In re Eaton: Determining Substantial Evidence for teaching "Essentially Free of Anti-Oxidants"

Category: 103 
By: Christian Hannon, Contributor 
TitleIn re Eaton, No. 2013-1104 (Fed. Cir. Nov. 22, 2013) (non-precedential).
Issues[1] Mr. Eaton appeals the Board's anticipation rejection of claim 1 because Jungkeit does not describe a vitamin composition that is essentially free of anti-oxidants and thus cannot anticipate claim 1 [which recites that the composition is "essentially free of anti-oxidants."]. [...] [2] Similarly, Mr. Eaton appeals the Board's obviousness rejection of claims 1 and 8-10 over Jungkeit and Mantynen because Mantynen fails to rectify the deficiencies of Jungkeit. In re Eaton at *5 (text added).
Holdings[1] The Office has not established that the cited references disclose compositions whose effectiveness is not reduced at all due to the presence of the antioxidants.[...] [Therefore,] substantial evidence [does not] support a finding that Jungkeit met the "essentially free of antioxidants" element[.] In re Eaton at *7-9. [2] [Secondly, regarding the obviousness rejection, the Board's] finding does not provide a rationale for adjusting the concentrations of antioxidants in Jungkeit or Mantynen to be “essentially free of antioxidants.” Id. at *9 (text added).
Procedural HistoryBased, in part, on Jungkeit and Mantynen, the examiner issued a Final Office Action on May 21, 2010, rejecting claims 1, 8–11, and 14 of the ’716 application. The Board affirmed the rejections. [...] Mr. Eaton appeals the Board's [affirmance of the claims' rejections]. In re Eaton at *4-5.
Legal Reasoning (Rader, Lourie, Moore) (per curiam)
Claim 1A method of treating psoriasis by administering to a person a vitamin supplement composition comprising at least about 25 micrograms to about 2,200 micrograms of folic acid, at least about 25 micrograms to about 2,500 micrograms of vitamin B12, and at least about 0.5 milligrams to about 20 milligrams of vitamin B6, wherein said composition is essentially free of anti-oxidants. In re Eaton at *3.
[1] 102 Analysis
Board's Rationale In the present case, the Board’s affirmance[...]turn[s] on the meaning of the claim limitation “essentially free of antioxidants.” The parties dispute the construction of this phrase. However, both parties acknowledge that the specification defines “essentially free of antioxidants” functionally to mean that the claimed composition “should not contain an amount of antioxidants which would tend to damage and inactivate some of the vitamin B12 and/or folic acid of the vitamin supplement.” In re Eaton at *6.
Anticipation Must Be Supported By Substantial EvidenceTo anticipate, it is not enough for the prior art composition to have an amount of antioxidant that merely allows the composition to be “effective.” To anticipate, the prior art compositions must have an amount of antioxidant that does not result in “reduced effectiveness.” Substantial evidence supports the Board’s finding that “Jungkeit treated psoriasis with a composition comprising B6, B12, and folic acid in the requisite amounts.” [...] However, substantial evidence does not support the Board’s finding that Jungkeit’s composition is “essentially free of antioxidants.” [...] [T]he fact that Jungkeit’s composition is not “ineffective” does not mean that it reads on the “essentially free of antioxidants” limitation. To fall within the scope of the claims, the prior art composition must also not have a reduced effectiveness due to the presence of antioxidants. Id. at *7.
[2] 103 Analysis
Board's Rationale[T]he Board adopted the examiner’s reasoning that it would have been obvious for one of ordinary skill to “adjust the concentrations of folic acid, vitamin B6, and vitamin B12 to arrive at an optimum workable range.” In re Eaton at *8-9.
Obviousness Rationale Must Be Based on Correct Factual AssessmentHowever, this finding does not provide a rationale for adjusting the concentrations of antioxidants in Jungkeit or Mantynen to be “essentially free of antioxidants.” Here, the Board’s factual error [that Jungkeit teaches 1000 times less than Junkeit actually discloses for the use of the antioxidant vitamin C] taints its obviousness conclusion. In fact, both Jungkeit and Mantynen disclose compounds where the concentration of antioxidants is greater than the concentrations of either folic acid or the B-vitamins. Id. at *8.
Obviousness Rationale Must Indicate Support for Combining ReferencesThe Office has not established on this record that a motivation exists to modify Jungkeit or Mantynen to be essentially free of antioxidants. The ’716 application not only teaches a compound “essentially free of antioxidants,” but specifically teaches that “the antioxidant[] especially to be avoided is added vitamin C.” [...] In comparison, the amount of vitamin C in Jungkeit’s claimed composition is over three times greater than the next-most prevalent component. [...] And Jungkeit notes that the effectiveness of this specific concentration of components is “not explainable with conventional theories.” Id. at *9.
For the foregoing reasons, this court reverses the Board’s anticipation and obviousness determinations. The case is remanded for further proceedings consistent with this opinion. REVERSED AND REMANDED. In re Eaton at *10.
 Image Attribution Statement: Evelyn Simak, "The grass is always greener,” available under the Creative Commons Attribution-Share Alike 2.0 Generic license, http://commons.wikimedia.org/wiki/File:The_grass_is_always_greener_-_geograph.org.uk_-_783326.jpg(last visited Jan. 28, 2014). 
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