Ex Parte Curti et al

Patent Trial and Appeal Board

Sep 4, 2013

11569469 (P.T.A.B. Sep. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DELPHINE GISELE CURTI, CATHERINE GRETSCH,
DAVID PHILIPPE LABBE, ROBERT JOHN REDGWELL,
JOANNA HENDRIKA SCHOONMAN, and JOHAN BERNARD UBBINK
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Appeal 2012-006458
Application 11/569,469
Technology Center 1700
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Before PETER C. KRATZ, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

Appeal 2012-006458
Application 11/569,469

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1, 3, 5-9, 24-28, and 31-33 as unpatentable under 35 USC
§103(a) as follows:
Claims 1, 6, 7, 9, 28, and 31 over Suzuki (US 3,845,220, issued Oct. 29,
1974) in view of Redgwell (Coffee bean arabinogalactans: acidic polymers
covalently linked to protein, Carbohydrate Research 337 (2002) 239-253) and Dahl
(3,509,126, issued Apr. 28, 1970);
Claims 3, 5, 8, 24, and 25 over Suzuki in view of Redgwell, Dahl, and
Adams (US 3,337,526, issued Aug. 22, 1967);
Claim 26 over Suuki in view of Redgwell, Dahl, and Lewis (US 5,589,591,
issued Dec. 31, 1996);
Claim 27 over Suzuki in view of Redgwell, Dahl, and Fujimaki (US
4,510,161, issued Apr. 9, 1985);
Claim 32 over Suzuki in view of Redgwell, Dahl, Adams, and Lewis;
Claim 33 over Suzuki in view of Redgwell, Dahl, and Adams.2
We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
The invention “relates to processes for extracting arabinogalactans from
coffee, the use of coffee-derived arabinogalactans and products comprising such
arabinogalactans.” (Spec.3 1.) Claim 1 is representative of the invention and is
reproduced below from the Claims Appendix to the Appeal Brief:

1 Final Office Action mailed June 9, 2009 (“Final”).
2 Appeal Brief filed Nov. 4, 2011 (“App. Br.”).
3 Specification filed Nov. 21, 2006.
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1. A process of extracting arabinogalactans from coffee, the
process comprising:
pre-treating coffee beans with water at a temperature of from
10°C to 95 °C for about 2 hours to one week;
enzymatically hydrolyzing the coffee beans with cellulase and
mannanase thereby obtaining an aqueous dispersion comprising
partially hydrolysed coffee beans and arabinogalactans;
removing a solid residue from the aqueous dispersion to obtain
a soluble fraction;
diluting the soluble fraction with water to yield an aqueous
solution comprising arabinogalactans; and
isolating the arabinogalactans by concentrating the aqueous
solution and precipitating the arabinogalactans, thereby obtaining a
dispersion of extracted arabinogalactans, wherein the aqueous solution
is concentrated to between 5% and 95% of its original volume.
In addition to claim 1, appealed claims 32 and 33 are also independent and
further include a step of “grinding the coffee beans to an average particle size
between about 10 micrometer to about 2 micrometer” before the pre-treating step.
Claim 32 also includes a step of “dialyzing the aqueous solution using a membrane
with a molecular weight cut-off of about 5 kDa to about 100 KDa to remove low
molecular weight material from the aqueous solution”.
Suzuki evidences pretreating coffee beans with water at 30-50°C and
holding for a time followed by enzymatic treatment with enzymes such as
cellulose, protease, hemicellulose, and pectinase at 35-50°C for 60-180 minutes,
agitating, instantaneously sterilizing at 120°C for 3 seconds, and holding at 80°C
for 30 minutes to deactivate enzymes. Suzuki does not explicitly teach
“arabinogalactans” per se, but arabinogalactans are a known major polysaccharide
component in coffee. Ans. 4-5 (citing Suzuki, col. 3, ll. 32-37, 46-65; Redgwell, p.
239).
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Redgwell evidences that polysaccharides found in coffee beans are primarily
arabinogalactans, galactomannan, and cellulose. Arabinogalactans can be
extracted from green coffee beans using enzymatic solubilisation from 8M KOH
insoluble residue suspending in acetate buffer with mannanase, cellulose and
cellobiohydrolase added and stirred for 48 hours at 37°C. The solution containing
arabinogalactans is concentrated and precipitated by dialyzing at 6-8 kDa and
freeze drying. Ans. 5 (citing Redgwell, pp. 239, 241).
Dahl evidences that high purity arabinogalactan can be recovered from larch
wood using an extraction step where water is the extractant, diluting,
concentrating, and using the arabinogalactan as gum with applications in pharma
and confectionary. Dahl pre-treats larch wood for 1 hour to 48 hours and
specifically 24 hours at 24°C with pure water to extract arabinogalactan from larch
wood. Dahl does not teach extracting arabinogalactan from coffee beans. Ans. 5-6
(citing Dahl, col. 3, ll. 56-63, col. 6, ll. 64-75, col. 7, ll. 1-24).
Based on the above findings of fact, the Examiner concluded it would have
been obvious to one of ordinary skill in the art that “treating coffee with water
would have resulted in arabinogalactans being extracted into the water solution
from the coffee beans especially where it is well known in the art that coffee beans
are a source of arabinogalactans and that water is a solvent capable of extracting
arabinogalactans.” Ans. 6. The Examiner also concluded “[s]ince cellulose and
galactomannan are major polysaccharides contained in coffee bean and the desire
is to extract arabinogalactans it would have been obvious to use enzymes specific
for the other contaminating polysaccharides, such as a cellulose and mannanase, in
order to isolate and extract arabinogalactans.” Id. at 6. The common feature of the
references is that they are “either in the same field of endeavor regarding the
treatment/hydrolysis of coffee beans with water and enzymes or solve the same
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problem, which is the extraction of and purification of arabinogalactan from plant
sources using pure water as a pretreatment method to increase the penetration of
the enzymes into the substrate and/or to effectively extract arabinogalactans from
the substrate.” Id. at 7.
Appellants do not dispute the above findings of fact with respect to the
teachings of Suzuki, Redgwell, and Dahl.
Appellants contend the Examiner reversibly erred in rejecting claim 1
because there is no reason to combine Suzuki, Redgwell, and Dahl. Appellants
argue that Suzuki is not concerned with extracting arabinogalactans, but, rather,
mixing a coffee liquid with sugar and carbonated water to make a coffee
carbonated product with reduced foaming. App. Br. 16; Reply Br. 4. Appellants
further argue that Suzuki, Redgwell, and Dahl all fail to disclose pretreating coffee
beans for 2 hours to 2 weeks. App. Br. 14; Reply Br. 2. Appellants also argue that
Redgwell uses a combination enzymatic treatment and chemical treatment with
KOH. App. Br. at 16; Reply Br. 2. Appellants contend that the Dahl process
directed to extracting arabinogalactans from larch wood is not substantially similar
to the claimed process for extracting arabinogalactans from coffee beans. App. Br.
16; Reply Br. 4. Appellants rely on the disclosure in the specification “that
methods used for extraction of arabinogalactans from larch wood are not suitable
practical procedures to obtain arabinogalactans from coffee” and isolation “is
considered prohibitively difficult” as showing the processes are not similar. App.
Br. 17; Reply Br. 5.
The Examiner responds that Suzuki discloses holding and optimizing
holding time is a result effective variable. Ans. 20. Nothing in the claims prevents
the inclusion of KOH as used in Redgwell. Ans. 21. Since it was known in the art
that arabinogalactans are extracted out of larch wood and coffee, at the temperature
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provided for extracting out of larch wood given by Dahl, extraction of
arabinogalactans would have resulted from coffee beans held in water as in Suzuki.
Ans. 21. The Examiner further responds that the rejected claims are not explicitly
drawn to food. Ans. 22. In any event, the Examiner determines that one of skill in
the art would have known to subject harmful contaminants in Redgwell to a
purification process. Ans. 22. The Examiner also finds that Dahl discloses
arabinogalactans extracted from larch wood can be used in confectionary. Ans. 25.
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the
Examiner to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073 (Fed. Cir. 1988). In so doing,
the Examiner must make the factual determinations set forth in Graham v. John
Deere Co., 383 U.S. 1, 17 (1966) (noting that 35 U.S.C. § 103 leads to three basic
factual inquiries: (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; and (3) the level of ordinary skill in
the art). Furthermore, the Examiner’s obviousness rejection must be based on
“some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness” . . . . [H]owever, the
analysis need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of
the inferences and creative steps that a person of ordinary skill in the
art would employ.
KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006)).
If the Examiner’s burden is met, the burden then shifts to the Appellants to
overcome the prima facie case with argument and/or evidence. Obviousness is
then determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
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After thoroughly reviewing all of the briefs and arguments in this appeal, we
find that the Examiner has set forth a reasonable basis for determining the claims
are prima facie obviousness over the combination of Suzuki, Redgwell, and Dahl.
Based on this record, arabinogalactans are known to be extracted from larch wood
and coffee beans. Appellants’ argument that one skilled in the art would have no
reason to combine the larch wood arabinogalactan extraction method of Dahl with
the coffee bean treatment methods of Suzuki and Redgwell is not persuasive for a
number of reasons. First, Appellants merely assert that applying the larch wood
methods to coffee beans is difficult and not practical. Appellants do not argue that
such methods would not be capable of extracting arabinogalactans from coffee
beans. Just because a particular modification would not have been made by a
businessman for economic reasons does not mean that one of ordinary skill would
not have made the modification. In re Farrenkopf, 713 F.2d 714, 718 (Fed. Cir.
1983). Second, Appellants’ reliance on statements in their own Specification as
evidence that one skilled in the art would not look to extraction methods using
larch wood is not persuasive since it is not supported by objective evidence. See In
re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (argument by counsel cannot take
the place of evidence); In re Mayne, 104 F.3d 1339, 1343-44 (Fed. Cir. 1997)
(explaining that unsupported assertions are insufficient to make a showing that “the
claimed invention exhibits some superior property or advantage that a person of
ordinary skill in the relevant art would find surprising or unexpected”). Third, the
Examiner finds that the references solve the same problem of “extract[ing] and
purify[ing] arabinogalactan from plant sources using pure water as a pretreatment
method to increase the penetration of enzyme into the substrate and/or effectively
extract arabinogalactans from the substrate.” Ans. 7.
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Similarly, Appellants’ argument that Suzuki fails to disclose extraction of
arabinogalactins because the polysaccharide is not explicitly named is
unpersuasive because it fails to consider the prior art as a whole. “A suggestion,
teaching, or motivation to combine the relevant prior art teachings does not have to
be found explicitly in the prior art, as the teaching, motivation, or suggestion may
be implicit from the prior art as a whole, rather than expressly stated in the
references.... The test for an implicit showing is what the combined teachings,
knowledge of one of ordinary skill in the art, and the nature of the problem to be
solved as a whole would have suggested to those of ordinary skill in the art.” In re
Kotzab, 217 F.3d 1365, 1370 (Fed. Cir. 2000) (internal citations omitted). The
Examiner reasonably finds that Redgwell and Dahl establish that arabinogalactins
are extracted into water and Redgwell identifies the polysaccharides in coffee
beans as being primarily arabinogalactans, galactomannans, and cellulose. Ans. 6.
Therefore it would have been obvious to one of ordinary skill in the art at the time
of the invention that arabinogalactans are extracted into the water solution in the
Suzuki process.
Regarding the holding time for pretreating coffee beans with water, the
preponderance of the evidence favors the Examiner’s determination that it would
have been obvious at the time of the invention to adjust or optimize the time for
pretreatment to extract a desirable amount of arabinogalactan for the intended
application. In re Aller, 220 F.2d 454, 456 (CCPA 1955) (discovery of an
optimum value of a variable is normally obvious). Appellants have not established
any criticality of the claimed range for pretreating the coffee. See In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003) (“In general, an applicant may overcome a
prima facie case of obviousness by establishing ‘that the [claimed] range is critical,
generally by showing that the claimed range achieves unexpected results relative to
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the prior art range.’”) The pretreatment step disclosed by Dahl supports the
Examiner’s finding that it would have been obvious to increase the pretreatment
time since Dahl discloses the same time range as claimed. Ans. 7. Moreover,
Appellants’ argument that “the coffee beans may have been held in water for a
fraction of a second before the enzyme solutions were added to the beans and
water (Reply Br. 2)” in the Suzuki process is unpersuasive for a couple reasons.
First, the beans are described as being “mixed, and [] held” in water at 30-50°C for
the pretreatment step (Suzuki, col. 3, l. 48). If the pretreatment step were merely
less than a second as Appellants contend, one would expect it to be described as
“instantaneous” which is how Suzuki describes the sterilization step performed for
3 seconds (id. at col. 3, l. 59). Second, the holding step is followed by further
holding times of 30 minutes and 60-180 minutes at 35-50°C after adding
enzymatic solutions (id. at col. 3, ll. 47-58). Thus the pretreating step may
continue beyond the asserted second and into and contemporaneous with the period
of the enzymatically hydrolyzing step that extends into Appellants’ claimed time
range.
The Examiner also reasonably finds that “it would have been obvious to use
enzymes specific for the other contaminating polysaccharides, such as a cellulose
and mannanase [as taught by Redgwell], in order to isolate and extract
arabinogalactans.” Ans. 6. The Examiner’s finding reasonably flows from the
teaching of Redgwell that the polysaccharides found in coffee beans are primarily
arabinogalactans, galactomannans, and cellulose (id.) and determining that
“cellulose hydrolyzes the cellulose components in the coffee bean mixture and
mannanase hydrolyzes the mannan portion (id).” Appellants have not directed us
to any evidence in this record to rebut the Examiner’s rationale for combining
Redgwell with Suzuki on this basis.
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For the reasons stated above and in the Answer, and based on the above
standard of review, we affirm the Examiner’s decision to reject claim 1 as obvious
over the combination of Suzuki, Redgwell, and Dahl. Appellants rely on the same
arguments for claims 3, 5, 8, 24-27, and 32-33 (App. Br. 18-22), therefore we
affirm the rejection of claims 3, 5, 8, and 24-25 for the same reasons. See 37
C.F.R. § 41.37(c)(1)(vii); see also Hyatt v. Dudas, 551 F.3d 1307, 1313 (Fed. Cir.
2008).
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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