DSM IP ASSETS B.V.

Patent Trials and Appeals Board

Jan 28, 2022

2021005142 (P.T.A.B. Jan. 28, 2022)

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. 15/563,475 09/29/2017 Robertus Antonius Mijndert VAN DER HOEVEN 2919208-319001 4413 84331 7590 01/28/2022 McBee Moore & Vanik, IP, LLC 510 South Market Street Frederick, MD 21701 EXAMINER LI, CHANGQING ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 01/28/2022 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): docketing@mmviplaw.com smcbee@mmviplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERTUS ANTONIUS MIJNDERT VAN DER HOEVEN, PETER PHILIP LANKHORST, and SILVIA GOSIEWSKA Appeal 2021-005142 Application 15/563,475 Technology Center 1700 ____________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and DONNA M. PRAISS, Administrative Patent Judges. PRAISS, Administrative Patent Judge. DECISION ON APPEAL1 Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 7, 8, and 12-15, which constitute all the claims pending in this application. Claims 1-6, 9, and 10 have been 1 In this Decision, we refer to the Specification filed Sept. 29, 2017 (“Spec.”), the Final Office Action dated Feb. 23, 2021 (“Final Act.”), the Appeal Brief filed May 21, 2021 (“Appeal Br.”), the Examiner’s Answer dated July 12, 2021 (“Ans.”), and the Reply Brief filed Aug. 27, 2021 (“Reply Br.”). 2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies DSM IP ASSETS B.V. as the real party in interest. Appeal Br. 1. Appeal 2021-005142 Application 15/563,475 2 cancelled. Claim 11 has been withdrawn. A telephonic hearing was held on January 18, 2022.3 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. STATEMENT OF THE CASE The subject matter on appeal relates to steviol glycosides. Spec. 1:6. The Specification describes intensely sweet compounds known as steviol glycosides that accumulate in the leaves of the perennial herb, Stevia rebaudiana Bertl, as alternative high potency sweeteners. Id. at 1:13-16. According to the Specification, Appellant’s new steviol glycosides produced by microorganisms will have different sensory properties compared to known steviol glycosides, but may be used alone or in combination with other steviol glycosides as sweeteners or in sweetener compositions. Id. 2:10-15. Claim 7 is illustrative and reproduced from the Claims Appendix to the Appeal Brief. 3 A transcript of the hearing will be filed in the record in due course. Appeal 2021-005142 Application 15/563,475 3 7. A steviol glycoside having the formula (IV) Appeal Br. 21 (Claims Appendix). ANALYSIS 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.”)). After considering the argued claims and Appellant’s arguments, we are persuaded of reversible error in the appealed rejections. The Examiner rejects claims 7, 8, and 12-15 as follows for the reasons provided in the Final Office Action. Final Act. 2-7. Claims Rejected 35 U.S.C. § References/Basis 7, 8, 12-15 103 Olsson, Purkayastha 7, 8, 12-15 103 Carlson, Purkayastha Appeal 2021-005142 Application 15/563,475 4 We need only address claim 7, which is the sole independent claim in this Appeal. Obviousness over Olsson and Purkayastha The Examiner finds Olsson’s isomer 2 differs from Appellant’s recited formula (IV) in that one ß-glucose moiety is linked to the sugar molecule at a different position making it a positional isomer. Final Act. 3. Olsson’s isomer 2 is shown below. Olsson’s isomer 2 above is reproduced from Olsson’s Figure 7B and has 3 ß-glucose moieties at the C13 position of the diterpene core and 4 ß- glucose moieties at the C19 position of the diterpene core. Olsson Fig. 7B; Final Act. 3. The Examiner finds that both Olsson’s isomer 2 and the claimed formula (IV) may be used as a sweetener or flavor in foodstuffs and/or beverages and would have been expected to have similar properties based on their very close structural similarities. Final Act. 3. The Examiner finds Purkayastha teaches undesired taste attributes can be substantially reduced or eliminated by the reaction of intermolecular transglycosylation of various Appeal 2021-005142 Application 15/563,475 5 enzymes for the attachment of new carbohydrates at the C13 and C19 positions of steviol glycosides. Id. at 4 (citing Purkayastha ¶¶ 13, 37). The Examiner finds Purkayastha teaches the sweetness intensity increases or decreases with the increase in the number of glucose units in steviol glycoside molecules. Id. The Examiner determines it would have been obvious to have made the claimed compound through intermolecular transglycosylation to attach carbohydrate such as glucose at positions C13 and C19 of steviol glycosides to modify the molecule’s sweetness and flavor profile. Id. Appellant contends the Examiner erred in rejecting claim 7 over Olsson and Purkayastha because (1) the Examiner provides no rationale for selecting Olsson’s isomer 2 from among Olsson’s 12 compounds to modify, (2) Purkayastha does not provide a reason to remove a glucose moiety at C13 of the core in conjunction with adding a glucose moiety at C19 of the core, (3) Purkayastha cautions that relative sweetness does not increase beyond a certain level with the further addition of glucose moieties and may effectively reduce sweetness, and (4) Purkayastha discloses that 60% of glucosylated steviol glycosides with 3-9 glucose moieties were the least sweet which suggests removing a glucose moiety from Olsson’s isomer 2 at the C10 position rather than adding a glucose moiety. Appeal Br. 7-12. Appellant’s arguments persuade us that the Examiner reversibly erred in rejecting the claims as obvious over the combination of Olsson and Purkayastha. “[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.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). To establish prima facie obviousness of a claimed invention, all the claim Appeal 2021-005142 Application 15/563,475 6 limitations must be taught or suggested by the prior art. See In re Royka, 490 F.2d 981, 985 (CCPA 1974). “[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner acknowledges that Olsson’s structure differs from the claimed structure and determines that Olsson’s positional isomer is sufficiently similar to have the same expected properties. Final Act. 3-4; Ans. 9-10. The Examiner’s conclusion is not supported by the preponderance of the evidence cited in this Appeal record. Olsson’s disclosure provides no description on which a person having ordinary skill in the art would have selected Olsson’s isomer 2 as a starting material or would have considered a positional isomer thereof to have similar properties. Purkayastha supports Appellant’s position that changes in the number of glucose moieties at the C13 and C19 positions on the backbone of Stevia glycocides to convert Olsson’s positional isomer to the claimed structure (removing a glucose moiety at C13 while adding a glucose moiety at C19) would not predictably, let alone favorably, affect the molecule’s properties. Purkayastha states “glycosylation of steviol glycosides beyond a certain number of glucose units effectively reduces sweetness,” without specifying what that number is. Purkayastha ¶ 37. Purkayastha’s Figures 2 and 4 show that adding glucose moieties beyond 1-2 does not increase sweetness but decreases it. In Purkayastha’s Figure 2, glucosylated steviol glycosides with the most additional glucose moieties (labelled GSG-M and GSG-L) were the least sweet. In Purkayastha’s Figure 4, these compositions with the most Appeal 2021-005142 Application 15/563,475 7 additional glucose moieties were also the most bitter. See also Decl. ¶¶ 41, 43 (“Table 4 of Purkayastha shows that the addition of even 1 or 2 glucose units decreases the sweetness.”). Therefore, Purkayastha does not support the Examiner’s position that a person having ordinary skill in the art would have modified Olsson’s isomer 2 in a manner to obtain the claimed compound or would have had a reasonable expectation of success. The Examiner’s position that the claimed compound is rendered prima facie obvious merely by Olsson’s disclosure of a positional isomer for use as a sweetener also is not supported in law. While a known compound may suggest its homolog, analog, or isomer possesses similar properties, the prior art must have suggested making the specific molecular modifications necessary to achieve the claimed invention. Takeda Chem. Indus., Ltd. v Alphapharm Pty., Ltd., 492 F.3d 1350, 1356 (Fed. Cir. 2007); see also Procter & Gamble v. Teva Pharm., 566 F.3d 989, 994 (Fed. Cir. 2009) (“[U]nder KSR, it remains necessary to identify some reason that would have led a chemist to modify a known compound in a particular manner to establish prima facie obviousness of a new claimed compound.”). In the Answer, the Examiner states that the selection of Olsson’s isomer 2 is based on “the widely understood predictability that steviol glycosides have sweetening properties” as motivation. Ans. 10. The Examiner provides that same explanation for all of Olsson’s listed compounds “recommend[ing] themselves as a lead compound.” Id. However, as discussed above, the cited evidence in this Appeal record shows unpredictability in the sweetness properties of modified steviol glycosides, including an increase in bitterness associated with an increase in glucose Appeal 2021-005142 Application 15/563,475 8 moieties. Thus, the Examiner’s selection and modification of Olsson’s isomer 2 is not supported by the cited record and based solely on hindsight. Accordingly, we reverse the Examiner’s rejection of claim 7 for the reasons given above. We also reverse the Examiner’s obviousness rejection of claims 8 and 12-15 based on their dependency from claim 7. Obviousness over Carlson and Purkayastha The Examiner’s rejection of independent claim 7 over the combination of Carlson and Purkayastha similarly relies on a positional isomer of the claimed compound. The Examiner finds the claimed compound would have been obvious based on the structural similarity to Carlson’s compound 4, which is a positional isomer differing in the position of a glucose molecule. Final Act. 5-6. The Examiner determines that because Carlson and Purkayastha are both directed to transglycosylated steviol glycosides and Purkayastha teaches that the sweetness and flavor profile can be modified with an increase in the number of glucose units in steviol glycoside molecules, it would have been obvious to a person having ordinary skill in the art to attach glucose at positions C13 and C19 to modify the sweetness and flavor profile. Id. at 6-7. Appellant contends the Examiner erred in rejecting claim 7 as obvious over Carlson and Purkayastha because there is no reason to alter Carlson’s solubility enhancing compounds to be more similar to poorly soluble Reb D and Reb M by removing a C13 glucose and reasonably expect them to have the solubility enhancing properties desired by Carlson. Appeal Br. 12-13. Appellant also contends Carlson provides no suggestion to add a glucose moiety at C19 because none of Carlson’s solubility enhancers have four glucose moieties at C19. Id. at 13. Appeal 2021-005142 Application 15/563,475 9 We find Appellant’s arguments persuasive of error for essentially the same reasons discussed above in connection with the rejection of claim 7 over the combination of Olsson’s positional isomer and the teachings of Purkayastha. As discussed above, a positional isomer is not sufficient to render the claimed structure obvious in the absence of some teaching or suggestion in the prior art to modify the structure in a manner to achieve the claimed compound. In the Answer, the Examiner finds Purkayastha provides a motivation to use intermolecular transglycosylation to attach new carbohydrates at positions C13 and C19 of steviol glycosides for the purpose of modifying undesired taste attributes. Ans. 12 (citing Purkayastha ¶¶ 13, 37). The Examiner determines such a modification would have had a reasonable expectation of success because it “would result in a diterpene core with various amount of sugar units attached thereon, which the skilled artisan would reasonably predict would provide some degree of sweetness” based on the use of steviol glycosides as sweeteners. Id. at 13. The Examiner’s conclusion is not supported by the preponderance of the evidence cited in this Appeal record. As discussed above, Purkayastha discloses that relative sweetness does not increase beyond a certain level with a further increase in glucose units (Purkayastha ¶ 13) and that “beyond a certain number of glucose units effectively reduces sweetness” (Purkayastha ¶ 37). Thus Purkayastha fails to provide any suggestion to modify Carlson’s positional isomer in the manner required to achieve the claimed compound. For these reasons, we reverse the Examiner’s rejection of claim 7 under 35 U.S.C. § 103 over Carlson and Purkayastha. We also reverse the Appeal 2021-005142 Application 15/563,475 10 Examiner’s rejection of claims 8 and 12-15 under 35 U.S.C. § 103 based on their dependency from claim 7. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 7, 8, 12-15 103 Olsson, Purkayastha 7, 8, 12-15 7, 8, 12-15 103 Carlson, Purkayastha 7, 8, 12-15 Overall Outcome 7, 8, 12-15 REVERSED