Ex Parte Kopp et al

Board of Patent Appeals and Interferences

Dec 2, 2009

11421321 (B.P.A.I. Dec. 2, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_________________

Ex parte GABRIELE M. KOPP
and ALLAN G. BRADBURY

Appellants
_________________

Appeal 2009-008878
Application 11/421,321
Technology Center 1600
_________________

Decided: December 2, 2009
_________________

Before RICHARD E. SCHAFER, SALLY GARDNER LANE, and
MICHAEL P. TIERNEY, Administrative Patent Judges.

LANE, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-008878
Application 11/421,321

2
I. STATEMENT OF THE CASE
The appeal, under 35 U.S.C. § 134(a), is from a Final Rejection of
Appellants’ claims 1-8 and 11. Claims 9-10 and 12-22 have been withdrawn
as being drawn to non-elected subject matter. (App. Br. 5). We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
The real party-in-interest is said to be Kraft Foods R & D, Inc.
(App. Br. 5).
Appellants’ application is directed to a process for extracting cocoa
shells to provide a theobromine-enriched fraction and a polyphenol-enriched
fraction, as a source of antioxidants. (Spec. 1, ll. 4-10).
The Examiner relied upon the following US patents:

Name Number Date
Hoving 6,576,275 June 10, 2003
Hammerstone 6,627,232 September 30, 2003
Lee 6,693,104 February 17, 2004

The Examiner rejected claims 1-8 and 11 under 35 U.S.C. § 103(a) as
being obvious over Hammerstone, Hoving, and Lee. Appellants did not
argue separately for the patentability of any of the claims. We focus on
claim 1 in our review. See 37 C.F.R. §41.37(c)(1)(vii).
II. FINDINGS OF FACT
1. Appellants’ claim 1 recites:
A process for the manufacture of a theobromine-enriched
composition and a polyphenol-enriched composition
from cocoa shells, said process comprising
(1) providing defatted cocoa shells;
(2) extracting the defatted cocoa shells with an aqueous
acetone solution containing about 30 to about 80 percent
acetone to provide a liquid cocoa shell extract material;
Appeal 2009-008878
Application 11/421,321

3
(3) treating the cocoa shell extract material to remove
suspended solids to provide a treated liquid cocoa shell extract
material;
(4) removing acetone from the treated liquid shell extract
material to provide an aqueous extract material;
(5) concentrating the aqueous extract material to about
1.5 to about 5 percent solids to provide a concentrated extract
material;
(6) applying the concentrated extract material to a gel
filtration column containing a gel filtration medium suitable for
separating theobromine from polyphenols;
(7) rinsing the gel filtration column with water to collect
a theobromine-enriched composition; and
(8) eluting the water-rinsed gel filtration column with a
low molecular weight organic solvent to collect a polyphenol-
enriched composition, wherein the polyphenol-enriched
composition is essentially free of phytosterols and theobromine.

(App. Br. 18; Claims App’x).
2. Appellants’ specification provides for “SephadexTM- type”
products as gel filtration media. (Spec. p. 7, ll. 16-20).
3. Hammerstone relates to a single extraction process for
extracting procyanidins, which are polyphenols, from cocoa. (Hammerstone
col. 3, ll. 43-50).
4. Hammerstone teaches it was known in the art to prepare
extracts of cocoa solids from defatted cocoa beans with 70% acetone/30%
water. (Hammerstone col. 3, ll. 11-15).
5. Hammerstone teaches removing the acetone from the extract by
drying (Hammerstone col. 4, ll. 51-56 and col. 5, ll. 13-14), which would
concentrate it.
6. Hammerstone teaches that methylxanthines, which include
threobromine, can be removed from procyanidin extracts using gel
Appeal 2009-008878
Application 11/421,321

4
permeation chromatography with SephadexTM. (Hammerstone col. 19,
ll. 1-15).
7. Hammerstone teaches that it is optional to de-hull cocoa beans
before the extraction process (Hammerstone Fig. 5), and, thus, teaches
including the shell in the extraction process.
8. Hammerstone does not expressly teach cocoa shells as a source
of poylphenol or theobromine.
9. Hoving teaches extracting polyphenols from the cocoa shell, as
well as from the bean. (Hoving col. 2, ll. 45-48).
10. Lee relates to using theobromine as an anticarcinogenic agent
(Lee abstract) and that it can be extracted from defatted cocoa bean shells
with 50% acetone (id. col. 3, ll. 45-51).
III. PRINCIPLES OF LAW
“When a work is available in one field of endeavor, design incentives
and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 417 (2007).
IV. ISSUE
Would those of skill in the art have known to use acetone and gel
filtration to isolate theobromine from cocoa shells?
V. ANALYSIS
Appellants’ claimed process isolates polyphenols and theobromine
from defatted cocoa shells and from each other through two separations.
Appeal 2009-008878
Application 11/421,321

5
First, both polyphenols and theobromine are extracted from the defatted
cocoa shells with acetone. Second, theobromine is isolated from the
polyphenols on a column by gel filtration. (FF 1).
Hammerstone teaches that it was known in the art that procyanidine
polyphenols can be extracted from cocoa beans with 70% acetone. (FFs 3-
5). Hammerstone also teaches that methylxanthines, including theobromine,
can be removed from a procyanidine extract by gel chromatography with
SephadexTM. (FF 6).
Hammerstone teaches that defatted cocoa shells may be included in
the process for extraction of polyphenols (FF 7), but does not teach that
cocoa shells will provide polyphenols (FF 8). Hoving teaches that
polyphenols are present in cocoa shells (FF 9) and Lee teaches that
theobromine is present in cocoa shells. (FF 10). Those of skill in the art
would have known that extraction of cocoa shells can produce polyphenols
and theobromine and would have had sufficient reason to use the shells,
normally discarded, as a resource. (Ans. 6). Thus, the claimed process is a
predictable variation of the process taught in Hammerstone. See KSR, 550
U.S. at 417.
Appellants argue that Hammerstone is not related to the claimed
process because it teaches isolating theobromine by chilling and
precipitating it from a solution containing procyanidins. (App. Br. 9-10).
While that is one method taught in Hammerstone, Hammerstone also teaches
extracting theobromine and other methylxanthines by gel permeation
chromatography. (FF 6). Thus, those of skill in the art would have known
that gel filtration is useful for isolating theobromine from procyanidines.
Appeal 2009-008878
Application 11/421,321

6
Appellants argue that Hoving teaches away from the claimed process
because Table 3 of Hoving shows that essentially all of the theobromine
from the starting composition remains in the final product after extraction
and adsorption with polyvinyl/polypyrrolidone substrate. (App. Br. 12).
Table 3 of Hoving provides theobromine concentrations from the extraction
of cocoa powder with water (see Hoving col. 5, ll. 32-33), not with acetone,
as claimed. Thus, Table 3 of Hoving would not persuade those in the art to
avoid acetone extraction. See In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994) (“A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.”).
Appellants also argue that the Examiner has chosen only certain
elements from each reference, while ignoring others, and, thus, has based the
rejection on improper hindsight. (App. Br. 14-17). Even if an element is
“submerged” in a reference it is taught because “[a]ll the disclosures in a
reference must be evaluated, including nonpreferred embodiments . . . .” In
re Mills, 470 F.2d 649, 651 (CCPA 1972). According to Appellants, “[t]he
selection from each column is determine by using the present claims to pick
and choose without regard to the general teachings of the references.” (App.
Br. 16). While “picking and choosing” is not proper when making an
anticipation rejection, see In re Arkley, 455 F.2d 586, 587-88 (CCPA 1972),
we see no reason why those of skill in the art would not have recognized the
same teachings of the cited references noted by the Examiner to find the
claimed process obvious. Hammerstone teaches that a polyphenol and
theobromine can be extracted from whole defatted cocoa beans with acetone
Appeal 2009-008878
Application 11/421,321

7
and that gel filtration can further separate theobromines. (FFs 3-6). Hoving
and Lee teach that these components are also present in the shells of the
cocoa beans. (FFs 9 and 10). Appellants have not persuaded us that it
would have been beyond the skill of those in the art to recognize and
combine these teachings to make the best use of all parts of the cocoa bean.
Finally, Appellants argue that the Examiner relies on Hoving and Lee
only to teach that cocoa shells contain polyphenols and theobromine, but
that the references do not teach that these compounds can be extracted from
the shell in the same way they are from other parts of the cocoa bean.
(App. Br. 17, FN 2). Hammerstone teaches including cocoa shells in the
acetone extraction to obtain procyanidines and theobromine (FF 7), while
Lee teaches extracting isolated cocoa bean shells with acetone to obtain
theobromine (FF 10). Thus, the prior art teaches that cocoa shells can be
extracted using acetone, as in the claimed method. Appellants do not
provide evidence to show that those of skill in the art would have expected
that extraction of polyphenols and theobromine to be different from what is
taught in the prior art. Thus, we are not persuaded that there would have
been no reasonable expectation that the processes are the same.
VI. CONCLUSION
Those of skill in the art have known to use acetone and gel filtration to
isolate theobromine from cocoa shells, as taught in the combination of
Hammerstone, Hoving, and Lee.
VII. ORDER
The Examiner’s rejection of claims 1-8 and 11 under 35 U.S.C.
§ 103(a) over Hammerstone, Hoving, and Lee is AFFIRMED.
Appeal 2009-008878
Application 11/421,321

8
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

ak

Fitch, Even, Tabin & Flannery
120 South LaSalle Street
Suite 1600
Chicago, IL 60603-3406