Ex Parte Gonzalez et alDownload PDFPatent Trial and Appeal BoardFeb 6, 201714138621 (P.T.A.B. Feb. 6, 2017) 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. 14/138,621 12/23/2013 Tanhia Gonzalez 7881US01 8966 30173 7590 02/08/2017 Diederiks & Whitelaw, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 EXAMINER TURNER, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 02/08/2017 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): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TANHIA GONZALEZ and ERIKA B. SMITH Appeal 2016-001671 Application 14/138,6211 Technology Center 1700 Before TERRY J. OWENS, JEFFREY B. ROBERTSON, and JULIA HEANEY, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, the real party in interest is GENERAL MILLS, INC. (Appeal Brief (filed June 2, 2015, hereinafter “App. Br.â€) 2.) Appeal 2016-001671 Application 14/138,621 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—9, 17, and 18.2 (App. Br. 1.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants describe a method of producing soluble fiber, from yogurt whey utilizing an enzyme. (Spec. para. 4.) According to the Specification, soluble fiber is “a water soluble carbohydrate that resists digestion in the small intestine and is fermented in the colon into gases and physiologically active by-products.†(Spec. para. 14.) Claims 1 and 17, reproduced below, are representative of the subject matter on appeal. 1. A method comprising: contacting yogurt whey with an enzyme to form a soluble fiber. 17. The method according to claim 1, wherein the soluble fiber has a total solids content of at least about 70 % wt and a total soluble fiber of at least about 65% wt with at least 3 degrees of polymerization (DP). (App. Br., Claims Appendix.) 2 Claims 10—16 have been withdrawn from consideration. (Final Office Action (mailed December 18, 2014, hereinafter “Final Act.â€) 2). 2 Appeal 2016-001671 Application 14/138,621 THE REJECTIONS The Examiner rejected claims 1—9, 17, and 18 under 35 U.S.C. § 103(a) as follows: Claims 1, 2, 6, 8, and 9 as obvious over Roberts (US 2,826,503, iss. March 11, 1958) in view of “Salad in a Jar†(“18 Ways to Use Whey-a By- Product of Greek Yogurt†https://web.archive.org/web/20110925011413/http://www.salad-in-a- jar.com/recipes-with-yogurt/18-ways-to-use-whey-a-by-product-of-greek- yogurt) (last visited June 4, 2014); Claim 3 as obvious over Roberts, Salad in a Jar, and further in view of Alonso (Saul Alonso et al., Residual yoghurt whey for lactic acid production, 34 Biomass and Bioenergy, 931-38 (2010)); Claims 4 and 5 as obvious over Roberts, Salad in a Jar, and further in view of Siezen (R.J. Siezen et al., Lactic Acid Bacteria: Genetics, Metabolism and Applications, 230 (2002) (Kluwer Acad.)); Claim 7 as obvious over Roberts, Salad in a Jar, and further in view of Mahoney (Raymond R. Mahoney Galactosyl-oligosaccharide formation during lactose hydrolysis: a review, 63 Food Chemistry, 147—54 (1998)); and Claims 17 and 18 as obvious over Roberts, Salad in a Jar, and further in view of Sprenger (US 2009/0035813 Al, publ. Feb. 5, 2009), as evidenced by Kajal (M. F. I. Kajal et al. Evaluation of some chemical parameters of powder milk available in Mymensingh town, 10 J. Bangaladesh Agril. Univ., 95—100 (2012)). (Examiner’s Answer (mailed September 25, 2015, hereinafter “Ans.â€) 2—6.) 3 Appeal 2016-001671 Application 14/138,621 ISSUES Appellants argue that the Examiner erred in determining that Roberts discloses or suggests producing a soluble fiber. (App. Br. 6.) In particular, Appellants argue that Roberts, while teaching enzyme hydrolysis to produce oligosaccharides, does not disclose soluble fiber, because a skilled artisan would recognize that not every oligosaccharide meets the definition of soluble fiber in the Specification. (App. Br. 6—7.) Appellants contend also that Roberts does not teach that its oligosaccharides, composed of galactose and glucose molecules, are soluble fiber and, thus, does not teach galacto- oligosaccharide as recited in claim 9. (App. Br. 7—8.) Appellants argue that the Examiner failed to articulate a reason why a person of ordinary skill in the art would have hydrolyzed yogurt whey to achieve the claimed total solids content, soluble fiber content, and degree of polymerization recited in claims 17 and 18. (App. Br. 8—9.) Accordingly, the dispositive issues on appeal are: Did the Examiner reversibly err in determining that it would have been obvious to have obtained soluble fiber from yogurt whey as recited in claim 1 in view of the application of Roberts to yogurt whey as disclosed in Salad in a Jar? Did the Examiner reversibly err in determining that it would have been obvious to have obtained soluble fiber from yogurt whey including galacto-oligosaccharide as recited in claim 9? Did the Examiner reversibly err in determining that it would have been obvious to have obtained hydrolyzed yogurt whey having the claimed total solids content, soluble fiber content, and degree of polymerization recited in claims 17 and 18? 4 Appeal 2016-001671 Application 14/138,621 FINDINGS OF FACT The record supports the following findings of fact (FF) by a preponderance of the evidence. 1. Roberts discloses the enzyme hydrolysis of lactose from milk products including whey to oligosaccharides and other lactase hydrolytic sugars including glucose and galactose. (Col. 1,11. 13— 25, col. 2,11. 35—45.) 2. Roberts discloses lactase enzymes including enzymes obtained from Saccharomyces fragilis, Lactobacillus bulgaricus, Escherichia coli, and Aspergillus oryzae. (Col. 5,1. 56 —col. 6,1. 4.) 3. Roberts discloses that oligosaccharides composed of galactose and glucose are produced by the method, using cheddar cheese whey as a starting material, for example. (Col. 8,11. 14—34, col. 9,11. 35— 60.) PRINCIPLES OF LAW Where, as here, 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 In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (internal footnote omitted). 5 Appeal 2016-001671 Application 14/138,621 ANALYSIS We confine our discussion to appealed claims 1, 9, and 17, which contain claim limitations representative of the arguments made by Appellants, and address other claims only to the extent that Appellants have argued them separately pursuant to 37 C.F.R. § 41.37(c)(l)(iv).3 Roberts in view of Salad in a Jar Claim 1 We have considered Appellants’ arguments in view of the evidence of record and are not persuaded that the Examiner erred in rejecting claim 1. Regarding Appellants’ argument that the Examiner has not offered sufficient rationale to support the position that Roberts discloses soluble fiber as defined in the Specification, the Examiner stated that Roberts discloses treating whey with an enzyme “to produce oligosaccharides (which is considered to be a soluble fiber).†(Ans. 2.) The Examiner also stated that substituting yogurt whey as disclosed in Salad in a Jar would have been obvious because yogurt whey is a waste product and treating it in the same manner as disclosed in Roberts would provide an environmentally sound and economical alternative to discarding the yogurt whey. (Ans. 7—8.) The Examiner stated further that: Roberts disclosed a method of treating whey with the same enzyme as recited by the Appellants. There is no manipulative difference between the prior art Roberts reference and the instant invention. Clearly, contacting yogurt whey with the same 3 In the Reply Brief (filed November 23, 2015, hereinafter “Reply Br.â€), Appellants set forth additional arguments regarding claim 6. {id. at 4.) However, Appellants’ arguments have not been considered because they were not timely presented in the Appeal Brief. See 37 C.F.R. § 41.41(b)(2). 6 Appeal 2016-001671 Application 14/138,621 enzyme used by appellants] would necessarily result in soluble fiber being formed as presently claimed. (Ans. 6—7.) Also, the Examiner stated: by Appellants’ own admission, contacting whey with the same lactase enzyme would have resulted in the production of a soluble fiber because this effect is known in the art. Further, the Examiner notes that the position taken by the Examiner is supported in the Sprenger reference which disclosed that oligosaccharides were considered prebiotics which have the effect of being non-digestible in the stomach and small intestine but being fermented in the colon [0005]. (Ans. 8.) The Specification discloses that “[t]he enzyme can be any enzyme suitable of converting lactose and/or galactose to galacto-oligosaccharide .... Any suitable enzyme or microorganism known in the art, which can convert lactose to a soluble fiber or oligosaccharide, may be employed in the present methods.†(Spec. para. 29.) The Specification states that enzymes may be derived from host-cells including Escherichia, Saccharomyces, Aspergillus oryzae, and Lactobacillus bulgaricus. (Spec. para. 29.) These are the same host cells used by Roberts to produce the enzymes used in the method disclosed therein. (FF 2.) Roberts discloses treating lactose containing milk products with enzyme and it is undisputed that yogurt whey contains lactose. (FF1; Spec. para. 24.) Thus, the Examiner had sufficient basis for the position that soluble fiber would result from the process of Roberts applied to yogurt whey. Best, 562 F.2d at 1255. Appellants have not provided any evidence to support the position that not all oligosaccharides produced according to Roberts would 7 Appeal 2016-001671 Application 14/138,621 meet the definition of soluble fiber. Appellants have not addressed the Examiner’s position that because the starting material is yogurt whey in the claims and in the combination of Roberts and Salad in a Jar, and that the enzymes used in Roberts and the present method are the same, that the oligosaccharides produced would be soluble fiber. Accordingly, the Examiner did not err in concluding that the combination of Roberts and Salad in a Jar would have produced soluble fiber. Claim 9 Regarding claim 9, as the Examiner found, Roberts discloses that when whey is contacted with enzyme, galacto-oligosaccharide is produced. (Ans. 3; FF3.) Appellants’ argument is that Roberts does not disclose the characteristics of the produced oligosaccharides or that a soluble fiber comprising galacto-oligosaccharide is produced. (App. Br. 7—8.) We are not persuaded by Appellants’ arguments for similar reasons as set forth above for claim 1. That is, Roberts makes clear that galacto- oligosaccharide is produced when whey products containing lactose are contacted with enzyme, which are the same enzymes used in Appellants’ claimed method. (FF3.) Thus, while Roberts does not articulate expressly that soluble fiber is produced, the Examiner has set forth a sufficient basis to support the position that soluble fiber containing galacto-oligosaccharide would be produced when yogurt whey containing lactose is contacted with the enzymes disclosed in Roberts. 8 Appeal 2016-001671 Application 14/138,621 Rejections of Claims 3—5 and 7 Appellants do not separately argue the rejections of these claims, which reference additional prior art. Accordingly, we affirm the Examiner’s rejections of these claims for the same reasons as discussed above for representative claims 1 and 9. Claims 17 and 18 In rejecting claims 17 and 18, the Examiner found that Roberts did not disclose the recited solids content and degree of polymerization recited in the claims, but that in light of Sprenger, which discloses oligosaccharides produced from whey have a degree of polymerization of 3 to 20 and also that drying oligosaccharides to solids contents of greater than 95% for later incorporation into food products, the recited solids content would have been obvious. (Ans. 5—6.) The Examiner further explained that it was known in the art that concentrating steps increase solids content as shown in Sprenger. (Ans. 9 (citing Sprenger para. 20).) Appellants argue that the Examiner did not articulate how a skilled artisan would determine a desirable level of conversion to oligosaccharides. (App. Br. 9.) Appellants argue that Roberts and Sprenger disclose products containing less than 65% wt. soluble fiber. (Reply Br. 5—6.) We are unpersuaded by Appellants’ arguments, as they fail to consider the rejection as a whole, that is, the application of the process of Roberts to yogurt whey. As discussed above, Appellants have not provided any persuasive rebuttal that the process of Roberts applied to yogurt whey would result in the claimed soluble fiber. 9 Appeal 2016-001671 Application 14/138,621 Regarding the total solids content and total soluble fiber weight percentage having at least three degrees of polymerization, Sprenger provides evidence that oligosaccharides produced as a result of the method of Roberts would have the degrees of polymerization recited in the claims, because Sprenger uses the same enzyme, Aspergillus oryzae, disclosed in Roberts. (FF2; Sprenger para. 26.) Roberts also discloses that the degree of hydrolysis may be controlled to produce an “optimum yield of oligosaccharides.†(Col. 5,11. 34-40.) Importantly, the Specification does not disclose any particular benefit or criticality to the solids content or total soluble fiber percentage by weight having at least 3 degrees of polymerization. (Spec. para. 31.) The Specification also does not provide any examples or direction as to how to achieve the particular claimed amounts. As to Appellants’ contention that Sprenger discloses removing lactose while Roberts discloses hydrolyzing lactose, we agree with the Examiner that Sprenger discloses hydrolyzing lactose in addition to removing lactose. (Ans. 9-10 (citing Sprenger paras. 33—38 and 45).) Accordingly, Appellants have not demonstrated error in the Examiner’s position that claims 17 and 18 would have been obvious over the prior art of record. CONCLUSION The Examiner did not reversibly err in determining that it would have been obvious to have obtained soluble fiber from yogurt whey as recited in claim 1 in view of the application of Roberts to yogurt whey as disclosed in Salad in a Jar. 10 Appeal 2016-001671 Application 14/138,621 The Examiner did not reversibly err in determining that it would have been obvious to have obtained soluble fiber from yogurt whey including galacto-oligosaccharide as recited in claim 9. The Examiner did not reversibly err in determining that it would have been obvious to have obtained hydrolyzed yogurt whey having the claimed total solids content, soluble fiber content, and degree of polymerization recited in claims 17 and 18. ORDER We affirm the Examiner’s decision rejecting claims 1—9, 17, and 18 under 35 U.S.C. § 103(a). 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 11 Copy with citationCopy as parenthetical citation