Sahagian, Michael Download PDFPatent Trials and Appeals BoardAug 12, 20202019005021 (P.T.A.B. Aug. 12, 2020) Copy Citation 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. 12/294,004 05/20/2009 Michael Sahagian BERESKINPARR002 5847 93756 7590 08/12/2020 Adam R. Stephenson, LTD. 8350 E Raintree Dr., Ste 245 Scottsdale, AZ 85260 EXAMINER COX, AMBER M ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 08/12/2020 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): adam@iptech.law ipdocket@iptech.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL SAHAGIAN Appeal 2019-005021 Application 12/294,004 Technology Center 1700 Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. GAUDETTE, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING The Appellant requests reconsideration of the Board’s Decision1 affirming the Examiner’s rejections of claims 1–3, 6, 10, 14, 16, 17, 20–23, 28–39, and 42–44 under 35 U.S.C. § 103(a) as unpatentable over Zyzak in view of various secondary references. Request for Rehearing filed July 24, 2020 (“Req. Reh’g”), 1. The Appellant contends that the Board (1) misapprehended Zyzak’s disclosure (id. at 2), (2) “misapprehended Appellant’s arguments regarding unexpected results” (id. at 3), and (3) should have designated its affirmance as a new ground of rejection (id. at 6). 1 Decision on Appeal entered May 28, 2020 (“Dec.”). Appeal 2019-005021 Application 12/294,004 2 For the reasons discussed below, the Appellant’s arguments are not persuasive of error in our affirmance. We turn first to the Appellant’s contention that the Board misapprehended Zyzak’s disclosure. The Appellant argues that we misapprehended Zyzak’s use of the term “water content” (Zyzak ¶ 41) as a reference to humidity. Req. Reh’g 2 (citing Dec. 9); see Zyzak ¶ 41 (“As known in the art, pH and temperature are factors that affect enzymatic activity. One skilled in the art should readily be able to determine optimal conditions of these and other parameters (e.g., water content).”). According to the Appellant, “[n]either Zyzak nor the examiner equated ‘water content’ as used in Zyzak with ‘relative humidity’ as used in claim 1,” and “[f]or the Board to do so now in its opinion is error.” Req. Reh’g 2. We have re-read the Final Office Action, the Answer, and Zyzak’s disclosure in light of the Appellant’s argument, and are persuaded that the Examiner did not rely on Zyzak’s statement regarding optimization of “water content” as an explicit teaching to optimize humidity. Accordingly, we modify page 9, line 5 of the Decision to strike the parenthetical “(i.e., humidity).” We also modify page 6, lines 15–16 and page 8, lines 1–3 to remove the emphasis added to the quotations of Zyzak paragraph 41. However, despite our misapprehension of the Examiner’s position as to the meaning of “water content” as used in Zyzak paragraph 41, we are not convinced that we erred in our affirmance of the Examiner’s rejections. On Decision pages 7–9, we reference Zyzak’s statement in paragraph 41 that temperature affects enzymatic activity and the ordinary artisan should readily be able to determine optimal conditions for temperature and other parameters that affect enzyme activity. We remain of the opinion that Appeal 2019-005021 Application 12/294,004 3 “[g]iven its own admission that ‘“relative humidity” is dependent upon and related to temperature’ (Reply Br. 3), the Appellant has not convincingly explained why the above disclosure in Zyzak [paragraphs 35 and 41] is insufficient to support the Examiner’s finding that asparaginase activity is affected by humidity and, therefore, is a result-effective variable.” Dec. 9; see also Ans. 22 (“If one of ordinary skill in the art is capable of determining the optimal temperature conditions of asparaginase activity, then they would also be more than capable of determining the optimal conditions of parameters that are dependent on temperature, such as relative humidity.”); Reply Br. 6 (“It is a truism that relative humidity and temperature are related as well enzymatic activity being dependent upon temperature.”); In re Applied Materials, Inc. 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“The Board primarily rested its finding that the dimensions were result-effective variables on Applied’s admission . . . . The Board did not err in relying on Applied’s admission because the admission indicates that the prior art taught that the dimensions could be modified and that modification would affect pad performance, which was sufficient to find the dimensions to be result- effective variables. While Applied also stated that the prior art ‘is silent as to the impact of the groove pitch and width on performance,’ the prior art did not need to disclose the result with any greater specificity than it already did. . . . . [T]he prior art need not provide the exact method of optimization for the variable to be result-effective.”). We now consider the Appellant’s contention that the Board misapprehended its arguments regarding unexpected results. The Appellant argues that the Board erred because it “acknowledged that Appellant relied upon the present specification (page 20:10–24) and Fig. 3 as evincing that Appeal 2019-005021 Application 12/294,004 4 the claimed method produces unexpected results[, but] . . . dismissed this evidence because Appellant purportedly did not explain how the demonstrated interaction of temperature and humidity is an ‘unpredictable or unexpected’ result.” Req. Reh’g 3–4 (citing Dec. 9–10). The Appellant also argues that it provided evidence of unexpected results in the Appeal Brief and that “at the time of the Board’s decision, the record was clear that the examiner had not considered this relevant evidence in concluding that the subject matter of claim 1 would have been obvious.” Id. at 4. The Appellant argues that “the Board should have simply reversed the examiner’s rejection as being legally fatally flawed.” Id. These arguments are not persuasive for at least the following reasons. First, we disagree with the Appellant’s characterization of our Decision as acknowledging that the Appellant relied on unexpected results. To the contrary, we stated that “[t]he Appellant cites Specification page 20, lines 10–24, and Figure 3 as evidence that ‘the enzymatic action set forth in claim 1 that occurs in a dynamic drying environment is unpredictable.’” Dec. 9 (emphasis added) (quoting Reply Br. 6). Predictability and unexpected results are two separate issues. Predictability is relevant to the issue of whether the ordinary artisan would have had a reasonable expectation of success in achieving the claimed invention, i.e., the prima facie case of obviousness. See Allergan, Inc. v. Sandoz Inc., 726 F.3d 1286, 1292 (Fed. Cir. 2013); In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Unexpected results are a secondary consideration of nonobviousness that are presented to rebut an examiner’s prima facie case of obviousness. See Allergan, 726 F.3d at 1293; Merck, 800 F.2d at 1098. Appeal 2019-005021 Application 12/294,004 5 Second, we disagree that the Appellant argued evidence of unexpected results in the Appeal Brief or the Reply Brief. In the Appeal Brief, the sole reference to Specification page 20, lines 10–24 and Figure 3—now relied on by the Appellant as evidence of unexpected results—appears on page 6. Neither the Appeal Brief nor the cited Specification disclosure mentions unexpected results. See, e.g., Spec. 20:20–24 (“As illustrated in Fig 3, acrylamide reduction was dependent on two factors, temperature and humidity, and ranged from 19 to 67%. Drying parameters of 45°C at 70% relative humidity for 14 minutes resulted in a substantial 67% reduction of acrylamide and target weight loss, showing that the enzymatic reaction application is useful in a continuous factory process.” (emphasis added)). See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“Mere improvement in properties does not always suffice to show unexpected results. In our view, however, when an applicant demonstrates substantially improved results . . . and states that the results were unexpected, this should suffice to establish unexpected results in the absence of evidence to the contrary.”). Rather, the citation to Specification page 20 and Figure 3 is part of the Appellant’s argument that humidity was not a known, result-effective variable. See Appeal Br. 6 (“The present issue . . . is whether one of ordinary skill in the art would have found it obvious to optimize the humidity conditions in the Zyzak drier during that enzymatic treatment. . . . [C]ontrary to the applied references, the present specification documents the effect that varying the temperature and humidity level in the dryer has on the residual acrylamide amount. See specification at 20:10–24 and Fig. 3.”); see also Reply Br. 1–2 (characterizing similar arguments made in the August 21, 2018 Request for Pre-Appeal Brief Conference as arguments that “neither Zyzak nor Lynglev Appeal 2019-005021 Application 12/294,004 6 provide evidence that the humidity level in the Zyzak dryer would have any effect on the results, i.e., humidity was not recognized to be a result effective variable”). The Examiner fully responded to the Appellant’s argument that humidity was not a known, result-effective variable: [C]ontrary to the appellant’s assertions, unpredictability is not an issue in this case since Zyzak expressly discloses that temperature, which affects relative humidity as evidenced by the above dictionary definitions, and other parameters such as water content can and should be adjusted or optimized in order to affect asparaginase enzymatic activity. * * * Moreover, in response to the argument that the prior art fails to recognize humidity as a result effective variable as well as the appellant’s reliance on In re Antoine, it is noted that . . . “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process.” Ans. 24 (quoting MPEP § 2144.05(II)(B)). In the Appeal and Reply Briefs, the Appellant never argued that the Examiner failed to consider Specification page 20 and Figure 3. Instead, the Appellant implied the opposite, stating that “the Examiner [does not] dispute that the present specification at 20:10–24 and Fig. 3 show the variability of residual acrylamide levels as temperature and humidity are independently controlled in the dryer.” Reply Br. 5. We remind the Appellant that “[a]rguments not raised in the briefs before the Board . . . are not permitted in the request for rehearing . . . .” 37 C.F.R. § 41.79(b)(1)(2018); see also In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) (“[E]ven assuming that the examiner had failed to Appeal 2019-005021 Application 12/294,004 7 make a prima facie case, the Board would not have erred in framing the issue as one of ‘reversible error.’ As recently acknowledged by the Board, it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). Third, we are not persuaded that we improperly dismissed the evidence in Specification page 20 and Figure 3. The Appellant argues that it would have provided further discussion of the evidence “if the examiner had stated that what appears to be plain language and an easily understood graph needed further ‘explanation.’” Req. Reh’g 4. The Appellant argues that “[e]xaminers and APJs have technical training” and “[t]his subject matter and data is workaday experience for examiners in the food arts and by extension the APJs that review appeals in this art area.” Id. at 5. However, the Appellant has not cited, and we are not aware of, any case law that relieves an appellant of its burden to analyze and explain test results when counsel views the technology as relatively simple or straightforward. See id. (“This is not an esoteric art such as reading an electrophoretic gel where a further explanation of the work and/or data may need further explanation.”). Further, it is not within the province of this Board to independently review specification data in a light most favorable to the Appellants. Cf. In re Thomas, 714 F. App’x 1005, 1007 (Fed. Cir. 2017) (unpublished) (“Relying on Jung, Mr. Thomas argues that an applicant need only “identify the alleged error in the examiner’s rejections,” after which the Board must review the examiner’s decision de novo. See In re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011). We are not persuaded by Mr. Thomas’s arguments.”). Appeal 2019-005021 Application 12/294,004 8 Finally, in an effort to advance any further prosecution of the present application, we note that even if the Appellant had argued that Specification page 20 and Figure 3 provide evidence of unexpected results, we would not have found that argument persuasive.2 The Specification describes comparison testing of potato strips treated with buffer only, or a solution of asparaginase/buffer. See Spec. 19:3–11, 20:16–18. The strips were dried in an industrial dryer at the following temperatures and humidities: 45°C/40%, 45°C/70%, 60°C/40%, and 60°C/70%. Id. at 19:16–17. “As illustrated in Fig 3, acrylamide reduction was dependent on two factors, temperature and humidity, and ranged from 19 to 67%.” Id. at 20:20–21. The Specification describes the 67% reduction of acrylamide that occurred with drying parameters of 45°C at 70% relative humidity as “substantial.” Id. at 20:21–23. Similarly, the Specification describes a reduction in acrylamide ranging from 44% to 57.5% as “significant.” Id. at 20:1–2. However, it is not enough for the Appellants to show that the results in the compared examples differ. The difference must be shown to be an unexpected difference. See In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Moreover, “objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.” In re Tiffin, 448 F.2d 791 (CCPA 1971); see In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“Geisler points to no evidence in his application demonstrating that the wear resistance of the 2 For the reasons stated in Decision pages 8–10, we were not persuaded that Specification page 20, lines 10–24 and Figure 3 evidence that “the enzymatic action set forth in claim 1 that occurs in a dynamic drying environment is unpredictable” (Reply Br. 6). Appeal 2019-005021 Application 12/294,004 9 protective layer in the 50 to 100 Angstrom range is ‘unexpectedly good.’ In fact, his application does not even contain an assertion that the wear resistance of the coating is unexpectedly good over that range. . . . . [T]here is nothing in the application, or in any evidentiary submission made to the examiner, to support Geisler's claim that those test results were unexpected in light of the state of scientific knowledge at the time regarding coatings of that composition.”). The Appellant’s tested range of temperatures and humidity parameters is not commensurate in scope with claim 1, which recites that the root vegetable product is dried between about 30°C and about 50°C and at a relative humidity between about 40% and about 80%. Nor has the Appellant demonstrated that other embodiments falling within the scope of claim 1 would be expected to result in a similar reduction in acrylamide. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) (“If an applicant demonstrates that an embodiment has an unexpected result and provides an adequate basis to support the conclusion that other embodiments falling within the claim will behave in the same manner, this will generally establish that the evidence is commensurate with the claims.”). We turn now to the Appellant’s argument that “the Board’s ‘affirmance’ of the examiner’s decision in this case is an undesignated new ground of rejection” because of (1) “[t]he newly raised equivalence of relative humidity in the dryer and water content of the food product; and” (2) “[t]he Board’s new conclusion that the relied upon evidence of unexpected results needs further explanation.” Req. Reh’g 6. The Appellant explains that “each was raised by the Board for the first time in its opinion when Appellant cannot file an appropriate rebuttal as a matter of right.” Id. Appeal 2019-005021 Application 12/294,004 10 In our discussion above (supra p. 2), we agreed with the Appellant that we misapprehended the Examiner’s position as to the meaning of “water content” as used in Zyzak paragraph 41, and modified our Decision to delete any language suggesting that we, or the Examiner, relied on Zyzak’s optimization of “water content” as an explicit teaching to optimize humidity. As the affirmance in our modified Decision is not based on a finding that the term “water content” in Zyzak paragraph 41 is a reference to humidity, we are not persuaded that our affirmance should have been designated a new ground of rejection because of a newly raised equivalence of humidity and water content. We also are not persuaded that our affirmance should have been designated a new ground of rejection merely because we stated that the Appellant had not explained how the Specification and Figure 3 “evidence that temperature and humidity ‘interacted in an unpredictable or unexpected way’ that would render the claims nonobvious.” Dec. 10 (quoting Applied Materials, 692 F.3d at 1298). As stated in the Decision (Dec. 10), and discussed in additional detail above (supra pp. 4–7), once the Examiner establishes a prima facie case of obviousness, the burden of persuasion shifts to the Appellant. To satisfy this burden when relying on experimental results, the Appellant must analyze and explain how those results were unexpected, or evidence unpredictability. Merely referencing disclosure in the Specification and Drawings, as did the Appellant, was not sufficient to meet this burden. Appeal 2019-005021 Application 12/294,004 11 OUTCOME OF DECISION ON REHEARING Claims Rejected 35 U.S.C. § Reference(s)/Basis Denied Granted 1–3, 6, 10, 16, 17, 20, 22, 28, 30–39, 42–44 103(a) Zyzak, Lynglev 1–3, 6, 10, 16, 17, 20, 22, 28, 30–39, 42–44 14, 23, 29 103(a) Zyzak, Lynglev, Plank 14, 23, 29 21 103(a) Zyzak, Lynglev, Lindsay 21 FINAL OUTCOME OF APPEAL AFTER REHEARING Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–3, 6, 10, 16, 17, 20, 22, 28, 30–39, 42–44 103(a) Zyzak, Lynglev 1–3, 6, 10, 16, 17, 20, 22, 28, 30–39, 42–44 14, 23, 29 103(a) Zyzak, Lynglev, Plank 14, 23, 29 21 103(a) Zyzak, Lynglev, Lindsay 21 Overall Outcome: 1–3, 6, 10, 14, 16, 17, 20–23, 28–39, 42–44 Page 6, lines 15–16 and page 8, lines 1–3 of the Decision are modified to remove the emphasis added to the quotations of Zyzak paragraph 41. Page 9, line 5 of the Decision is modified to strike the parenthetical “(i.e., humidity).” DENIED Copy with citationCopy as parenthetical citation