Ex Parte Johal

Board of Patent Appeals and Interferences

Dec 2, 2008

11235032 (B.P.A.I. Dec. 2, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SARJIT JOHAL
____________

Appeal 2008-4846
Application 11/235,032
Technology Center 1600
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Decided: December 2, 2008
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Before DONALD E. ADAMS, ERIC GRIMES, and FRANCISCO C.
PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 58-65, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2008-4846
Application 11/235,032

STATEMENT OF THE CASE
The claims are directed to an animal feed. Claim 58 is illustrative:
58. An animal feed comprising a composite product prepared by:
Providing an aqueous medium containing a microorganism and a
sorbent, said sorbent comprising a spent oil-bearing residue;
sorbing at least a portion of said aqueous solution to thereby form
a composite; and
drying said composite to a moisture content of less than 20%.

The Examiner relies on the following prior art references to show
unpatentability:
Cavadini et al. US 5,968,569 Oct. 19, 1999
Yamaguchi1 JP 2104253 Apr. 17, 1990

The rejection as presented by the Examiner is as follows:
Claims 58-65 stand rejected under 35 U.S.C § 103(a) as unpatentable
over the combination of Cavadini and Yamaguchi.
We affirm.

ISSUE

Would it have been prima facie obvious to use Yamaguchi’s spent oil-
bearing residue in Cavadini’s animal feed that comprises a sorbed
microorganism?

FINDINGS OF FACT

1 We recognize that the Examiner and Appellant refer to this reference as
Magoichi, however, we believe the last name of the inventor to be
Yamaguchi. Accordingly, we refer to the Magoichi reference as
Yamaguchi.
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1. Claim 58 is drawn to an animal feed comprising a composite product.
Claim 58 is written in product-by-process format. The animal feed of claim
58 is produced by the following three step process:
a) providing an aqueous medium containing a microorganism and a
sorbent, said sorbent comprising a spent oil-bearing residue;
b) sorbing at least a portion of said aqueous solution to thereby form
a composite; and
c) drying said composite to a moisture content of less than 20%.
According to Appellant’s Specification
“[A]bsorption” is a term used to refer to the penetration of one
substance into the inner structure of another substance, whereas
“adsorption” is used to refer to the adherence of atoms, ions, or
molecules onto the surface of another material. It is believed
that one or both phenomena occur in conjunction with the
invention, although it is contemplated that the material may
serve as a sorbent even if only one of the two phenomena is
present.

(Spec. 4: ¶ 0013.) Therefore, we interpret the term “sorbing” as used in
claim 58 to mean the penetration or adherence of at least a portion of an
aqueous solution to a sorbent.
Appellant’s Specification describes the term “spent” as “the removal
of most or all of the oil originally present in the germ by a method such as
solvent or expeller extraction” (Spec. 4: ¶ 0014).
2. Cavadini teaches “[a] dried, ready-to-eat pet food product comprising a
gelatinized starch matrix which includes a coating or filling which contains a
probiotic micro-organism” (Cavadini, Abstract). Cavadini teaches that
“[t]he product may be produced by cooking a starch source to form a
gelatinized starch matrix; forming the gelatinized matrix into pieces; drying
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the pieces; and coating or filling the pieces with a carrier which contains
probiotic micro-organisms” (id.). Cavadini teaches that
[t]he dried, ready-to-eat cereal product may be produced
from any suitable ingredients; such as those commonly used in
dried, ready-to-eat cereal products. One of these ingredients is
a starch source. Suitable starch sources are, for example, grain
flours such as corn, rice, wheat, beets, barley, soy and oats. . . .
The flours may be whole flours or may be flours which have
had fractions removed; for example the germ fraction or husk
fraction may be removed.

(Cavadini, col. 3, ll. 34-42.) Cavadini teaches that the cereal product is
“dried to a moisture content below about 10% by weight” (Cavadini, col. 5,
ll. 1-2). Cavadini teaches that the cereal product may be coated by spraying
a liquid carrier substrate comprising the micro-organism onto the dried
pieces (Cavadini, col. 5, ll. 50-70).
3. Yamaguchi teaches the “[p]roduction of corn embryos having water-
absorbing properties and oil-absorbing properties comprising a step of
subjecting the residue, after removing the oil content from corn embryos, to
heat extraction with water and/or organic solvent so as to remove unpleasant
ingredients, etc.” (Yamaguchi 2: 5-9.) Yamaguchi teaches that “the main
constituents of starch, corn grits, corn flour and the like are produced from
corn used as a raw ingredient” (Yamaguchi 3: 7-9). Yamaguchi teaches that
corn oil is collected from dry embryos “by a compression method or hexane
extraction method. However, the residue (oil cake) after collecting the corn
oil is only used as animal feeds. The protein included in this oil cake has
excellently balanced essential amino acids” (Yamaguchi 4: 4-7).
Yamaguchi teaches a process that starts with this oil cake (Yamaguchi 5: 11-
14) and results in a product that is “high in fiber content, water absorption
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rate, and oil absorption property” and is “suitably used as food ingredients
requiring water or oil dispersion” (Yamaguchi 12: 13 - 13: 3).

PRINCIPLES OF LAW
In proceedings before the Patent and Trademark Office, the Examiner
bears the burden of establishing a prima facie case of obviousness based
upon the prior art. On appeal to this Board, Appellant must show that the
Examiner has not sustained the required burden.2
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739 (2007). “In determining
whether obviousness is established by combining the teachings of the prior
art, the test is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.” In re GPAC Inc., 57 F.3d
1573, 1581 (Fed. Cir. 1995) (internal quotations omitted).
“Express suggestion to substitute one equivalent for another need not
be present to render such substitution obvious.” In re Fout, 675 F.2d 297,
301 (CCPA 1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir.
1997) (“Because the applicants merely substituted one element known in the
art for a known equivalent, this court affirms [the rejection for
obviousness].”). Accord KSR, 127 S. Ct. at 1740 (“when a patent claims a

2 See (1) Ex parte Yamaguchi, Appeal 2007-4412, slip op. at 5 and 23
(BPAI Aug. 29, 2008); (2) Ex parte Fu, Appeal 2008-0601, slip op. at 5 and
20 (BPAI Mar. 31, 2008); (3) Ex parte Catan, Appeal 2007-0820, slip op. at
3 and 21 (BPAI Jul. 3, 2007) and (4) Ex parte Smith, Appeal 2007-1925, slip
op. at 4, 9 and 23 (BPAI Jun. 25, 2007). Opinions in support of the
decisions in these four appeals are (a) precedential opinions of the Board and
(b) available on the USPTO website.
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structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result”).
After a prima facie case is made out, the burden shifts to the applicant
to show a patentable difference between the prior art and the claims. In re
Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Rijckaert, 9 F.3d 1531, 1532
(Fed. Cir. 1993).
A reference is said to “teach away” from a claimed invention when it
“suggests that the line of development flowing from the reference’s
disclosure is unlikely to be productive of the result sought by the applicant.”
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
Once prima facie obviousness has been established, an applicant for a
patent can rebut it with “a showing of ‘unexpected results,’ i.e., to show that
the claimed invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found surprising or
unexpected.” In re Soni, 54 F.3d 746, 750 (Fed. Cir. 1995).
Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(vii)
(“Any arguments or authorities not included in the brief or a reply brief ...
will be refused consideration by the Board, unless good cause is shown.”).

ANALYSIS
The claims have not been argued separately and therefore stand or fall
together. 37 C.F.R. § 41.37(c)(1)(vii). Claim 58 is drawn to an animal feed
comprising a composite product and is representative. Claim 58 is written in
product-by-process format. The animal feed of claim 58 is produced by the
following three step process:
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a) providing an aqueous medium containing a microorganism and a
sorbent, said sorbent comprising a spent oil-bearing residue;
b) sorbing at least a portion of said aqueous solution to thereby form
a composite; and
c) drying said composite to a moisture content of less than 20%.
Thus, the animal feed of claim 58 comprises a composite product that
contains a sorbent, such as, inter alia, grain germ, seed meal, or mixtures
thereof, wherein most or all of the oil originally present in the germ is
removed by a method such as solvent or expeller extraction; with a
microorganism that is penetrated into or adhered to the sorbent (FF 1).
Cavadini teaches a dried, ready-to-eat pet food product comprising a
starch matrix with a coating or filling that contains a probiotic micro-
organism (FF 2; Ans. 5). Cavadini teaches that “[t]he dried, ready-to-eat
cereal product may be produced from any suitable ingredients; such as those
commonly used in dried, ready-to-eat cereal products” (FF 2). Suitable
starch sources are, for example, grain flours such as corn; which may be
whole flours or flours which have had fractions removed, for example the
germ fraction or husk fraction may be removed (id.; Ans. 5).
Yamaguchi teaches that “the main constituents of starch, corn grits,
corn flour and the like are produced from corn used as a raw ingredient” (FF
3). Yamaguchi teaches that corn oil is collected from dry embryos by a
compression or hexane extraction method, which leaves an oil cake residue,
used only as animal feeds (id.). Yamaguchi teaches that this oil cake has
excellently balanced essential amino acids and that following Yamaguchi’s
production method results in a product that is suitable as a food ingredient
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with a high fiber content and water absorption rate, and excellent oil
absorbability (id.; see also Ans. 6).
Based on the teachings of Cavadini and Yamaguchi, the Examiner
concludes that “[i]t would have been obvious to one of ordinary skill in the
art at the time the claimed invention was made to use the spent corn germ of
Magoichi [(Yamaguchi)] in the cereal composition of Cavadini” (Ans. 6).
We find no error in the Examiner’s conclusion. “Express suggestion to
substitute one equivalent for another need not be present to render such
substitution obvious.” In re Fout, 675 F.2d at 301; see also In re Mayne,
104 F.3d at 1340; accord KSR, 127 S. Ct. at 1740.
Using Yamaguchi’s product in Cavadini’s method, one would have a
dried cereal product with a moisture content below about 10% by weight
that is coated by spraying a liquid carrier substrate comprising a
microorganism onto the dried pieces suitable as a pet food (FF 2). “The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results.” KSR, 127 S.
Ct. at 1739.3 Such a composite cereal based pet food would contain
Yamaguchi’s sorbent that comprises a spent oil-bearing residue upon which
at least a portion of an aqueous microorganism solution is sorbed and would
be expected to have a moisture content of less than 20%. There is no
evidence or argument on this record to the contrary. Arguments not made
are waived. See 37 C.F.R. § 41.37(c)(1)(vii).

3 Accordingly, we are not persuaded by Appellant’s contention that “[t]here
is nothing in Yamaguchi [sic] that would teach one skilled in the art to
modify the coated starch product of Cavadini to form a composite product
from an aqueous solution and sorbant material as claimed” (Reply Br. 6).
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For the foregoing reasons, we find no error in the Examiner’s prima
facie case of obviousness. Accordingly, the evidentiary burden was properly
shifted to Appellant. In re Best, 562 F.2d at 1255; In re Rijckaert, 9 F.3d at
1532.
Appellant contends that “Cavadini teaches away from the use of grain
germ” by teaching a “starch substrate . . . [that] is said to be a flour and, in
particular, a flour from which the ‘germ fraction or hull fraction may be
removed” (App. Br. 3; see also Reply Br. 4). We are not persuaded. A
reference is said to “teach away” from a claimed invention when it “suggests
that the line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.” In re
Gurley, 27 F.3d at 553. This is not the case on this record. Contrary to
Appellant’s contention, Cavadini teaches that “flours may be whole flours or
may be flours which have had fractions removed; for example the germ
fraction or husk fraction may be removed” (FF 2). Accordingly, there is no
requirement in Cavadini that the germ fraction or hull fraction be removed.
In this regard, Cavadini teaches that “[t]he dried, ready-to-eat cereal product
may be produced from any suitable ingredients” (id.). Accordingly,
Appellant’s argument is not persuasive.
Appellant contends that “Cavadini teaches away from a spent oil-
bearing residue” by teaching that the carrier substrate into which the
microorganisms are mixed may be a fat (App. Br. 3). According to
Appellant, this teaching “contradict[s] the use of a spent oil bearing residue
– i.e., a residue from which oil has been at least substantially removed” (id.;
see also Reply Br. 5 and 6). We are not persuaded. There is no requirement
in Appellant’s claim 58 that excludes the microorganism’s aqueous carrier
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from containing a fat or oil. Further, Yamaguchi teaches a product derived
from a spent oil bearing residue (oil cake) as a food ingredient.4 We find no
evidence on this record to support Appellant’s contention that the use of a fat
or oil with Yamaguchi’s product in the preparation of a food is
contradictory. In this regard, we note that Yamaguchi teaches that a benefit
of the product is its excellent oil absorbability (FF 3). Accordingly,
Appellant’s argument is not persuasive.
Appellant contends that Cavadini’s “microorganisms are coated onto,
or disposed within, the substrate, but are not absorbed therewithin” (App. Br.
4). We are not persuaded. The process limitation of claim 58 recites the
step of “sorbing at least a portion of said aqueous solution [containing a
microorganism] to [the sorbent] thereby form[ing] a composite” (FF 1).
Appellant’s Specification refers to both absorption (“the penetration of one
substance into the inner structure of another substance”) and adsorption
(“the adherence of atoms, ions, or molecules onto the surface of another
material”); and discloses that “[i]t is believed that one or both phenomena
occur in conjunction with the invention” (FF 1). Accordingly, we are not
persuaded by Appellant’s focus on “absorption” (App. Br. 4). According to
Appellant’s Specification, the term “sorbing” refers to both “absorption” and
“adsorption” (FF 1). There is no evidence on this record to suggest that

4 Accordingly, we are not persuaded by Appellant’s contention that
“Cavadini does not teach or suggest processing the germ fraction to obtain a
spent germ fraction as required by the instant claims” (Reply Br. 4). In
addition, we note that contrary to Appellant’s contention, claim 58 does not
require a spent germ fraction, but instead reads on any “spent oil-bearing
residue” (FF 1).
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spray coating does not result in “adsorption.” Accordingly, Appellant’s
argument is not persuasive.
We recognize Appellant’s contentions with regard to Yamaguchi
(App. Br. 4), but do not find them persuasive. Simply stated, Yamaguchi
teaches a product derived from a spent oil-bearing residue that can be used
as a food ingredient (FF 3; Ans. 6). Accordingly, Appellant’s arguments are
not persuasive.
For the reasons discussed above, we disagree with Appellant’s
contention that “[o]nly in full hindsight, with blinders on, can this
combination of references be made and be said to lead to the claimed
invention” (App. Br. 5).
We are also not persuaded by Appellant’s contention that Example 4
of the Specification supports an unexpected result, wherein “spent corn germ
provided much better results than either the soybean meal or the linseed
meal” and that “[s]uch results are not contemplated by Cavadini” (Reply Br.
5). Example 4 of Appellant’s Specification “illustrates absorptive and
drying attributes of three different materials, spent corn germ, soybean meal
and linseed meal” (Spec. 15: ¶0048). Appellant has not demonstrated that
this result would have been unexpected or surprising to a person of ordinary
skill in the art. Yamaguchi teaches a processed spent corn germ “which [is]
high in fiber content, water absorption rate, and oil absorption property,” and
is “suitably used as food ingredient[ ] requiring water or oil dispersion” (FF
3).

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CONCLUSION OF LAW
For the foregoing reasons, we find that the preponderance of the
evidence on this record supports a conclusion that it would have been prima
facie obvious to use Yamaguchi’s spent oil-bearing residue in Cavadini’s
animal feed that comprises a sorbed microorganism.
The rejection of claim 58 under 35 U.S.C § 103(a) as unpatentable
over the combination of Cavadini and Yamaguchi is affirmed. Because they
are not separately argued claims 59-65 fall together with claim 58.

CONCLUSION
In summary, we affirm the rejection of record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

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