NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE KEVIN P. EATON
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2013-1104
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
11/145,716.
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Decided: November 22, 2013
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CASEY L. GRIFFITH, Klemchuk Kubasta, LLP, of Dal-
las, Texas, for appellant.
NATHAN K. KELLEY, Deputy Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia, for
appellee. With him on the brief were MARY L. KELLY and
JOSEPH G. PICCOLO, Associate Solicitors.
______________________
Before RADER, Chief Judge, LOURIE, and MOORE, Circuit
Judges.
PER CURIAM
The U.S. Patent and Trademark Office, Patent Trial
and Appeal Board (Board), affirmed the examiner’s rejec-
tion of all claims in U.S. Patent Application No.
2 IN RE EATON
11/145,716 (’716 application). This court reverses the
Board’s anticipation and obviousness determinations and
remands.
I.
On June 6, 2005, Kevin Eaton filed the ’716 applica-
tion, entitled “Treatment of Dermatological Conditions.”
The ’716 application claims a method of treating psoriasis
by administering a multiple vitamin supplement composi-
tion. J.A. 55, 284. The claims-at-issue on appeal—claims
1, 8, 9, and 10—specifically recite a vitamin supplement
composition of folic acid, vitamin B12, and vitamin B6.
J.A. 55.
The claims-at-issue further recite that the composi-
tion is “essentially free of anti-oxidants.” J.A. 55. The
Summary of the Invention states:
By “essentially free” it is meant that the vitamin
composition should not contain an amount of anti-
oxidants which would tend to damage and inacti-
vate some of the vitamin B12 and/or folic acid of
the vitamin supplement. The presence of lower
amounts of antioxidants would not render the vit-
amin composition of the present invention ineffec-
tive or of reduced effectiveness.
J.A. 286. The specification notes that “among the antiox-
idants especially to be avoided is added vitamin C.” J.A.
288. Although the specification acknowledges that “anti-
oxidants may be present during the preparation” of the
vitamin supplements, the antioxidants should be “re-
moved after[] [the preparation], either completely or at
least to a level where they have virtually no effect on the
vitamin components of the present invention.” J.A. 288.
Because the specification acknowledges that antioxidants
may be present during preparation, it teaches “processes
wherein the folic acid, vitamin B12, and/or vitamin B6
ha[ve] been tested for the presence of antioxidant and
IN RE EATON 3
shown to be free of antioxidant.” J.A. 288. Similarly, the
specification teaches that because the “vitamin supple-
ment compound [] is meant to be essentially free of anti-
oxidants, any carrier, [or] filler . . . used to prepare a
tablet, [or] capsule . . . should also be essentially free of
anti-oxidants.” J.A. 288.
Independent claim 1 is representative:
1. A method of treating psoriasis by administer-
ing to a person a vitamin supplement composi-
tion comprising at least about 25 micrograms
to about 2,200 micrograms of folic acid, at least
about 25 micrograms to about 2,500 mi-
crograms 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.
J.A. 55. Claim 9 teaches the method of claim 1 wherein
the multiple components are in different concentrations:
800 micrograms (µg) of folic acid, 115 micrograms of
vitamin B12, and 10 milligrams (mg) of vitamin B6. J.A.
55. Claims 8 and 10 teach the methods of claims 1 and 9
in tablet form, respectively. J.A. 55.
The examiner rejected the ’716 application’s claims as
anticipated or obvious in view of five prior art references.
J.A. 64–72. Relevant to the claims-at-issue, the examiner
rejected claim 1 under 35 U.S.C. § 102(b) as anticipated
by DE Patent No. 10053155 A1 (Jungkeit). J.A. 64–72,
298–305. The examiner rejected claims 1 and 8–10 under
35 U.S.C. § 103(a) as obvious in view of Jungkeit and U.S.
Patent No. 6,107,349 (Mantynen or the ’349 patent). J.A.
64–72, 322–26.
Jungkeit was filed in 2000 and discloses the use of a
multivitamin preparation for the treatment of psoriasis.
J.A. 300. The preparation specifically contains vitamin
B1, vitamin B2, nicotine amide, dexpanthenol, biotin, folic
4 IN RE EATON
acid, vitamin B6, vitamin B12, and two known antioxidants:
vitamin C and vitamin E. J.A 300. Because psoriasis is
not considered to be the result of vitamin deficiencies,
Jungkeit notes that that “effectiveness of the multivita-
min preparation identified . . . is therefore not explainable
with conventional theories.” J.A. 302. Specifically,
Jungkeit teaches 500 µg of folic acid, 20 mg of vitamin B6,
150 µg of vitamin B12, 200 mg of vitamin C, and 50 mg of
vitamin E. Thus, Jungkeit teaches 250 mg of antioxi-
dants in combination with approximately 20 mg of B-
complex vitamins and 0.5 mg of folic acid.
Mantynen was filed in 1998 and discloses the “use of a
novel composition comprising Vitamin E, evening prim-
rose oil and B-complex vitamins.” ’349 patent, col. 1 ll. 6–
8. Mantynen teaches that the “compounds act synergisti-
cally” because “[w]hen administered alone, the compounds
do not produce significant improvements in psoriasis.”
’349 patent, col. 3 ll. 35–38. Specifically, Mantynen
teaches that “Vitamin E is postulated to have synergistic
effect when added to [evening primrose oil] . . . by stabiliz-
ing the cell membrane.” ’349 patent, col. 4 ll. 50–54.
Thus, all of Mantynen’s claims include folic acid, vitamin
E, vitamin B6, and vitamin B12. ’349 patent, claims 1–11.
And, the preferred dosages teach a greater amount of
vitamin E than B-complex vitamins or folic acid.
Based, in part, on Jungkeit and Mantynen, the exam-
iner issued a Final Office Action on May 21, 2010, reject-
ing claims 1, 8–11, and 14 of the ’716 application. The
Board affirmed the rejections.
The Board found that the specification defines the
phrase “essentially free of anti-oxidants” to “allow antiox-
idants as long as they do not damage or inactivate the B12
or folic acid.” J.A. 4. Thus, the Board agreed with the
examiner that claim 1 of the ’716 application could be
“reasonably interpreted to allow for 200 µg of vitamin C”
because “Jungkeit’s composition containing 200 µg of
IN RE EATON 5
vitamin C was effective [at] treat[ing] psoriasis.” J.A. 4–
5. However, Jungkeit actually discloses 200 mg of Vita-
min C. J.A. 305. Similarly, because the applicant’s
arguments concerning the obviousness rejections relied on
the same “essentially free of anti-oxidants” arguments,
the Board found them unpersuasive. J.A 9.
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. Appellant’s Br. at 5.
Similarly, Mr. Eaton appeals the Board’s obviousness
rejection of claims 1 and 8–10 over Jungkeit and Man-
tynen because “Mantynen fails to rectify the deficiencies
of Jungkeit.” Appellant’s Br. at 8. This court has juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
II.
This court reviews claim construction without defer-
ence. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448,
1455–56 (Fed. Cir. 1998) (en banc).
Anticipation is a question of fact. Rapoport v. De-
ment, 254 F.3d 1053, 1058 (Fed. Cir. 2001). This court
reviews the Board’s factual findings for substantial evi-
dence. In re Mouttet, 686 F.3d 1322, 1330 (Fed. Cir.
2012).
Obviousness is a question of law based on underlying
facts:
An analysis of obviousness must be based on sev-
eral factual inquiries: (1) the scope and content of
the prior art; (2) the differences between the prior
art and the claims at issue; (3) the level of ordi-
nary skill in the art at the time the invention was
made; and (4) objective evidence of nonobvious-
ness, if any.
6 IN RE EATON
In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009); see also
Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
In the present case, the Board’s affirmance—and the
examiner’s rejections—turn 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 “essen-
tially 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.” J.A. 286; Appellant’s Br. at 5; Appellee’s Br.
at 14. The specification goes on to state that “lower
amounts of antioxidants” may be present if they do not
render the claimed composition “ineffective or [] reduce[]
effectiveness.” J.A. 286. The parties’ disagreement stems
from the fact that the specification does not, however,
quantify what is a “lower amount[]” or what “amount of
antioxidants [] would tend to damage or inactivate” the
vitamin B12 or folic acid, but instead relies on functionali-
ty.
Referring to the specification, the Board correctly
determined that “essentially free” of antioxidants means a
composition that “should not contain an amount of antiox-
idants which would tend to damage and inactivate some of
the vitamin B12 and/or folic acid of the vitamin supple-
ment.” J.A. 3 (emphasis added). The Office appears to
agree that the construction further requires that the
amount of antioxidant “would not render the vitamin
composition of the present invention ineffective or of
reduced effectiveness,” as clarified in the specification.
Appellee’s Brief 11, 14 (emphasis added). For this reason,
the construction does not require “no” added vitamin C,
vitamin E, or the like. Rather, the correct construction
requires that “lower amounts” of antioxidants may be
present, but the effectiveness of the composition must not
be reduced.
IN RE EATON 7
A review of the Board’s decision reveals that the
Board was not faithful to this construction. Anticipa-
tion requires “that the four corners of a single, prior art
document describe every element of the claimed inven-
tion.” Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359,
1369 (Fed. Cir. 2008). To anticipate, it is not enough for
the prior art composition to have an amount of antioxi-
dant 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 composi-
tion comprising B6, B12, and folic acid in the requisite
amounts.” J.A. 3; see J.A. 304–305. However, substantial
evidence does not support the Board’s finding that
Jungkeit’s composition is “essentially free of antioxi-
dants.” The Board and the examiner have not analyzed
the prior art for reduced effectiveness.
The Office argues that “the Board correctly found that
claim 1 permits antioxidants in amounts that do not
render the vitamin supplement of the claimed methods
ineffective.” Appellee’s Br. 18 (emphasis added). The
Board and examiner assumed, without any rationale, that
because Jungkeit states that its composition was effective
at treating psoriasis, Jungkeit’s use of 200 mg of vitamin
C would meet the applicant’s definition of “essentially free
of antioxidants.” See J.A. 4–5. Jungkeit’s disclosed
compositions may be effective, but still have an amount of
antioxidant that “inactivate[s] some of the vitamin B12
and/or folic acid.” J.A. 286. In short, the 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 effective-
ness due to the presence of antioxidants. The Office has
not established that the cited references disclose composi-
8 IN RE EATON
tions whose effectiveness is not reduced at all due to the
presence of the antioxidants.
The Board’s decision is particularly problematic given
a clear factual error appearing in both the examiner’s and
the Board’s analysis of Jungkeit. Specifically, Jungkeit
discloses 200 milligrams of vitamin C—not 200 mi-
crograms, as stated by the examiner. J.A. 305. The Of-
fice’s analyses repeatedly relied on the understanding
that “Jungkeit’s composition contain[ed] 200 µg of vitamin
C.” J.A. 4, 65 (emphasis added). In truth, Jungkeit
discloses 1000 times that much vitamin C—200 mg. J.A.
305. This error is not harmless. Indeed, Jungkeit teaches
the use of vitamin C in a significantly greater quantity
than any of the other nine components in Jungkeit’s
claimed composition. J.A. 304–05.
For example, the examiner’s rejection stated:
“It is not clear from [the definition in the specifi-
cation] what amount [of antioxidant] would ‘dam-
age or inactivate’ some of the vitamin B12 and/or
folic acid. However, it is clear from Jungkeit that
the amount of vitamin C present in the composi-
tion (200µg) does not damage and inactivate the
vitamin B12 and/or folic acid.”
J.A. 65 (emphasis added). The Board adopted the exam-
iner’s explanation. J.A. 4. This error further undermines
the Board’s conclusion that the prior art discloses compo-
sitions that are “essentially free” of antioxidants. When
the reasoning repeatedly adopts such a misstatement,
substantial evidence cannot support a finding that
Jungkeit met the “essentially free of antioxidants” ele-
ment.
Turning to obviousness, the Board adopted the exam-
iner’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
IN RE EATON 9
workable range.” J.A. 67. However, 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
regarding the amount of antioxidant present in Jungkeit
taints its obviousness conclusion. In fact, both Jungkeit
and Mantynen disclose compounds where the concentra-
tion of antioxidants is greater than the concentrations of
either folic acid or the B-vitamins.
The 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 antioxi-
dants,” but specifically teaches that “the antioxidant[]
especially to be avoided is added vitamin C.” J.A. 288. In
comparison, the amount of vitamin C in Jungkeit’s
claimed composition is over three times greater than the
next-most prevalent component. J.A. 304–05. And
Jungkeit notes that the effectiveness of this specific
concentration of components is “not explainable with
conventional theories.” J.A. 302.
Similarly, Mantynen discloses a “novel composition”
comprising a known antioxidant—vitamin E—evening
primrose oil, and B-complex vitamins. Together, this
“specific combination” of compounds “act[s] synergistical-
ly” to produce improvements in psoriasis that does not
occur when the compounds are administered alone. ’349
patent, col. 3 ll. 32–38. “[I]n the face of such divergent
compositions with express disclaimers of the other’s
contents,” the record demonstrates neither a motivation
to “adjust” those synergistic concentrations nor a motiva-
tion to combine them. See Leo Pharm. Prods., Ltd. v. Rea,
726 F.3d 1346, 1356 (Fed. Cir. 2013). Therefore, this
court reverses the Board’s obviousness determination.
10 IN RE EATON
IV.
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