Ex Parte Giuseppin et alDownload PDFPatent Trial and Appeal BoardJun 7, 201612514322 (P.T.A.B. Jun. 7, 2016) Copy Citation 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. 12/514,322 08/13/2009 Marco Luigi Federico Giuseppin 294-355 PCT/US 9661 23869 7590 06/08/2016 Hoffmann & Baron LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 06/08/2016 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 MARCO LUIGI FEDERICO GIUSEPPIN and ROBIN ERIC JACOBUS SPELBRINK ____________________ Appeal 2015-000524 Application 12/514,322 Technology Center 1700 ____________________ Before ROMULO H. DELMENDO, JULIA HEANEY, and AVELYN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL1 Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 In our decision below, we refer to the Final Office Action appealed from, mailed September 26, 2013 (Final Act.), the Appeal Brief filed March 27, 2014 (Appeal Br.), the Examiner’s Answer mailed August 13, 2014 (Ans.), and the Reply Brief filed October 8, 2014 (Reply Br.). 2 Appellants identify the real party in interest as “Coöperatie AVEBE U.A.” Appeal Br. 4. Appeal 2015-000524 Application 12/514,322 2 STATEMENT OF CASE The claims are directed to a process for removing glycoalkaloids from process streams during isolation of potato proteins. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A process for removing glycoalkaloids from an aqueous solution of a native non-denatured vegetable protein, the process comprising contacting the solution with an activated carbon for a period effective to adsorb the glycoalkaloids, and separating the activated carbon from the solution to obtain a substantially glycoalkaloid-free aqueous solution of native non-denatured vegetable protein. Claims Appendix at Appeal Br. 24. REJECTION The Examiner rejected claims 1–19 under 35 U.S.C § 103(a) as being unpatentable over Edens3 in view of Aoyagi,4 Straetkvern,5 and Kok.6 Final Act. 3. Appellants seek our review of the Examiner’s rejection of claims 1–19 but present arguments directed to claim 1, the broadest independent claim, alone. Appeal Br. 10 (noting that “Applicant’s arguments address the rejection of claim 1 but apply as well to claims 2–19.”). We note however that the Examiner made certain findings with respect to claims 15 and 19 3 Edens et al., WO 97/42834, published November 20, 1997 (hereinafter “Edens”). 4 Aoyagi et al., US 2002/0025911 A1, published February 28, 2002 (hereinafter “Aoyagi”). 5 Knut O. Straetkvern, et al., Expanded bed adsorption for recovery of patatin from crude potato juice, 7 Bioseparation 333–345 (1999) (hereinafter “Straetkvern”). 6 Kok et al., WO 02/090311 A1, published November 14, 2002 (hereinafter “Kok”). Appeal 2015-000524 Application 12/514,322 3 which are unique to those claims. Therefore, the issues arising are the same for claims 1–14 and 16–18 and we focus our discussion on the rejection of claim 1 to resolve the issues relating to those claims. Issues relating to claims 15 and 19 are addressed together under a separate heading. OPINION Claims 1–14 and 16–18 Regarding process claims 1–14 and 16–18, the Examiner finds that the combination of Edens, Aoyagi, Straetkvern, and Kok would lead one of skill in the art at the time to the subject matter described in the claims. Final Act. 3–7. Specifically with respect to claim 1, the Examiner finds that Edens teaches “a process for isolating a potato protein comprising subjecting potato fruit juice to flocculation using CaHPO4 at a pH from about 7 to 8, centrifuging the flocculent to result in a supernatant, and subjecting the supernatant to adsorption-elution (page 2, lines 21–22; page 3, lines 5–25).” Id. at 3. The Examiner observes that Straetkvern teaches using an “expanded bed adsorption chromatography to isolate potato protein from potato fruit juice at a pH of 7.5 and a temperature of 4 ºC (Abstract; page 335, para.2)” and then “eluting the protein isolate from the absorbent through the use of an eluent (page 337, para. 5).” Id. at 3–4. From this, the Examiner explains [i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to use expanded bed adsorption chromatography as taught by Straetkvern as the adsorption- elution step in Edens because Straetkvern clearly shows that such process was known in the art and is effective for isolating potato protein from potato fruit juice. Appeal 2015-000524 Application 12/514,322 4 Id. at 4. The Examiner further finds that “Aoyagi teaches the used [sic] of activated carbon to remove glycoalkaloids from potato (page 10, [0148]– [0151]) while Kok teaches the use of activated carbon packed in a column to remove harmful substances (page 2, lines 10-15).” Id. at 4. Therefore, the Examiner concludes both Edens and Straetkvern teach performing the process in the presence of water, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have the aqueous solution of Edens and Straetkvern pass through an activated carbon packed column to remove glycoalkaloids as taught by Kok and Aoyagi in order to provide a continuous process and more efficiently and timely remove the glycoalkaloids. Id. Appellants contend that: (1) the Examiner resorted to impermissible hindsight (Appeal Br. 12–15); (2) the combination of Edens and Aoyagi does not teach the selective removal of glycoalkaloids from an aqueous solution and as a result, there is no reasonable expectation of success (id. at 15–21); and (3) Edens teaches away from a combination with Aoyagi (id. at 21–22). Appeal Br. 14, 15, 19, and 21. Thus, a principal issue on appeal is whether Appellants have identified a reversible error in the Examiner’s proposed combination because the Examiner resorted to impermissible hindsight reconstruction of the claimed process. On this record, Appellants convince us of reversible error by the Examiner. Because we agree with Appellants on this issue, we do not address the remaining arguments. It is improper to base a conclusion of obviousness upon facts gleaned only through hindsight. “The invention must be viewed not after the blueprint has been drawn by the inventor, but as it would have been Appeal 2015-000524 Application 12/514,322 5 perceived in the state of the art that existed at the time the invention was made.” Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1570 (Fed. Cir. 1996) (citing Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985)). Any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Appellants challenge that the Examiner “used the Applicant’s claims as a mosaic to find the elements of each claim in one or more pieces of prior art and alleged that the mosaic would have been obvious” and in doing so, resorted to impermissible hindsight. Appeal Br. 14. Specifically, Appellants criticize that glycoalkaloids are known to be insoluble in water and, Aoyagi only teaches that dissolved solanine can be absorbed by an activated carbon adsorbent. Whether or not un-dissolved solanine in an aqueous solution can be adsorbed by activated carbon is mere speculation on the part of the Examiner and totally unsupported by the Aoyagi disclosure or any of the other references cited by the Examiner. Id. at 13–14; Reply Br. 5–7. Appellants rely upon the Declaration of Dr. Robin Spelbrink7 who explains that because glycoalkaloids remain dissolved in methanol—as opposed to water where glycoalkaloids precipitate—they are “available for absorption by [the] activated carbon.” Spelbrink Decl. ¶ 8. As a result, “one skilled in the art would not find it obvious to substitute an 7 Second Declaration of Dr. Robin Eric Jacobus Spelbrink, dated December 11, 2012 (hereinafter “Spelbrink Decl.”). Appeal 2015-000524 Application 12/514,322 6 insoluble solvent (water) for the soluble solvent (methanol) used by Aoyagi. Reply Br. 7. The Examiner finds “that Aoyagi discloses other examples in aqueous solution where undesired substances are removed and therefore [it] would have been obvious to use other solvents that were safe for human consumption. The process of Edens and Aoyagi teach the removal of glycoalkaloids from an aqueous solution.” Final Act. 10. The Examiner continues that “Aoyagi is a generic reference directed to the removal of undesired substances using an absorbent and a solvent.” Id. And, the Examiner finds, Aoyagi teaches that “activated carbon can still operate in aqueous environments to remove harmful substances . . . . Therefore, it does not matter what solution the activated carbon is in in order for it to operate at its normal capacity.” Ans. 10. The Examiner failed to make out a prima facie case of obviousness. Here, the Examiner relies upon the teachings of Aoyagi as a “generic reference directed to the removal of undesired substances using an absorbent and a solvent.” Final Act 10. The Examiner also uses Aoyagi for the proposition that water and other solvents can be used for the removal of undesired substances. Id. From these, and other teachings discussed above, the Examiner finds that “[t]he process of Edens and Aoyagi teach the removal of glycoalkaloids from an aqueous solution.” Id. It is this hypothesis by the Examiner that is in error. No reference of record suggests that glycoalkaloids can be removed from an aqueous solution using an activated carbon adsorbent. Rather, the Aoyagi clearly requires the use of methanol as a solvent in order to extract glycoalkaloids using activated carbon. Aoyagi ¶¶148–151. Dr. Spelbrink explains, in his declaration, that glycoalkaloids are insoluble in water. Spelbrink Decl. ¶¶ 5 and 7–9. And, Appeal 2015-000524 Application 12/514,322 7 because glycoalkaloids are insoluble in water, one of ordinary skill in the art would understand that glycoalkaloids are unavailable for absorption by activated carbon in aqueous environments. Id. at 8. The Examiner states that activated carbon can be used in both aqueous and methanol environments, and therefore, it does not matter what solution is used for the activated carbon to work properly. Ans. 10. While true that activated carbon may be used in many environments, this misses the point—i.e., that a skilled artisan would not have expected undissolved glycoalkaloids to be available for removal by activated carbon in an aqueous solution. The Examiner does not respond to Appellants’ evidence in this regard. Therefore, on this record, we cannot sustain the Examiner’s rejection of process claims 1–14 and 16–18. Claims 15 and 19 The Examiner finds that claims 15 and 19 are product-by-process claims and therefore “the determination of patentability is based on the product itself and does not depend on its method of production.” Final Act. 7. The Examiner further finds that Aoyagi teaches a process of “contacting the protein isolate with activated carbon for a time sufficient to remove glycoalkaloids to a content below 0.001 ppm (page 10, [0151].” Id. Appellants do not dispute these findings by the Examiner. We therefore adopt these findings as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (“Since appellant has not shown this finding to be clearly erroneous, we accept is as fact.”). Accordingly, the preponderance of the evidence supports the Examiner. Appeal 2015-000524 Application 12/514,322 8 CONCLUSION The Examiner reversibly erred in rejecting claims 1–14 and 16–18, under 35 U.S.C. § 103(a), as being unpatentable over Edens in view of Aoyagi, Straetkvern, and Kok. The Examiner did not err in rejecting claims 15 and 19, both product- by-process claims, under 35 U.S.C. § 103(a), as being unpatentable over Edens in view of Aoyagi, Straetkvern, and Kok. DECISION For the above reasons, the Examiner’s rejection of claims 1–14 and 16–18 is reversed and the Examiner’s rejection of claims 15 and 19 is 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)(1)(iv) (2009). AFFIRMED-IN-PART Copy with citationCopy as parenthetical citation