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.
16/473,945 06/26/2019 Sophie LAURENT 689501.0015/15US 2140
570 7590 06/03/2025
PANITCH SCHWARZE BELISARIO & NADEL LLP
TWO COMMERCE SQUARE
2001 MARKET STREET, SUITE 2800
PHILADELPHIA, PA 19103
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/03/2025 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):
usptomail@panitchlaw.com
PTOL-90A (Rev. 04/07)
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UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte SOPHIE LAURENT, THIBAULT SARTON DU JONCHAY, JEAN-GABRIEL LEVON, CECLIA SOCOLSKY, LORENA SANCHEZ, NATHALIE BEREZINA, BENJAMIN ARMENJON, and
ANTOINE HUBERT
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Appeal 2024-000085 Application 16/473,945 Technology Center 1700 ——————
Before JEFFREY T. SMITH, N. WHITNEY WILSON, and MERRELL C. CASHION, JR., Administrative Patent Judges. WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1appeals from the Examiner's December 23, 2022 decision to finally reject claims 4, 20-22, and 24-26 ("Final Act. 1"). We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
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CLAIMED SUBJECT MATTER
Appellant's disclosure is directed to methods for treating insects, in which the cuticles are separated from the soft part of the insects using a belt separator, as well as powders obtained by the use of such methods (Spec., Abstract). Such powders can be used for animal nutrition (Spec. 1). Claim 4, reproduced below from the Claims Appendix, illustrates the claimed subject matter on appeal:
4. An insect solid fraction comprising at least 71% by weight proteins and 0.1-2% by weight chitin, said percentages by weight being expressed with respect to the total dry weight of said solid fraction, wherein at least 60% of soluble proteins of the solid fraction have a size less than 550 g/mol.
REFERENCE
The Examiner relies on the following reference to reject the claims:
Name Reference Date
Yang et al. Nutritional Composition and Protein Quality of the Edible Beetle Holotrichia parallela, 14 J. Insect Sci. 139
Jan. 1, 2014
REJECTIONS
The Examiner maintains the following rejections:
Claim(s) Rejected 35 U.S.C. § Reference(s)/ Basis
4, 20-22, 24 101 Eligibility 4, 20-22, 24-26 103 Yang
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OPINION
We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections.")).
We will address each of the rejections in turn.
Rejection under § 101. The Examiner rejects claims 4, 20-22, and 24 under 35 U.S.C. § 101 on the grounds that the claimed invention is directed to a natural phenomenon — a dead crushed beetle — without significantly more (Final Act. 2).
As a preliminary matter, we note that on February 17, 2022 the Board decided a previous appeal (Appeal 2021-003938) in Application No. 15/541,140. The principal independent claim on appeal in that application was directed to similar subject matter to instant claim 42. Accordingly, our analysis of this rejection is guided and informed by, though not governed by, the Board's decision in that appeal.
The Supreme Court has interpreted 35 U.S.C. § 101 — which states that a patent may be obtained "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof" — to include the following implicit exceptions: "[l]aws of nature,
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natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). The Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), "set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice Corp., 573 U.S. at 217. That framework is referred to as the Mayo test. The first part of the Mayo test is determining whether a claim is directed to a law of nature, a natural phenomenon, or an abstract idea (i.e., a judicial exception). Alice Corp., 573 U.S. at 217. The second part of the Mayo test is determining whether the claim recites additional elements sufficient to ensure that significantly more than the judicial exception is being claimed. Alice Corp., 573 U.S. at 217-18.
When a physical product is claimed, as in this case, the courts often refer to the exception as a "product of nature." MPEP § 2106.04(b)(II). Product of nature exceptions include both naturally occurring products and non-naturally occurring products that lack markedly different characteristics from any naturally occurring counterpart. Id. The "markedly different characteristics" analysis is used to evaluate a nature-based product limitation. Id.; Id. § 2106.04(c).
The markedly different characteristics analysis compares the nature- based product limitation to its naturally occurring counterpart in its natural state. Id. § 2106.04(c)(II). The first step in the analysis is selecting the appropriate counterpart to the nature-based product. Id. § 2106.04(c)(II)(A). When the nature-based product is derived from a naturally occurring thing, the naturally occurring thing is the counterpart. Id. The second step in the
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analysis is identifying the appropriate characteristics to compare. Id. § 2106.04(c)(II)(B). Appropriate characteristics can be expressed as, for example, chemical or physical properties of the nature-based product and are evaluated on a case-by-case basis. Id.
Finally, the third step in the analysis is comparing the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed nature-based product are markedly different. MPEP § 2106.04(c)(II)(C):
If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one
characteristic as compared to the counterpart, and the change came about or was produced by applicant's efforts or
influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.
Claim 4 plainly describes a composition of matter. Therefore, in order to ascertain whether the subject matter of claim 4 is patent eligible, we must apply the "markedly different characteristics" analysis to it. Initially, we note that the Examiner states that "[t]here is no dispute that the combination of specific ingredients and concentration of ingredients as claimed does not occur in nature" (Ans. 9). Accordingly, our analysis proceeds directly to a consideration of whether the claimed composition has
"markedly different characteristics" from the naturally occurring dead crushed beetles (Final Act. 2).
As explained by Appellant (Appeal Br. 7) and agreed to by the Examiner (Ans. 9), the claimed insect powder composition has different characteristics from one found in nature. For example, the claimed insect powder composition has a higher amount of protein, and a lower amount of
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chitin as compared to what it is disclosed in Yang (at least 71% protein claimed versus 70.57±0.10 in Yang (Yang, p. 2, Table 1) , and 0.1-2% by weight chitin claimed versus 10.47±0.53% in Yang (id.). Moreover, Appellant contends — and the Examiner does not dispute — that the different characteristics are the result of Appellant's processing steps (Appeal Br. 9).
Accordingly, we conclude that claim 4, and the claims dependent thereon, recite patentable subject matter. MPEP § 2106.04(c)(II)(C) ("If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by applicant's efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception.").
Rejection under § 103. The Examiner has rejected claims 4, 20-22, and 24-26 as unpatentable over Yang. The Examiner finds that Yang teaches "an edible beetle composition comprising a solid fraction of 71% by weight crude protein, thus falling within the claimed range of at least 71%, and 10.5% by weight chitin, while the instant claim [claim 4] requires 0.1 to 2% by weight chitin" (Final Act. 5). The Examiner further finds that Yang teaches that its composition is a powder obtained by grinding beetles in a mill, and that the composition of the beetle is dependent upon the type of insect and can vary (Final Act. 5-6). The Examiner concludes that it would have been obvious to vary the amount of chitin "depending on the type of insect used for the composition" (Final Act. 6). Similarly, with respect to the limitation that "at least 60% of soluble proteins of the solid fraction have a size less than 550 g/mol," the Examiner determines that (1) "it would have
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been obvious . . . to vary the amount of soluble protein depending on the type of insect used"; (2) "it would have been obvious . . . to vary the molecular mass of the protein depending on the type of insect used"; and (3) because Yang teaches a composition which also comes from beetles, the molecular mass of the proteins in Yang would be similar as claimed (Final Act. 6).
After consideration of the Examiner's position as set forth the in the Final Action and the Answer and Appellant's arguments as set forth in the Appeal Brief and the Reply Brief, as well as the evidence of record, we agree with Appellant that the preponderance of the evidence does not support the obviousness in rejection.
In particular, we agree with Appellant that Yang does not disclose an insect power composition which falls within the scope of claim 4. Yang specifically discloses a powder having a protein composition of 70.57% ± 0.10 (Yang, p. 2, Table 1). This amount does not fall within the claimed amount of "at least 71% weight proteins."3In addition the amount of chitin disclosed by Yang (10.47% ± 0.53) is, as acknowledged by the Examiner (Final Act. 5), well outside the claimed amount of chitin (0.1- 2%).
The Examiner relies on information gleaned from Yang to determine that different insects would have different compositions (see Final Act. 5) and that, because of that, it would have been obvious to vary the amount of chitin depending on the type of insect used (id.). However, the Examiner
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has not pointed to evidence that any insect would provide the claimed composition. Nor has the Examiner explained why a person of skill in the art would have sought to provide an insect powder with the claimed composition.
To the extent that the Examiner is suggesting that the claimed amounts are result effective variables, such that optimizing their values would have been within the skill of one of ordinary skill in the art (see, e.g., Final Act. 5-6), there has been no evidence introduced that either the protein value or the chitin value are result effective variables. Without such evidence, the result effective variable rationale cannot serve as the motivation to arrive at the claimed values. See In re Antonie, 559 F.2d 618,
620 (CCPA 1977).
The Examiner has the initial burden of establishing a prima facie case of obviousness based on an inherent or explicit disclosure of the claimed subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability."). To establish a prima facie case of obviousness, the Examiner must show that each and every limitation of the claim is described or suggested by the prior art or would have been obvious based on the knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988). In this instance, for the reasons outlined above and further detailed in the Appeal Brief and the Reply Brief, we agree with Appellant that the Examiner has not properly established that a person of ordinary skill in the would have modified Yang's teachings to arrive at the claimed insect powder.
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Accordingly, we do not sustain the obviousness rejection.
CONCLUSION
The Examiner's rejections are REVERSED.
DECISION SUMMARY
The following table summarizes our decision:
Claim(s) Rejected
35
U.S.C. § Reference(s)/ Basis Affirmed Reversed
4, 20-22, 24 101 Eligibility 4, 20-22, 24 4, 20-22, 24-26 103 Yang 4, 20-22, 24-26
Overall Outcome
4, 20-22, 24-26
REVERSED
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