10919472 (B.P.A.I. Nov. 30, 2010)

Ex Parte Zeller

Board of Patent Appeals and InterferencesNov 30, 2010

10919472 (B.P.A.I. Nov. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte BARY LYN ZELLER ____________ Appeal 2009-004514 Application 10/919,472 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 Appellant requests rehearing of the decision of July 28, 2010, wherein the Examiner’s decision to reject all the appealed claims is affirmed. 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304 begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-004514 Application 10/919,472 Appellant contends in the Request (Req.) that the Board misapprehended or overlooked that (a) the foaming composition of the appealed claims excludes carbohydrate, including glycerol, as was supported by the evidence submitted by Appellant and (b) Holtus is non-anticipatory because Holtus fails to disclose a “... working example of a carbohydrate- free, soluble protein foaming composition ...” like Appellant does and Holtus is non-enabling (Req. 1-4). Appellant’s argument is without persuasive merit for reasons stated in the decision (Dec.) and the Examiner’s Answer. As was pointed out in the decision, even if glycerol were counted as a carbohydrate, Holtus discloses that glycerol is merely an optional ingredient and not required for the foaming composition of Holtus (Dec. 6). Furthermore and as was noted in the decision, the claim term “carbohydrate free” is defined by Appellant in the Specification in a manner that permits the inclusion of some carbohydrate (Dec. 2-5; Spec. para. 0027). Thus, Appellant’s evidence respecting FDA food labeling requirements does not establish a patentable distinction for the claimed subject matter over Holtus (Dec. 5-6). As for the reiterated argument asserting a lack of an Example in Holtus and the allegation that Holtus is non-enabling for a carbohydrate-free, soluble protein foaming composition, Appellant has not persuasively explained in the Request how these arguments were misapprehended or overlooked by the Board in rendering its decision. In this regard, the non- substantiated allegation that an ordinarily skilled artisan would not have known what process conditions to use with a particular protein to form a carbohydrate-free, soluble protein foaming composition is not persuasive for reasons stated in the decision (Req. 3-4; Dec. 5-8). 2 Appeal 2009-004514 Application 10/919,472 In conclusion, Appellants’ request is granted to the extent we have reconsidered our decision, but is denied with respect to making any change therein. DENIED tc STITES & HARBISON PLLC 1199 NORTH FAIRFAX STREET SUITE 900 ALEXANDRIA, VA 22314 3