Ex Parte Antrim et al

Patent Trial and Appeal Board

Sep 25, 2012

10601912 (P.T.A.B. Sep. 25, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/601,912 06/23/2003 Richard L. Antrim 8970.95081 7581
74456 7590 09/25/2012
FITCH, EVEN, TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
BLAND, LAYLA D
ART UNIT PAPER NUMBER
1623
MAIL DATE DELIVERY MODE
09/25/2012 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RICHARD L. ANTRIM, FRANK W. BARRESI, ROGER
McPHERSON, and JIAO WANG
__________

Appeal 2011-006796
Application 10/601,912
Technology Center 1600
__________

Before DONALD E. ADAMS, DEMETRA J. MILLS, and FRANCISCO C.
PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
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STATEMENT OF CASE
The Specification discloses a dextrinized oligosaccharide which may
be a malto-oligosaccharide. (Spec. 4, 6.) The oligosaccharide is slowly
digestable (Spec. 3, 11) and has an acceptable texture (Spec. 12).
Claim 1 is representative and follows:
1. A saccharide-derivatized oligosaccharide mixture comprising the
extrusion reaction product of a saccharide product having a degree of
polymerization of 1-4 with a mixture of malto-oligosaccharides having a
degree of polymerization of 5 or more, said saccharide product comprising
at least 50% dextrose, said mixture of malto-oligosaccharides comprising a
starch hydrolyzate to which additional saccharide has been added, wherein
upon extrusion sufficient heat and work are imparted to said mixture of
malto-oligosaccharides and said saccharide product to derivatize at least
some of said malto-oligosaccharides with said saccharide product, the
derivatization being catalyzed with an acid, to form a carbohydrate product
that includes at least some 1,2 and 1,3 bonds and in which a majority of the
linking bonds are 1,4 bonds.

Cited References

Ohkuma et al. US 5,358,729 Oct. 25, 1994
Meyers et al. US 5,518,739 May 21, 1996
Porzio et al. US 5,603,971 Feb. 18,1997
Saleeb et al. US 5,972,395 Oct.26, 1999
Fouache US 6,630,586 B1 Oct. 7, 2003
Stahl et al. WO/0133973 May 17, 2001
Tate & Lyle, Star-Dri Maltodextrins & Corn Syrup Solids,

Grounds of Rejection
Claims 1, 2, 4, 34, 35, 41, and 43 are rejected under 35 U.S.C. §102(b) as
being anticipated by Saleeb as evidenced by Tate & Lyle.

Claims 1, 2, 4, 34, and 41-43 are rejected under 35 U.S.C. § 1 02(b) as being
anticipated by Porzio as evidenced by Tate & Lyle.

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Claims 1,2,4,34,35, and 41-43 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Okhuma.

Claims 1, 2, 4, 34-35, and 41-43 are rejected under 35 U.S.C. §102(b) as
being anticipated by Meyers.

Claims 1, 2, 4, 34, and 41-43 are rejected under 35 U.S.C. §102(e) as being
anticipated by Fouache.
Claims 1, 2, 4, 34, 35, and 41-43 are rejected under 35 U.S.C. §102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Stahl.
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
8.

PRINCIPLES OF LAW RELEVANT TO THE REJECTIONS
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Moreover:
Where . . . the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product…. Whether the rejection is based on “inherency” under
35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
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and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)

“The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citation omitted).

“[T]he patentability of a claim to a product does not rest merely on a
difference in the method by which that product is made. Rather, it is
the product itself which must be new and unobvious.” In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969) (emphasis in original).

“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (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 ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).

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Discussion
Claims 1, 2, 4, 34, 35, 41, and 43 are rejected under 35 U.S.C. § 102(b) as
being anticipated by Saleeb as evidenced by Tate & Lyle.

ISSUE
The Examiner concludes that Saleeb teaches each element claimed,
while Tate and Lyle evidence that the 5DE maltodextrin of Saleeb contains
dextrose (about 1%) along with other oligosaccharides, 88% of which are
DP11 + or higher. (Ans. 4.) The Examiner argues that the oligosaccharide
mixture of Saleeb is made by the same process as the claimed
oligosaccharide mixture and therefore results in the same product.
Appellants argue that
characteristics of the starting material that is extruded is[sic]
important in providing a saccharide-derived oligosaccharide mixture
with the desired types of bonds and resulting properties. Applicants
have surprisingly and unexpectedly found that the starting material
recited in claim 1 provides a carbohydrate product with desirable
properties. None of the cited references describes or suggests the
starting materials as recited in claim 1.

(Br. 7.)

Appellants argue that

Saleeb does not teach derivatization at all. Saleeb is
purportedly directed to a method for fixing a liable material in an
extruded "carbohydrate glass" substrate. Saleeb includes a laundry
list of components that could be reacted. One of ordinary skill would
have no reasonable expectation that the process described in Saleeb
would provide anything even similar to the type of bonds as claimed
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and would have no guidance as to which starting materials are
important in providing a product with the claimed bonds.

(id.7.)
The issue is: Does Saleeb teach each and every element, as claimed?

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
anticipation.
The Examiner argues that both the claimed oligosaccharide mixture
and that of Saleeb are made by the same process, including the extrusion of a
saccharide (dextrose i.e., glucose, Saleeb, col. 7, ll. 3-4) and mixture of
malto-oligosaccharides at a temperature of 190 degrees, the melting point of
the major ingredient (Saleeb, col. 7, l. 2; col. 8, ll. 50-59.)
Appellants argue that Saleeb does not suggest the claimed starting
materials or the dextrose levels claimed. (Br. 7-8.)
In response to Appellants’ argument regarding dextrose levels, the
Examiner argues that
Appellant's argument with respect to the amount of dextrose in
the starting material is not persuasive because the claims are broad,
the claims are drawn to a mixture, and the claims do not require a
particular amount of dextrose in the mixture. Furthermore, the claims
do not require a particular weight amount of dextrose in the starting
material. For example, the saccharide product starting material itself
is not required in any particular amount. The reaction mixture could
contain, for example, 10 g of saccharide product which is 100%
dextrose, or 1 mg of saccharide product which is 50% dextrose. Each
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scenario meets the claimed limitation of starting material which is at
least 50% dextrose, and each scenario results in very different
amounts of dextrose in the mixture. … [T]he instant claims require an
extrusion reaction product of a mixture of: (1) a saccharide product
having a DP of 1-4 and comprising at least 50% dextrose; (2) a
mixture of malto-oligosaccharides having a DP of 5 or more; (3) a
starch hydrolysate; and (4) an additional saccharide. A starch
hydrolyzate is a product resulting from the hydrolysis of starch, and
encompasses malto-oligosaccharides and dextrose. The additional
saccharide could be considered any saccharide, but especially
dextrose as recited in claim 41. Thus, the mixture which is subject to
extrusion reaction contains, at minimum, dextrose and malto-
oligosaccharides having a DP of 5 or more. There is no limitation
placed on the amount of dextrose as a percentage of the total mixture
which is subject to extrusion. Thus, Appellant's arguments with
respect to the amount of dextrose taught by Saleeb are drawn to
limitations which are not claimed.

(Ans. 8- 9.)
The Examiner further finds that

Thus, Saleeb's dextrose could be considered the "saccharide product,"
which is at least 50% dextrose. Saleeb's dextrose could also be
considered the starch hydrolyzate or the additional saccharide, as set
forth above. Thus, it is considered that Saleeb's mixture contained a
saccharide product which was at least 50% dextrose.

(Ans. 10.) We agree with the Examiner that the claims are broad and due to
the breadth of the claims, claim 1 would read on a mixture of maltodextrin
with one molecule of dextrose.
We find that the Examiner has a reasonable claim interpretation and
has the better argument. Appellants have not adequately or convincingly
countered this argument or claim interpretation.
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Appellants then argue that the claimed product and that of Saleeb are
not made by the same process because the processes take place at different
temperatures. (Reply Br. 2.) However, the Examiner provides evidence of
temperature overlap of the Saleeb process (Ans. 4) and that described in the
Specification (Ans. 8). Thus, the Examiner has reasonable basis to believe
that the claimed products and that of Saleeb are the same or substantially the
same, and under the principles of In re Best, the burden has shifted to
Appellants to show they are not. This Appellants have not done.
The anticipation rejection over Saleeb is affirmed for the reasons of
record.

Discussion
Claims 1, 2, 4, 34, and 41-43 are rejected under 35 U.S.C. §102(b) as being
anticipated by Porzio as evidenced by Tate & Lyle.

ISSUE

The Examiner argues that

Porzio teaches a process wherein 10 DE maltodextrin, 42 DE
corn syrup solids, and 0.5 wt% citric acid were extruded at 300°F
(about 149°C). Typically, the temperature will be up to 320°F
(about 160°C). The maltodextrin and corn syrup solids (starch
hydrolyzates) comprise a variety of oligosaccharides, including
dextrose and those which have DP of 5 or greater, as evidenced by
Tate & Lyle. The "additional saccharide" could be any of the
oligosaccharides present in the mixture. Although Porzio does not
teach whether the product contains a majority of 1 ,4-bonds as well
as some 1,2- and 1,3-bonds, the product is made by the same process
as is recited in the instant claims, and so the product should be the
same as that of the instant claims.

(Ans. 5.)
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Appellants contend that Porzio does not teach derivatization at all.
(Br. 8.) Appellants further argue that Porzio does not describe or suggest
starting materials as claimed. Porzio provides no indication whatsoever that
any starting component being extruded should include at least 50% dextrose
as claimed. (Id.) Appellants argue that, “The die head temperatures
disclosed in the examples of Porzio are lower than that indicated in the
specification (and recited in claim 35). A temperature of 160º C, on the low
end of the range of sample temperatures taught in the instant specification, is
equal to 320º F. Also, Porzio uses a very specific mixture starting materials.
The process of Porzio is hence not identical to the process provided in the
specification.” (Reply Br. 3.) Appellants argue that
“contrary to what the Examiner states, the process of Porzio would not
inherently lead to the same results as the claimed process.” (Reply Br. 3.)
In spite of the arguments of Appellants, the Examiner has provided a
reasonable basis to believe and evidence that the process steps of Porzio are
the same or substantially the same as those of the claimed product. (See
Ans. 5.) “[T]he patentability of a claim to a product does not rest merely on
a difference in the method by which that product is made. Rather, it is the
product itself which must be new and unobvious.” The Examiner properly
shifted the burden of proof to Appellants to show that the product of Porzio
and that claimed were not the same. This Appellants did not do. The
anticipation rejection over Porzio is affirmed.

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Discussion

Claims 1,2,4,34,35, and 41-43 are rejected under 35 U.S.C. §102(b) as being
anticipated by Okhuma.

ISSUE

The Examiner finds that

Okhuma's product is a mixture of dextrins and contains the linkages as
recited in claim 1. Thus, Okhuma's product appears to be the same as
one prepared by the process recited in claim 1. The extrusion reaction
is expected to result in bond breakage (starch hydrolysis) and new
bond formation, and it is unclear how the addition of dextrose, as
recited in amended claim 1, would affect the structure of the final
product. Applicant mentions only that the dextrose serves as a
processing aid. Furthermore, it is noted that no particular amount of
dextrose or saccharide product is required by the claims… Thus, the
claims are seen to encompass products prepared by the extrusion of
mixtures which contain very small amounts of dextrose. Even if the
effect of dextrose on the structure of the final product was clear,
products prepared with very small amounts of dextrose would be very
difficult to distinguish from Okhuma's product, since hydrolysis of
starch and thus liberation of small oligosaccharides is expected to
occur during Okhuma's process, producing a reaction mixture which
contains large and small oligosaccharides. Okhuma's product appears
to be the same as the claimed product for these reasons.

(Ans. 10-11.)

Appellants contend that

Okhuma not only fails to anticipate, Okhuma would not be
useful in connection with a Section 103 rejection. Okhuma teaches
away from a product in which a majority of bonds are 1,4 bonds.
Only Sample No.1 (in Table 4, bridging columns 14 and 15) is the
content of 1,4 bonds said to constitute a majority of the linking bonds.
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In the remaining samples, there are fewer 1,4 bonds, and the
digestibility is lower.

(App. Br. 9.)

Appellants argue that

Okhuma does not describe or suggest a product in which the
starting saccharide includes 50% dextrose, nor a starting material
comprising a starch hydrolyzate to which additional saccharide has
been added. Okhuma's starch is treated with hydrochloric acid, and the
resulting product is extruded. There is no teaching or suggestion of the
dextrose content of this starting material, and no suggestion of adding
additional saccharide to a hydrolyzed starch.

(Reply Br. 4.)

In spite of the arguments of Appellants, the Examiner has provided
evidence that the process steps of Ohkuma would result in a product that is
the same or substantially the same as the broadly claimed product, and at
least one Example of Ohkuma has the claimed amount of 1,4 bonds. (See
Ans. 5; see also 10-11 (quoted above).) Appellants have not explained with
any specificity why the Examiner’s rationale, or underlying findings, are
erroneous. “[T]he patentability of a claim to a product does not rest merely
on a difference in the method by which that product is made. Rather, it is
the product itself which must be new and unobvious.” The Examiner
properly shifted the burden of proof to Appellants to show that the product
of Porzio and that claimed were not the same. These Appellants did not do.
The anticipation rejection over Okhuma is affirmed.

Discussion
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Claims 1, 2, 4, 34-35, and 41-43 are rejected under 35 U.S.C. §102(b) as
being anticipated by Meyers.

Claims 1, 2, 4, 34, and 41-43 are rejected under 35 U.S.C. § 102(e) as being
anticipated by Fouache.
Claims 1, 2, 4, 34, 35, and 41-43 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as obvious
over Stahl.
With respect to each of the three rejections above, we do not find that
the Examiner has met his initial burden of presenting a prima facie case of
anticipation or obviousness.
With respect to Myers and unlike the rejections in view of Saleeb,
Porzio and Ohkuma, the Examiner has not pointed to a specific location in
Meyers and thus has not provided evidence that the claimed product and that
of Meyers are made by the same process. Thus the Examiner has not
provided sufficient evidence that the claimed product and that of Meyers are
the same or substantially the same to shift the burden of proof to Appellants
to prove they are not the same. Thus, the Examiner has not provided
evidence to support a prima facie case of anticipation and the rejection over
Meyers is reversed.
With respect to Fouache, we also find that the Examiner has not
provided sufficient evidence to support a prima facie case of anticipation.
Fouache indicates that the content of glucosidic linkages 1, 4 can be between
42 and 50%. (Col. 3, ll. 28-30.) In addition, Fouache, col. 8, Table 1,
provides a product, Example, C, with 50% 1,4 linkages. Thus, the Examiner
has not provided sufficient evidence in the prior art of a product with a
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majority of linking bonds which are 1, 4 bonds, as claimed. The anticipation
rejection over Fouache is reversed.
Finally, with respect to Stahl, Appellants argue that
Stahl discloses carbohydrates that have been modified with
various enzymes. As earlier discussed, enzymatic reactions of the
type disclosed by Stahl are extraordinarily specific. They produce
carbohydrates and related byproducts of a distinct, characteristic
profile. In contrast, although general trends may be maintained, the
specificity of bacterial reaction is not possible in an extruder. The
profile of products prepared in accordance with the present teachings
are markedly different from an enzymatically produced product.

(Reply Br. 6.)

In response, the Examiner argues that Claim 10 of Stahl is drawn to a
product made using Aspergillus niger, which would be expected to give
primarily 1,4 linkages. (Ans. 12.) The Examiner fails to point to a specific
location in Stahl to support that a product made using Aspergillus niger,
which would be expected to give primarily 1,4 linkages, nor is there any
specific evidence supporting the position that enzymatic derivatization
would result in a product the same, or similar, to that produced by the
claimed extrusion process.
Thus, we find that the Examiner has not supported the rejection in
view of Stahl with sufficient evidence, and the anticipation and obviousness
rejections over Stahl are reversed.

CONCLUSION OF LAW
The cited references support the Examiner’s anticipation rejections
over Saleeb, Porzio and Ohkuma, which are affirmed. The Examiner has
not provided sufficient evidence to support a prima facie case of anticipation
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over Myers and Fouache, or an anticipation or obviousness rejection over
Stahl. These rejections are reversed.
However, since all claims remain rejected in view of the rejections
over Saleeb, Porzio and Ohkuma, the rejections of the claims are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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