Ex Parte Anfinsen

Board of Patent Appeals and Interferences

Feb 23, 2009

10319129 (B.P.A.I. Feb. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JON ROBERT ANFINSEN
____________

Appeal 2008-6265
Application 10/319,129
Technology Center 1700
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Decided:1 February 24, 2009
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Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

1The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) (2002) from the
Examiner’s final rejection of pending claims 1-5, 10, 12-14, 18-20, 25, 27,
28, and 51-53.2 (Examiner’s Answer entered January 22, 2008, hereinafter
“Ans”). We have jurisdiction pursuant to 35 U.S.C. § 6(b) (2002).
We REVERSE.
Appellant’s claimed invention is directed to a high protein, low
digestible carbohydrate dough composition. Claim 1, the only independent
claim on appeal, is illustrative and recites:
1. A high protein, low digestible carbohydrate dough
composition comprising:
i) a protein component comprising, by weight of the dough
composition:
a) about 15% to about 25% vital wheat gluten, and

b) about 3% to about 6% enzymaticly [sic] hydrolyzed
wheat protein, the weight ratio of vital wheat gluten to
hydrolyzed wheat protein is about 2.5: 1 to about 8: 1,

ii) a carbohydrate component comprising, by weight of the
dough composition:

(1) about 5% to about 20% non-digestible carbohydrate
material selected from the group consisting of dietary
fiber, non-absorbent carbohydrate material, and mixtures
thereof,
and
(2) 0% to about 15% digestible carbohydrate material
selected from the group consisting of bread flours,

2 Claims 6-9, 11, 15-17, 21-24, 26, and 29-50 have been canceled. (Appeal
Brief filed November 5, 2007, hereinafter “App. Br.,” 5).
Appeal 2008-6265
Application 10/319,129

monosaccharides, disaccharides, and digestible starch,
and mixtures thereof, and

iii) a liquid component comprising water.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Singer US 3,574,634 Apr. 13, 1971
Rudel US 4,961,937 Oct. 9, 1990
Murphy US 5,133,984 Jul. 28, 1992
Katayama US 5,274,079 Dec. 28, 1993

The Examiner rejected claims 1-5, 10, 12-14, 18-20, 25, 27, 28, and
51-53 under 35 U.S.C. § 103(a) as being unpatentable over Singer in view of
Katayama, Murphy, and Rudel.
In rejecting the claims on appeal, the Examiner found that Singer
discloses the claimed dough composition except for the recited
enzymatically hydrolyzed wheat protein in the recited vital wheat gluten to
hydrolyzed wheat protein ratio. (Ans. 4). The Examiner found that
Katayama discloses the addition of enzymatically hydrolyzed wheat protein
to bread products in amounts of 0.1-5% to prevent or suppress the hardening
of bread due to drying. (Ans. 4). The Examiner determined that it would
have been obvious to add the hydrolyzed wheat protein in the amounts
taught by Katayama to prevent or suppress the hardening of bread, where
adding the hydrolyzed wheat protein in the amounts disclosed by Katayama
would result in the recited vital wheat gluten to hydrolyzed wheat protein
ratio. (Ans. 5).
Appellant contends that adding Katayama’s hydrolyzed wheat protein
in the amounts taught therein would not result in Appellant’s claimed
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Application 10/319,129

composition, because Katayama’s disclosed range and Appellant’s claimed
range do not overlap. (App. Br. 13; Reply Brief filed April 22, 2008,
hereinafter “Rep. Br.,” 2-4). Appellant argues that the levels of hydrolyzed
wheat protein taught by Katayama are far less than the recited amounts of
hydrolyzed wheat protein. (Br. 13; Rep. 3).

ISSUE
The issue presented is: Has Appellant shown reversible error in the
Examiner’s determination that adding hydrolyzed wheat protein in the
amounts disclosed by Katayama to the dough composition of Singer would
result in a dough composition having amounts of hydrolyzed wheat protein
that fall within the range recited in claim 1?
We answer this question in the affirmative.

FINDINGS OF FACT
The record supports the following Findings of Fact (FF) by a
preponderance of the evidence.

1. Singer discloses dough that includes 50 parts by weight of a flour
component, 10-50 parts by weight of inert filler, 1-10 parts by
weight vegetable gum, and 50-100 parts by weight water, where
the dough has a starch content of less than 10 percent, and the
protein to starch ratio in the flour is at least 2:1. (Col. 4, ll. 1-10).
2. Singer discloses a suitable dough composition including 50 parts
by weight of a low-starch gluten flour having a protein to starch
ratio of about 5:1, 20-40 parts by weight of cellulose crystallite
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Application 10/319,129

aggregates, 1.5-5 parts by weight gum, and 60-90 parts by weight
of water. (Col. 4, ll. 43-51).
3. Katayama discloses that hydrolyzed protein is “suitably added to
the material in an amount of 0.01-5% (by weight) of wheat flour.”
(Col. 7, ll. 32-34).
4. In order to support the rationale that Katayama discloses
hydrolyzed wheat protein within the presently recited range, the
Examiner states:
If one were to take the dough composition as disclosed in
the middle of column 4 in Singer [See FF 2], the
calculation would be as followed [sic]: (50pts low-starch
gluten flower, 40pts cellulose, 5 pts gum, 90pts water, if
5 pts protein additive is used then the amount of protein
is 2.68 which is closed [sic] to about 3% claimed. If the
lower ends of the range are used, 5pts flour, 20pts
cellulose, 1.5 pts gum and 60 pt water, then the amount
of protein is 3.66% when 5% protein is used).
(Ans. 9).

PRINCIPLES OF LAW
It is well settled that all the claim limitations must be taught or
suggested by the prior art to establish a prima facie case of obviousness.
In re Royka, 490 F.2d 981, 985 (CCPA 1974). The Court in KSR stated,
“[o]ften, it will be necessary for a court to look to interrelated teachings of
multiple patents; the effects of demands known to the design community or
present in the marketplace; and the background knowledge possessed by a
person having ordinary skill in the art, all in order to determine whether
there was an apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis should be
made explicit. See In re Kahn, 441 F.3d 977, 988 (CA Fed. 2006)
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(“[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 Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740-41
(2007).

ANALYSIS
The Examiner has not provided a sufficient rational underpinning to
support the statement that adding hydrolyzed protein in the amounts
disclosed in Katayama to the compositions of Singer would result in the
amount of hydrolyzed wheat protein recited in claim 1. Specifically, Singer
discloses 50 parts by weight of a flour component. (FF 1 and 2). Katayama
teaches that hydrolyzed wheat protein is added in an amount of 0.1-5 % of
wheat bread flour. (FF 3). In calculating the amount of Katayama’s
hydrolyzed protein added to Singer’s composition, the Examiner selected 5
parts by weight hydrolyzed protein (10% by weight of the flour component).
(See FF 4). However, the Examiner has not provided sufficient reasoning to
explain why one would have added twice the maximum amount of
hydrolyzed wheat protein disclosed by Katayama to Singer’s composition.
As a result, the Examiner’s calculations of the percentage of hydrolyzed
wheat protein that would be present in the dough composition of Singer in
view of Katayama are incorrect.
The Examiner does not provide any other sufficient alternative
rationale to support the conclusion that it would have been obvious to add
Katayama’s hydrolyzed wheat protein to Singer’s composition in the
amounts recited in claim 1. Therefore, we reverse the Examiner’s rejection.
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CONCLUSION
Appellant has shown reversible error in the Examiner’s determination
that adding hydrolyzed wheat protein in the amounts disclosed by Katayama
to the dough composition of Singer would result in a dough composition
having amounts of hydrolyzed wheat protein that fall within the range
recited in claim 1.

ORDER
We reverse the Examiner’s decision rejecting claims 1-5, 10, 12-14,
18-20, 25, 27, 28, and 51-53 under 35 U.S.C. § 103(a) as being unpatentable
over Singer in view of Katayama, Murphy, and Rudel.

REVERSED

tc

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