Ex Parte Klijnstra et al

Patent Trial and Appeal Board

Feb 8, 2017

13119543 (P.T.A.B. Feb. 8, 2017)

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.
13/119,543 04/28/2011 Gertjan Klijnstra 294-397 PCT/US 2275
23869 7590
Hoffmann & Baron LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
STULII, VERA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/08/2017 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 GERTJAN KLIJNSTRA and
MARCO LUIGI FEDERICO GIUSEPPIN
Appeal 2016-000686
Application 13/119,543
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
1 In our opinion below, we refer to the Specification filed March 17, 2011
(“Spec.”); the Final Action mailed June 17, 2014 (“Final Act.”); the Appeal
Brief filed March 4, 2015 (“App. Br.”); the Examiner’s Answer mailed
August 12, 2015 (“Ans.”); and the Reply Brief filed October 13, 2015
(“Reply Br.”).
Appeal 2016-000686
Application 13/119,543
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—4 and 6—22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The claims are directed to processes for enhanced beer foaming.
Claims 1 and 14. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. Process for preparing beer or a beer-like beverage with
enhanced foaming stability comprising adding a native potato
protein isolate to said beer in an amount of 0.005 - 0.04 wt.% of
dry matter native potato protein isolate based on total weight of
the beer or beer-like beverage, wherein said native potato
protein isolate has a protein content of 90 % or more based on
dry matter as determined from the weight of total Kjeldahl
nitrogen multiplied by 6.25, and has been acidified to a pH
value between 4.2 and 4.7.
App. Br. 12 (Claims App’x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Tripp et al., (“Tripp”) US 5,439,699 Aug. 8, 1995
Giuseppin et al., EP 1 920 662 Al May 14, 2008
(“Giuseppin”)
REJECTIONS
Claims 1—4 and 6—22 stand rejected as unpatentable under 35 U.S.C.
§ 103(a) over Giuseppin in view of Tripp. Final Act. 2.
2 Appellants identify Cooperatie AVEBE, U.A. as the real party in interest.
App. Br. 2.
2
Appeal 2016-000686
Application 13/119,543
OPINION
The Examiner finds all of the pending claims obvious over Giuseppin
in view of Tripp. Final Act. 2, Ans. 2. Appellants argue the claims as a
group. App. Br. 5. We select claim 1 as representative of the group. The
remaining claims will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner finds that Giuseppin teaches all elements of claim 1,
with the exception that Giuseppin does not teach adding a native potato
protein isolate as a foaming agent to beer. Final Act. 2, Ans. 6. The
Examiner finds that Tripp discloses addition of foam enhancers to a beer­
like beverage. Id.
Appellants argue that the Examiner misinterprets Giuseppin. App. Br.
6; see also Reply Br. 1—2. Specifically, Appellants contend that Giuseppin
does not state that potato protein isolate is suitable as a foaming agent for
use in the foaming of drinks, but rather the reference states potato protein
isolate is appropriate for nutritional purposes such as protein drinks, and is
(separately) a good foaming agent. App. Br. 6; Reply Br. 2. In other words,
Appellants argue that it would be apparent to one of skill in the art that “the
procedures and processes for preparing the potato protein isolates for these
separate applications are in practice not compatible.” Id. Appellants
contend that “application [of potato protein isolates] as foaming agents in
Giuseppin are not in any type of food product. App. Br. 8; Reply Br. 2.
However, Giuseppin teaches use of a native potato protein patatin
isolate as, inter alia, a “foaming agent in a food product,” and the foaming
properties of the patatin fraction of the native potato protein isolate are
3
Appeal 2016-000686
Application 13/119,543
enhanced due to the high purity of the isolate.3 Giuseppin 149 (emphasis
added). Therefore, Appellants’ argument is factually incorrect. Giuseppin
clearly teaches use of a potato protein isolate as an agent for enhanced
foaming in a food product, and beer is a food product.
Appellants argue that one would not use a foam agent in a nutritious
protein drink. App. Br. 8; Reply Br. 2. One of ordinary skill in the art
would not have considered beer to be a nutritious protein drink, thus
Appellants’ argument is not responsive to the rejection.
Appellants also contend that Tripp “discloses simply adding foam
enhancers to a beverage, but is silent on problems relating to the instability
of the foam or on stability of beer foam in general.” App Br. 9.
One of ordinary skill in the art at the time of the invention would have
reasonably expected that native potato protein isolate was suitable for use as
a foaming agent in beer, as taught by Tripp, because Giuseppin discloses
that native potato protein patatin isolates were suitable for use as a foaming
agent in food products to enhance the foaming properties, and Tripp teaches
the desirability of using a foam enhancer in a beer or beer-like beverage.
See, e.g., Giuseppin |49 and Tripp col. 1,11. 45—48. “Obviousness does not
require absolute predictability of success ... all that is required is a
reasonable expectation of success.” In reKubin, 561 F.3d 1351, 1359-60
(Fed. Cir. 2009) (citingIn re O’Farrell, 853 F.2d 894, 903—04 (Fed. Cir.
1988)).
3 Giuseppin defined “native potato proteins” are tentatively divided into
three classes: (i) the patatin family, highly homologous acidic 43 kDa
glycoproteins, (ii) basic 5—25 kDa protease inhibitors, and (iii) other
proteins, mostly high molecular weight proteins. Giuseppin 14.
4
Appeal 2016-000686
Application 13/119,543
Appellants’ argument—that the comparative tests disclosed in the
Specification demonstrate a quantifiable difference to the prior art in foam
stability, and one of ordinary skill in the art at the time of the invention
would not have expected such results—is not persuasive. App. Br. 9.
Appellants have proffered evidence of nonobviousness, we must now
consider anew the issue of obviousness with due regard for all evidence
relevant to the ultimate conclusion. In re Rinehart, 531 F.2d 1048, 1052,
(CCPA 1976).
Example 2 and the Comparative Example in the Specification
compare the results on foam formation and stability in a low-alcohol beer
using native potato protease inhibitor isolate either (1) alone, or (2) with
varied amounts of Hyfoama. Spec. 10—13. According to Appellants,
Hyfoama is casein, a component of milk, and is known to be a good foaming
agent. App. Br. 9. Appellants argue that foam stability was improved
compared to the known foam stabilizer Hyfoama DNS, and that these
unexpected benefits are not taught or suggested by Giuseppin or Tripp, alone
or in combination. Id. at 10—11. Appellants state that “to Applicants’
knowledge, no indication exists in the prior art that gives a reasonable
expectation of these results.” Id. at 9.
However, as Appellants state in the Appeal Brief:
“In order for a showing of unexpected results to be probative of
nonobviousness, such evidence must at least establish that: (1)
there actually is a difference between the results obtained and
those of the closest prior art, and (2) the difference actually
obtained would not have been expected by one skilled in the art
at the time of the invention.” Eli Lilly, 364 F.Supp.2d at 907-08
(quoting In re Freeman, 474 F.2d 1318, 1324 (C.C.P.A. 1973)).
5
Appeal 2016-000686
Application 13/119,543
Id. at 7. Appellants have not met these requirements. Appellants compare
the claimed invention to Hyfoama, not to the native potato protein isolate
disclosed in Giuseppin, which is the closest prior art. Therefore, Appellants
fail to show a difference between the results in the Specification and the
closest prior. In addition, nothing other than attorney argument suggests that
the results disclosed in the Specification are either surprising or unexpected.
See Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997)
(“[Arguments of counsel cannot take the place of evidence lacking in the
record.”).
Appellants do not identify reversible error in the Examiner’s rejection
of claim 1 as obvious over Giuseppin in view of Tripp. For the reasons
stated above, Appellants also fail to identity reversible error in the
Examiner’s rejection of claims 2-4, and 6—22.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—4 and 6—
22 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)(l)(iv).
AFFIRMED
6