Ex Parte Billard

Patent Trial and Appeal Board

Nov 2, 2016

13513126 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/513,126 05/31/2012
128837 7590 11/04/2016
DuPont Nutrition Biosciences APS
Attention: Legal Department
925 Page Mill Road
Palo Alto, CA 94304-1013
FIRST NAMED INVENTOR
Lionel Billard
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
NB0842-US-PCT 9969
EXAMINER
FAN,LYNNY
ART UNIT PAPER NUMBER
1651
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIONEL BILLARD
Appeal2015-001703
Application 13/513,126
Technology Center 1600
Before DONALD E. ADAMS, JOHN G. NEW, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
ADAMS, Administrative Patent Judge.
DECISION ON APPEAL 1
This appeal under 35 U.S.C. § 134(a) involves claims 45--47 (Br. 3).
Appellant waived the Appeal of pending and rejected claim 48 (id. ("The
rejection of each of claims 45--47 is being appealed)). 2 Examiner entered a
rejection under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellant identifies "the real party in interest [as] DuPont Nutrition
Bio Sciences ApS, a corporation of the City of Copenhagen, Denmark, which
is a wholly owned subsidiary ofE. I. DuPont de Nemours and Company"
(Br. 3).
2 Pending claims 29--44 stand "withdrawn from [] consideration [] as being
drawn to a nonelected inventive group" (Br. 3).
Appeal2015-001703
Application 13/513,126
STATEMENT OF THE CASE
Appellant's disclosure "relates to reduction of problems with off-taste
derived from the activity of impurities in food containing gellan gum" (Spec.
1 :3--4). Claims 45 and 47 are representative and reproduced below:
45. A method for a production of gellan gum, under mixing
conditions, the method comprising:
providing a liquid medium containing the gellan gum;
adjusting a temperature of the liquid medium to facilitate
enzymatic treatment;
adjusting a pH of the liquid medium to about 8.0 to
facilitate the enzymatic treatment;
applying the enzymatic treatment to reduce or abolish an
off-taste of a product to which the gellan gum is added, wherein
the enzymatic treatment comprises adding one or more of a
lysozyme or a protease capable of reducing or abolishing the
enzymatic activity of one or more of S. elodea derived
arylsulfatase or B-glucuronidase, wherein the one or more of the
lysozyme or the protease are added in an amount sufficient to
reduce or abolish the enzymatic activity of the one or more of
the S. elodea derived arylsulfatase or the B-glucuronidase in the
liquid medium; and
recovering the gellan gum from the liquid medium.
(Br. 16.)
4 7. A method for a production of gellan gum, under mixing
conditions, the method comprising:
providing a liquid medium containing the gellan gum,
wherein the gellan gum comprises one or more of a S. elodea
derived arylsulfatase or a B-glucuronidase;
treating the liquid medium at a temperature between 100°C and
125°C for a period of time sufficient to reduce or abolish
enzymatic activity of the one or more of the S. elodea derived
arylsulfatase or the B-glucuronidase to reduce or
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Application 13/513,126
abolish an off-taste of a product to which the gellan gum is
added; and
recovering the gellan gum from the liquid medium.
(id. at 16-17.)
The claims stand rejected as follows:
Claims 45--48 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Valli, 3 Bezanson, 4 and Kawabata. 5
Claim 48:
Appellant waived the Appeal of pending and rejected claim 48 (Br. 3
("The rejection of each of claims 45-47 is being appealed")). Therefore, the
rejection of claim 48 under 35 U.S.C. § 103(a) as unpatentable over the
combination of Valli, Bezanson, and Kawabata is summarily affirmed.
Claims 45 and 47:
ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?
FACTUAL FINDINGS (FF)
FF 1. Appellant discloses that
In pharmaceutical products gellan gum can be used to produce
easy-to-swallow solid dosage forms, such as gels and coated
3 Valli et al., WO 02/060268 A2, published Aug. 8, 2002.
4 Bezanson et al., US 2008/0145505 Al, published June 19, 2008.
5 Thomas T. Kawabata et al., Specific IgE and IgGJ Responses to Subtilisin
Carlsberg (Alcalase) in Mice: Development of an Intratracheal Exposure
Model, 29 FUNDAMENTAL AND APPLIED TOXICOLOGY 238-243 (1996).
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Application 13/513,126
tablets, and to modify the rate of release of active ingredients
from tablets and capsules.
However, when adding gellan gum it is almost inevitable that
the end product is also contaminated with enzymes derived
from the bacterial fermentation production of the gum, since the
gellan gum is typically used in a relatively impure form. These
residual enzymes (described as B-glucuronidase and
arylsulphatase) are [] responsible for development of an
undesirable off-taste in the end product (often described as a
barn-like or cow-like taste): over time para-cresol (p-cresol)
forms as a result of the action of enzymes produced by S.
paucimobilis.
(Spec. 1 :23-2:2.)
FF 2. We adopt the Examiner's findings concerning the scope and content
of the prior art (Ans. 3-7), and provide the following findings for reference
purposes.
FF 3. Examiner finds that Valli discloses the subject matter of Appellant's
claims 45 and 47 (see Ans. 3-5).
FF 4. Valli discloses that "para-cresol production can be disrupted by
denaturing the residual enzymes that reside in the native gellan gum" (Valli
6: 17-20; see Ans. 4).
FF 5. Valli discloses the treatment of "gellan gum [] first with lysozyme,
followed by treatment with an alkaline caustic agent and optional
neutralization, then treatment with a protease. The protease is capable of
reacting at a pH of about 8 or higher. This latter alternative method
optimizes pH conditions in order to provide optimal reactive conditions"
(Valli 7:19-25; see Ans. 3).
FF 6. Valli discloses heating gellan broth "to a temperature ranging from
about 25°C to about 100°C by techniques well-known in the art" (Valli
8: 19-22; see Ans. 3).
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Application 13/513,126
FF 7. Examiner finds that Bezanson discloses a process for producing
gellan gum, which makes use of the protease "subtilisin Carlsberg," which
Kawabata recognizes is "alcalase" (Ans. 4).
FF 8. Appellant discloses that when thermal treatment is the sole treatment
of a gellan broth, heating the gellan broth to a temperature of" 100°C lead to
a p-cresol off-taste," whereas heating a gellan broth to a temperature of
"120°C led to no p-cresol off-taste" (Spec. 15:3:7).
ANALYSIS
Based on the combination of Valli, Bezanson, and Kawabata,
Examiner concludes that, at the time Appellant's invention was made, it
would have been prima facie obvious "to add an alcalase in the method of
Valli with a reasonable expectation for successfully obtaining a gellan
composition, since Bezanson discloses that an alcalase, a protease, is used in
a process for preparing a gellan gum" (Ans. 4). In addition, Examiner
reasons that a person of ordinary skill in this art would optimize the
temperature of the gellan reaction mixture "as a matter of routine
experimentation" (id.).
Claim 45:
Initially, we note that alcalase is not required for the method of
Appellant's independent claim 45. In this regard, we note that Appellant
failed to adequately rebut the Examiner's finding that Valli alone reads on
the subject matter of Appellant's claim 45. The Board may rely upon less
than all the references cited by the Examiner. See In re May, 574 F.2d 1082,
1090 (CCPA 1978); In re Kronig, 539 F.2d 1300, 1304 (CCPA 1976).
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Application 13/513,126
Nevertheless, to be complete, as Examiner makes clear, Bezanson and
Kawabata are relied upon to support a finding that the enzyme, alcalase, is
known to be useful in the preparation of gellan (Ans. 5-6; FF 2, 7).
Therefore, notwithstanding Appellant's contention to the contrary, Examiner
did not rely upon Bezanson and/or Kawabata to suggest reaction conditions
for the preparation of gellan. Accordingly, we are not persuaded by
Appellant's contentions that because Bezanson suggests reactions conditions
that differ from Valli's, the combination of Valli and Bezanson would
"change[] Valli's principle of operation" (Br. 6; see id. at 5-10).
Valli teaches the production of gellan with reduced para-cresol and,
therefore, does not have an off-taste (FF 2, 4-6). Therefore, we are not
persuaded by Appellant's contention that Bezanson and Kawabata, both
relied upon to disclose the protease alcalase, are not concerned with
reducing the off-taste of gellan and, therefore, "one of ordinary skill in the
art would not have looked to Bezanson or Kawabata" for combination with
Valli (Br. 10-11; cf FF 2,7; Ans. 6).
Claim 47:
Appellant recognizes that Valli "teaches that 'the gellan broth is
heated to a temperature ranging from about 25°C to about 100°C"' (Br. 11;
FF 6). Nevertheless, Appellant contends that "Appellant[] found, as shown
in the As-filed Specification, that [] treatment at 100°C led to a p-cresol off-
taste whereas treatment at 120°C lead to no p-cresol off-taste. As-Filed
Specification, p. 15, 11. 3-6" (Br. 12, FF 8). We are not persuaded by
Appellant's asserted unexpected result. Initially, we note that the portion of
Appellant's disclosure relied upon relates to the use of heat as the sole
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Application 13/513,126
treatment, whereas Appellant's claim 4 7 is open to and includes Valli's
method comprising enzymatic and heat treatment (see FF 7; cf FF 2-6 and
Br. 16-17). In addition, the method of Appellant's claim 47 requires heat
treatment at a temperature of between 100°C and 125°C (see Br. 16-17).
Valli discloses a heat treatment at a temperature of about 100°C. In this
regard, Examiner finds that "[t]he temperature of about 100°C in the method
of Valli does overlap or is close to the claimed temperature" (Ans. 7).
Further, as Examiner explains, "the argument of 'treatment at 100°C led to a
p-cresol off-taste whereas treatment at 120°C led to no p-cresol off-taste' is
not commensurate with the scope of[] claim[] [ 47]" (Ans. 7).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner support a
conclusion of obviousness.
The rejection of claim 48 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Valli, Bezanson, and Kawabata is summarily
affirmed.
The rejection of claims 45 and 47 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Valli, Bezanson, and Kawabata is
affirmed. Claim 46 is not separately argued and falls with claim 45.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a).
AFFIRMED
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