In Re Taylor

NOTE: This disposition is nonprecedential.

United States Court of Appeals
for the Federal Circuit
__________________________

(Serial No. 11/429,507)
IN RE JASON ARTHUR TAYLOR, REBECCA ANN
ZELTINGER,
AND JOHN G. COSBY, JR.
__________________________

2012-1006
__________________________

Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences
____________________________

Decided: June 14, 2012
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JASON ARTHUR TAYLOR, Technology Advancement
Labs LLC, of Kensington, Maryland, pro se.

JOHN G. COSBY, Technology Advancement Labs LLC,
of Kensington, Maryland, pro se.

REBECCA ANN ZELTINGER, Technology Advancement
Labs LLC, of Kensington, Maryland, pro se.

RAYMOND T. CHEN, Solicitor, Office of the Solicitor,
United States Patent and Trademark Office, of Alexan-
IN RE TAYLOR 2

dria, Virginia, for appellee David J. Kappos, Director,
United States Patent and Trademark Office. With him on
the brief were, MARY L. KELLY and ROBERT J. MCMANUS,
Associate Solicitors.
__________________________

Before LOURIE, DYK, and WALLACH, Circuit Judges.
LOURIE, Circuit Judge.

Appellants Jason Arthur Taylor, Rebecca Ann Zelt-
inger, and John G. Cosby, Jr., (collectively, “Taylor”)
appeal from the decision of the Board of Patent Appeals
and Interferences (“the Board”) affirming the rejections of
all pending claims of U.S. Patent Application No.
11/429,507 (“the ’507 Application”) as anticipated, obvi-
ous, and/or lacking adequate written description. See Ex
parte Taylor, No. 2010-009465 (B.P.A.I. Mar. 28, 2011)
(“Board Decision“), reh’g denied, (B.P.A.I. June 29, 2011).
Because the Board correctly construed the pending claims
of the ’507 application and did not err in finding those
claims unpatentable in view of the cited prior art, we
affirm.

BACKGROUND

The ’507 Application discloses a cellulose-based dough
that “can be used to form a variety of low-calorie foods.”
’507 Application at 4, ¶ 13. Instead of flour, which con-
tributes significantly to the caloric content of conventional
baked goods, the disclosed dough contains a mixture of
cellulose, hydrocolloids (such as methylcellulose, xanthan
gum, and hemicellulose), and other ingredients. Accord-
ing to the written description of the ’507 Application, the
disclosed dough can be used to make a variety of low-
calorie foods, such as doughnuts, breads, crackers, cakes,
sauces, and flavored dips that are “nearly, though not
3 IN RE TAYLOR

completely, as savory and satisfying as their traditional,
full-calorie counterparts.” Id. at 7, ¶ 21. The ’507 Appli-
cation defines “low-calorie” as “a ≥50% caloric reduction
as compared to the traditional version of the food per unit
weight.” Id. at 2, ¶ 3.

Taylor filed the ’507 Application with 36 original
claims on May 5, 2006. The examiner issued a non-final
office action on August 5, 2008, and Taylor responded on
December 6, 2008 by amending claims 1–15, cancelling
claims 16–36, and adding new claims 37–58. All of the
pending claims except independent claim 58 depend,
directly or indirectly, from independent claim 1. Claim 1
is representative and, as amended, reads as follows:

1. A mix for making low-calorie, palatable food or
food components comprising by dry weight at least
about 30% of fiber that is at least 50% cellulose,
and an effective amount of hydrocolloids to help
bind said mix to water.

J.A. 355 (emphases added). In addition, Taylor’s response
included several proposed amendments to the specifica-
tion corresponding to the new and amended claims. See
Suppl. App. 289, 294–300.

In a final office action dated March 23, 2009, the ex-
aminer rejected all of Taylor’s pending claims. In perti-
nent part, claims 1, 3–7, and 9–14 were rejected as
anticipated under 35 U.S.C. § 102(b) by U.S. Patent
5,976,598 (“Akkaway”); claims 2, 8, 15, and 37–58 were
rejected as obvious under 35 U.S.C. § 103(a) in view of
Akkaway; claims 3, 37–43, 47–49, 51, 53, and 57 were
rejected as lacking adequate written description under 35
U.S.C. § 112, ¶ 1; and claim 14 was rejected for lack of
enablement under § 112, ¶ 1. The examiner also declined
IN RE TAYLOR 4

to enter most of Taylor’s proposed amendments to the
specification on grounds that those amendments would
introduce new matter.

The Board reversed the examiner’s enablement rejec-
tion as to claim 14 but affirmed the remaining rejections.
In particular, the Board held that the terms “low-calorie”
and “palatable” found in the preambles of independent
claims 1 and 58 are non-limiting because they merely
reflect intended uses or purposes without imposing any
structural limitation on the claimed compositions. Board
Decision at 6–7. Thus, the Board concluded that the
terms “at least about 30% of fiber that is at least 50%
cellulose” and “an effective amount of hydrocolloids to
help bind said mix to water” were the only limitations of
claim 1 entitled to patentable weight. Id. at 7. On the
merits, the Board found that (i) Akkaway discloses low-
calorie flour replacement compositions comprising coated
particulate cellulose capable of replacing all or part of a
food’s starch component; (ii) Akkaway’s cellulose composi-
tions can be mixed with 10% or more hydrocolloid bulking
agents such as carboxymethylcellulose, arabinogalactan,
xanthan gum, and methylcellulose; and (iii) Taylor’s
specification discloses an exemplary dough containing
only 3.8% hydrocolloid. Id. at 3–4. Based on those find-
ings, the Board held that Akkaway anticipated claim 1,
and the Board affirmed the examiner’s obviousness rejec-
tions on similar grounds. Id. at 7–9. Regarding the
written description rejections, the Board held that Taylor
had provided no evidence that one of skill in the art would
have recognized the disputed claim limitations as explic-
itly or inherently supported in the ’507 Application’s
original disclosure. Id. at 11–12.
5 IN RE TAYLOR

The Board denied Taylor’s request for rehearing, and
Taylor timely appealed to this court. We have jurisdiction
pursuant to 28 U.S.C. § 1295(a)(4)(A).

DISCUSSION

We review the Board’s legal conclusions de novo and
its factual determinations for substantial evidence. In re
Am. Acad. Sci. Tech Ctr., 367 F.3d 1359, 1363 (Fed. Cir.
2004). Substantial evidence means “such relevant evi-
dence as a reasonable mind might accept as adequate to
support a conclusion.” Consol. Edison Co. v. Nat’l Labor
Relations Bd., 305 U.S. 197, 229 (1938).

Claim construction is a matter of law. Am. Acad. Sci.,
367 F.3d at 1363. In contrast to district court proceedings
involving an issued patent, claims under examination
before the PTO are given their broadest reasonable inter-
pretation consistent with the specification. In re ICON
Health & Fitness, 496 F.3d 1374, 1379 (Fed. Cir. 2007).
That broader interpretive standard does not prejudice the
applicant, who has the ability to correct errors in claim
language and to adjust the scope of claim protection as
needed during prosecution by amending the claims. In re
Yamamoto, 740 F.2d 1569, 1571–72 (Fed. Cir. 1984).

Anticipation is a question of fact, In re Suitco Surface,
Inc., 603 F.3d 1255, 1259 (Fed. Cir. 2010), as is the issue
of sufficient written description under § 112, ¶ 1, Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed.
Cir. 2010) (en banc). Obviousness is a question of law
based on underlying factual findings. In re Gartside, 203
F.3d 1305, 1315–16 (Fed. Cir. 2000).
IN RE TAYLOR 6

Claim Construction

The parties’ primary dispute centers on whether the
terms “low-calorie” and “palatable,” as recited in the
preambles of claims 1 and 58 of the ’507 Application, are
limiting. Citing Catalina Marketing International, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801 (Fed. Cir. 2002) and
related cases, 1 Taylor argues that those terms must be
afforded patentable weight because they were introduced
and relied upon during prosecution expressly to distin-
guish the pending claims from Akkaway. The Board held
that neither term limits or defines the structure of the
claimed compositions, that the preambles merely recite
the intended use for the compositions, and that the dis-
puted terms therefore do not constitute substantive
limitations under the broadest reasonable interpretation
of the pending claims.

We conclude that the terms “low-calorie” and “palat-
able” are not limiting as used in claims 1 and 58. In
general, the preamble limits a claim if it recites essential
structure or is otherwise “necessary to give life, meaning,
and vitality” to the claim, Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (quot-
ing Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951)), while
the preamble is not limiting when the claim body defines
a structurally complete invention and the preamble states

1 Taylor also cites the following cases to the same
effect: Metabolite Labs., Inc. v. Lab. Corp. of Am. Hold-
ings, 370 F.3d 1354, 1362 (Fed. Cir. 2004); W.E. Hall Co.,
Inc. v. Atlanta Corrugating, LLC, 370 F.3d 1343, 1353
(Fed. Cir. 2004); Storage Tech. Corp. v. Cisco Sys., Inc.,
329 F.3d 823, 830 (Fed. Cir. 2003); Invitrogen Corp. v.
Biocrest Manufacturing, L.P., 327 F.3d 1364 (Fed. Cir.
2003); In re Cruciferous Sprout Litig., 301 F.3d 1343, 1348
(Fed. Cir. 2002).
7 IN RE TAYLOR

only a purpose or intended use, Rowe v. Dror, 112 F.3d
473, 478 (Fed. Cir. 1997). Here, the bodies of claims 1
and 58 define the requisite components of the claimed
compositions—specified proportions of fiber and hydrocol-
loid—and we do not perceive, nor has Taylor explained,
how stating that such compositions are “for making low-
calorie, palatable foods” further limits the scope of protec-
tion sought, i.e., excludes compositions that would other-
wise satisfy the recited structural requirements.

The Board thus correctly discerned that the pream-
bles of claims 1 and 58 are not limiting, and Taylor mis-
apprehends Catalina and related cases in his arguments
to the contrary. Catalina set forth “some guideposts” for
evaluating whether a particular claim’s preamble limits
claim scope; among those, we included the general propo-
sition that “clear reliance on the preamble during prose-
cution to distinguish the claimed invention from the prior
art transforms the preamble into a claim limitation
because such reliance indicates use of the preamble to
define, in part, the claimed invention.” 289 F.3d at 808.
Taylor seizes on that “guidepost” as categorically deter-
minative, arguing that Catalina compels the examiner,
the Board, and ultimately this court to construe the
disputed preamble terms as limiting because he sought to
distinguish Akkaway before the examiner based in part
on those terms. But Catalina, and indeed all of the other
decisions that Taylor cites, arose in the context of in-
fringement litigation, where prosecution is closed and the
court’s task is to divine the meaning of issued claims
under a narrower interpretive standard. Here, where
prosecution remains open and Taylor retains the option of
amending the claim as needed, the Board correctly re-
jected Taylor’s rigid reading of Catalina to conclude that
the preambles of claims 1 and 58 of the ’507 Application
IN RE TAYLOR 8

are not limiting under the broadest reasonable interpreta-
tion of those claims.

Prior Art Rejections

The bulk of Taylor’s arguments against the rejections
based on Akkaway presume patentable weight for the
terms “palatable” and “low-calorie” in the preambles of
claims 1 and 58. As discussed, those terms are not limit-
ing, and we therefore need not address those arguments
here. Taylor advances an additional argument, however,
that Akkaway fails to disclose “cellulose” as claimed in
claim 1. Taylor contends that Akkaway describes a
coated, hydrophobic cellulose that is “not readily obtain-
able on the open market” and is “much unlike the normal
cellulose described in the Taylor specification.” Therefore,
according to Taylor, the ’507 Application “already implic-
itly constricts claim 1” to exclude such coated cellulose
and distinguish over Akkaway.

Taylor’s argument is not persuasive. Our focus lies on
the claim language, and claim 1, as currently drafted,
offers no basis for distinguishing Akkaway’s coated cellu-
lose, which—as even Taylor acknowledges—comprises
cellulose. Notwithstanding Taylor’s arguments suggest-
ing an “implied negative limitation,” claim 1 broadly
recites “cellulose” without restriction regarding particular
subtypes of cellulose or methods for its preparation. As
the Board found, Akkaway thus meets the “cellulose”
limitation of claim 1, and Taylor cannot distinguish
Akkaway based on unrecited limitations. 2 We therefore
affirm the rejection of claim 1 under 35 U.S.C. § 102(b).

2 The examiner suggested amendments to distin-
guish Taylor’s claims from the cellulose disclosed by
9 IN RE TAYLOR

Taylor did not separately argue the novelty of claims
3–7 and 9–14, so the Board properly upheld the exam-
iner’s anticipation rejections of those claims. Regarding
the obviousness rejections against claims 2, 8, 15, and 37–
57, Taylor reiterated the same arguments presented with
regard to claim 1, and thus we conclude that the Board
properly upheld those rejections as well.

Finally, Taylor argues that the Board erred in uphold-
ing the examiner’s rejection of claim 58 for obviousness.
In addition to the cellulose and hydrocolloid limitations
found in claim 1, claim 58 recites the following: “upon
appropriate exposure to microelectric oscillating electric
fields, form non-disulphide-bonded cross-linked polymers
that help strengthen said dough during the cooking
process.” J.A. 305. Relying on that language, Taylor
argues that the rejection of claim 58 must be reversed
because the examiner presented no data to show that
microwave cooking can form such polymers. The Board
affirmed the rejections, holding that the results of micro-
wave cooking described in claim 58 represent no more
than a non-limiting recitation of intended use with re-
spect to the claimed dough composition. Even so, the
Board continued, microwave cooking was well known in
the art such that persons of relevant skill knew that non-
disulfide bonded cross-linked polymers form in dough
upon heating.

We agree with the Board that at the time the ’507
Application was filed in 2006, it would have been obvious
to one of skill in the art to heat or cook food using a
microwave as recited in claim 58. Moreover, since Ak-
kaway discloses each component of the claimed dough

Akkaway, but Taylor chose to rely exclusively on per-
ceived “implicit” limitations in the claims. J.A. 803.
IN RE TAYLOR 10

(i.e., the fiber and hydrocolloid), such heating would
necessarily have produced the same cross-linked polymers
in the prior art Akkaway composition. The Board there-
fore did not err in upholding the rejection of claim 58.

Rejections for Lack of Written Description

Under § 112, ¶ 1, claims must find sufficient support
in the written description, such that the disclosure “rea-
sonably conveys to those skilled in the art that the inven-
tor had possession of the claimed subject matter as of the
filing date.” Ariad Pharms., 598 F.3d at 1351. Taylor
contests the examiner’s rejections of claims 3, 37–43, 47–
49, 51, 53, and 57 as lacking sufficient written descrip-
tion. As described above, however, we have affirmed
rejections against each of the pending claims based on
prior art, so we need not consider the examiner’s addi-
tional rejections under § 112, ¶ 1.

CONCLUSION

We have considered Taylor’s remaining arguments
and find them unpersuasive. Accordingly, the final
decision of the Board is affirmed.

AFFIRMED