleic soybean oil, high
7 Appeal Br. 7.
8 Spec. ,-r 24.
9 Ans. 15-16.
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Application 12/425, 118
oleic/low saturate soybean oil, high oleic canola oil, and combinations
thereof."
In the rejection of claim 12, the Examiner finds Bosco does not
disclose a high oleic soybean oil. Ans. 6. The Examiner finds Knowlton
discloses high oleic soybean oils that can be mixed into oil products, such as
margarines, to improve their characteristics, such as fatty acid composition,
flavor, and/or oxidative stability. Ans. 6. The Examiner concludes it would
have been obvious to modify the spread formulation of Bosco to include the
high oleic soybean oil of Knowlton to improve the fatty acid composition,
flavor, and/or oxidative stability of the spread formulation. Ans. 6.
Appellant argues Knowlton does not remedy the deficiencies
discussed above for Bosco and Ursin. Br. 8. As discussed above, we find
no reversible error in the combination of Bosco and Ursin to remedy.
Appellant further contends there would have been no reason to
combine the high oleic soybean oil of Knowlton with Bosco and Ursin
because Bosco and Ursin do not contemplate the oxidative stability of oil or
a spread formulation. Br. 8. Appellant's argument is not persuasive of
reversible error. As stated by the Examiner at page 16 of the Answer, the
disclosure of Knowlton provides a reason to modify Bosco and Ursin. We
further agree with the Examiner that there is no need for a primary reference
to provide a reason to modify it in view of a secondary reference. Ans. 16.
We further note the disclosure of Bosco considers oxidative stability by
disclosing the use of antioxidants for resistance to oxidative deterioration at
higher temperatures. Bosco col. 6, 11. 3-22.
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Application 12/425, 118
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 12 and 62
over the combination of Bosco, Ursin, and Knowlton.
DECISION
The decision of the Examiner rejecting claims 1, 3, 9, 10, 12, 15, 19,
23, 35, and 62-64 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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