Ex Parte Ikeuchi et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10499644 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SATOSHI IKEUCHI
and HISAO KADO
____________

Appeal 2009-002798
Application 10/499,644
Technology Center 1700
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Decided: August 17, 2009
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 8 and 10-15. We have jurisdiction under 35 U.S.C.
§ 6.
We REVERSE.

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STATEMENT OF THE CASE
Appellants claim a method for producing a nucleic acid-rich yeast
extract comprising adjusting the pH of a yeast cell suspension to a pH in the
range of 8.5 to 11.0, then heating the suspension to a temperature ranging
from 70°C to 95°C for a period of 1 to 3 hours, treating the resulting
suspension with certain enzymes, and recovering a nucleic acid-rich yeast
extract (claim 8). Appellants also claim a nucleic acid-rich yeast extract
obtained by the method of claim 8 (claim 11).
Representative claims 8 and 11 read as follows:
8. A method for producing a nucleic acid-rich yeast extract
comprising:

adjusting the pH of a yeast cell suspension of a pH in the range of 8.5
to 11.0, then

heating said suspension to a temperature ranging from 70°C to 95°C
for a period of 1 to 3 hours, and

treating the resulting suspension with nuclease and protease and then
with deaminase, and

recovering a nucleic acid-rich yeast extract.

11. A nucleic acid-rich yeast extract obtained by the method of Claim
8.
The following references are relied upon by the Examiner as evidence
of unpatentability:
Aoyagi1 JP 62-01126 (Aoyagi) Jan. 12, 1987
Kanegae EPA 0 249,435 A2 Dec. 16, 1987

1 Our understanding of this reference is based on the English translation of
record.
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Morita (Abstract only)2 JP 4-10262605 A Oct. 6, 1998

The Examiner rejects claims 8 and 10-15 under 35 U.S.C. § 103(a) as
being unpatentable over Morita in view of Kanegae or Aoyagi.
The Examiner also rejects claim 11 under 35 U.S.C. § 102(b) as being
anticipated by, or alternatively under 35 U.S.C. § 103(a) as being
unpatentable over, Morita.

ISSUES
Concerning the § 103 rejection of claims 8 and 10-15, have
Appellants shown error in the Examiner's conclusion that it would have been
obvious, in view of either Kanegae or Aoyagi, to adjust Morita’s yeast
suspension pH so as to be in a range of 8.5 to 11.0 prior to Morita's heating
step as required by claim 8?
Concerning the § 102/§103 rejections of claim 11, have Appellants
shown error in the Examiner's determination that the yeast extracts defined
by claim 11 and disclosed by Morita are patentably indistinguishable?

FINDINGS OF FACT
The Morita English Abstract of record discloses a method for
obtaining edible yeast extract by heating a yeast cell suspension at 90-95°C

2 Appellants state (App. Br. 8, 9), and the electronic file record for this
application confirms, that the Examiner's reliance on the Japanese reference
to Morita in the rejections before us is based upon the English Abstract only
and not the underlying document. Concerning such matters generally, see
the Manual of Patenting Examining Procedure (MPEP) § 706.02(II)
(Rev. 6, Sept. 2007).
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for 30-60 minutes and treating the suspension with enzymes at 40-70°C
(sole page). The Abstract contains no disclosure concerning the suspension
pH.
Kanegae discloses an autolytic method for extraction of yeast cells by
the enzymes present therein comprising heating the yeast cell suspension for
5 to 20 seconds at 55 to 70°C in order to crack the cell wall and thereby
induce autolysis (p. 2, ll. 3-5, p. 3, ll. 27-30). Heat treatments and times
greater than these ranges are undesirable because proteases involved in
autolysis will be inactivated (p. 3, ll. 31-32). Either before or after this heat
treatment, the suspension pH is adjusted to a range from 8 to 10 (id. at ll. 35-
36). The suspension is then kept at about 35 to 50°C for about 4 to 10 hours
whereby the enzymes relating to autolysis promote production of the desired
nucleotides in good yields (id. at ll. 38-43).
In contradistinction to Kanegae's autolytic method, Aoyagi discloses a
method for yeast extraction which comprises heating a yeast cell suspension
from 60 to 150°C in order to inactivate ribonucleases in the cells followed
by treatment with phosphodiesterase and then deaminase enzymes (¶
bridging pp. 5-6, p. 6, last ¶). In order to increase the amount of 5'-
nucleotide production, the suspension is heated with protease or with alkali
instead of protease (¶ bridging pp. 7-8). The alkali treatment may be carried
out at a pH value of 9 to 12 and at a temperature of 40 to 50°C for one to
three hours (id.; ¶ bridging pp. 12-13).
Appellants' invention is based on the discovery that, "when obtaining
yeast extract by an enzyme addition method from a yeast cell suspension,
nucleic acid-rich yeast extract can be obtained by adjusting the pH of the
yeast cell suspension to the neutral or alkali range prior to heat treatment"
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(Spec. ¶ bridging 3-4). Appellants present data showing that such pH
adjustment prior to heat treatment results in increased gustatory nucleic acid
content (Spec. ¶ bridging 13-14, Table 1 at 14, Fig. 2).

PRINCIPLES OF LAW
Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR v. Teleflex, 550 U.S. 398, 417-18 (2007).
Where claimed and prior art products reasonably appear to be
identical or substantially identical, the PTO can require an applicant to
overcome a § 102 or § 103 rejection by proving that the prior art products
do not necessarily or inherently possess the characteristics of the claimed
product. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).

ANALYSIS
Appellants present the following argument against the § 103 rejection
of claims 8 and 10-15:
As detailed above, neither Morita nor the secondary
references suggest the steps and combination of reaction
conditions required by claim 8. The reaction conditions in the
cited prior art are optimized for specific types of rejections and
different temperature ranges, pH's, and time periods. That is,
the reaction condition in Morita is 90-95°C for 30 min to 1 hr
for deactivating phosphatase, that in Kanegae is 55-70°C, pH
8-10 (preferably 9-12) for 5-20 sec for autolysis, and that in
Aoyagi is 40-50°C, pH 8-10 (preferably 9-12) for 1-3 hr for
alkali treatment. The cited prior art does not disclose or suggest
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the combination of specific reaction conditions required by
claim 8, i.e., heating at > 70-95°C at a pH of 8.5-11.0 for 1-3 hr.

(App. Br. ¶ bridging 11-12).

This argument is persuasive.
Although Kanegae and Aoyagi disclose pH adjustments within
Appellants' claim 8 range, these prior art pH adjustments are made in the
context of method conditions which differ from those claimed by Appellants
and disclosed by Morita. The Examiner has articulated no reasoning with
rational underpinning to support a conclusion that it would have been
obvious to make the pH adjustments taught by Aoyagi and Kanegae prior to
Morita's heating step. The need for such reasoning is highlighted by the fact
that the pH adjustments taught by Kanegae and Aoyagi are made prior to
heating conditions which are significantly different from those of Morita.
Under these circumstances, there appears to be no rational basis for
combining the applied prior art teachings in the manner proposed by the
Examiner.
For these reasons, the Examiner's obviousness conclusion regarding
claims 8 and 10-15 appears to be merely conclusory.
With respect to the § 102/§103 rejections of claim 11 over Morita,
Appellants point out that Morita's yeast extract is obtained by a process
which does not include Appellants' pH adjustment and that, "[a]s disclosed
on pages 9-10 and Fig. 2, the yeast extract produced by the claimed method
contains a significantly higher content of nucleic acid than other extracts
from yeast cells having the same [pre-extraction] nucleic acid content" (App.
Br. ¶ bridging 12-13). In addition, Appellants point out that "the Examiner's
Answer provide[s] no basis in fact and/or technical reasoning to support the
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Examiner's assertion that the prior art yeast extract [of Morita] and that of
claim 11 are inherently the same or obvious variants and does not rebut the
technical arguments presented by the Appellants explaining why the claimed
yeast extract would differ from that made by the process of Morita" (Reply
Br. 7).
We agree with Appellants.
As indicated previously, the record before us contains evidence (e.g.,
Appellants' Fig. 2) that yeast extract resulting from Appellants' pH
adjustment prior to heat treatment differs from extract obtained without such
pH adjustment. On the other hand, the Examiner has provided this record
with no evidence or technical reasoning in support of the proposition that
Morita's yeast extract, even though obtained without pH adjustment,
nevertheless possesses the same characteristics as the claim 11 extract.
On this record, Appellants have proven that the prior art extract
product of Morita does not necessarily or inherently possess the
characteristics of the claim 11 extract product.

CONCLUSIONS OF LAW
Concerning the § 103 rejection of claims 8 and 10-15, Appellants
have shown error in the Examiner's conclusion that it would have been
obvious, in view of either Kanegae or Aoyagi, to adjust Morita’s yeast
suspension pH so as to be in a range of 8.5 to 11.0 prior to Morita's heating
step as required by claim 8.
Concerning the § 102/§103 rejections of claim 11, Appellants have
shown error in the Examiner's determination that the yeast extracts defined
by claim 11 and disclosed by Morita are patentably indistinguishable.
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For these reasons, we cannot sustain the Examiner's § 103 rejection of
claims 8 and 10-15 over Morita in view of Kanegae or Aoyagi, and we
cannot sustained the Examiner's § 102/§103 rejections of claim 11 over
Morita.

ORDER
The decision of the Examiner is reversed.
REVERSED

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