Ex Parte Lim et al

Patent Trial and Appeal Board

Feb 21, 2017

14115266 (P.T.A.B. Feb. 21, 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.
14/115,266 12/19/2013 Bee Gim Lim 3712036-02031 5536
29157 7590 02/23/2017
K&T Oates T T .P-Phiraan
EXAMINER
P.O. Box 1135
CHICAGO, IL 60690
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/23/2017 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEE GIM LIM and THANG HO DAC
Appeal 2016-003763
Application 14/115,266
Technology Center 1700
Before JEFFREY T. SMITH, JAMES C. HOUSEL, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1—20.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal is generally directed to a process for
producing a hydrolysate comprising mixing a substrate that comprises at
1 Appellants identify the Real Party in Interest as Nestec S.A. (Appeal Brief
filed September 30, 2015 (“App. Br.”), 2.)
2 Final Office Action entered July 24, 2015 (“Final Act.”).
Appeal 2016-003763
Application 14/115,266
least one animal protein with a food-grade bacterium and incubating the
mixture under conditions of less than 2% salt content by weight; a
hydrolysate obtained by hydrolyzing a substrate comprising at least one
animal protein by a food-grade bacterium in an environment having less than
2% salt content by weight; and a food product comprising such a
hydrolysate. App. Br. 3. Details of the appealed subject matter are recited
in representative claims 1,11, and 20, which are reproduced below from the
Claims Appendix to the Appeal Brief:
I. A hydrolysate obtained by hydrolysing a substrate
comprising at least one animal protein by a food-grade
bacterium in an environment having less than 2 wt[.]% salt
content.
II. A process for producing a hydrolysate, the process
comprising:
mixing a substrate that comprises at least one animal
protein with a food-grade bacterium; and
incubating the mixture under conditions of less than 2
wt.% salt content.
20. A food product comprising a hydrolysate obtained by
hydrolysing a substrate comprising at least one animal protein
by a food-grade bacterium in an environment having less than 2
wt.% salt content.
(App. Br. 23—25, Claims Appendix.)
Appellants seek review of the final rejection of claims 1—20 under
35 U.S.C. § 103(a) as unpatentable over Sathivel (US 2009/0238930 Al,
published September 24, 2009) and Yanai et al. (US 6,365,206 Bl, issued
April 2, 2002), maintained by the Examiner in the Answer entered January
4, 2016 (“Ans.”).
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Application 14/115,266
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants’ contentions, we affirm the Examiner’s rejection of claims 1—20
under 35 U.S.C. § 103(a) as unpatentable over Sathivel and Yanai for the
reasons set forth in the Final Action and the Answer. We add the discussion
below primarily for emphasis and completeness.
We limit our discussion to those claims separately argued, and claims
not separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Although Appellants provide separate arguments for each
of claims 1, 2, 4, 9, 11, 12, 15, and 20, Appellants do not present arguments
for the separate patentability of claims 2, 4, 9, 11, 12, 15, and 20 that are
distinct from the arguments that they provide for claim 1. App. Br. 6—21.
Therefore, for the purposes of this appeal, we select independent claims 1,
11, and 20 as representative, and decide the propriety of the rejection of
claims 1—20 based on these claims alone.
Claim 113
Sathivel discloses a method for producing a protein-rich comestible
(food product) that involves mixing fresh or salt water and a pulverized raw
fish product, and adding an enzyme capable of hydrolyzing proteins
(proteolytic enzyme) and/or a microorganism capable of decomposing
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Although Appellants provide separate arguments for
claims 11, 12, and 15, Appellants in essence repeat arguments for these
claims that they provide for claim 1. (See generally App. Br. 6—21.)
Therefore, for the purposes of this appeal, we select claim 11 as
representative of claims 11—19.
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Application 14/115,266
proteins (proteolytic microorganism), such as the bacterium Bacillus natto,
to the mixture to ferment (hydrolyze) the fish product. Sathivel ]Hf 52, 66,
67, 76, 78, 79. The Examiner finds that Sathivel4 exemplifies a process for
the enzymatic hydrolysis of a raw fish product in the absence of salt that
involves mixing ground arrowtooth flounder fillets with distilled water,
homogenizing the mixture, adding Alcalase enzyme, and continuously
stirring the resulting mixture at 50°C for 75 minutes. Final Act. 3; Ans. 4;
Sathivel 1117.
Appellants argue that Sathivel does not disclose the conditions under
which hydrolysis of the fish product occurs, does not provide an
experimental example of bacterial hydrolysis, and does not indicate whether
salt is present during the hydrolysis. App. Br. 6—7. Appellants further argue
that Sathivel’s disclosure of using fresh or salt water only applies to the
water mixed with the pulverized raw fish product, and does not apply to the
subsequent hydrolysis step. App. Br. 9. Appellants contend that the
Examiner’s finding that Sathivel discloses a process for hydrolyzing a fish
product that does not require salt is therefore mere speculation. Id.
Appellants’ arguments are not persuasive of reversible error in the
appealed rejection. We agree with the Examiner that Sathivel’s disclosures
would have suggested a process for producing a fish hydrolysate via
bacterial hydrolysis in the absence of salt to one of ordinary skill in the art at
the time of Appellants’ invention. As discussed above, Sathivel discloses a
process for producing a hydrolysate that involves adding an enzyme capable
4 The Examiner refers to Sathivel as “Rl” and refers to Yanai as “R2.” Final
Act. 2.
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Application 14/115,266
of hydrolyzing proteins and/or a bacterial microorganism capable of
decomposing proteins, such as Bacillus natto, to a mixture of water and a
pulverized raw fish product, and Sathivel discloses that the water can be
fresh or salt water. Sathivel Tflf 52, 66, 67, 76, 78, 79. One of ordinary skill
in the art reasonably would have understood from Sathivel’s disclosure of
the suitability of both fresh and salt water that hydrolysis of the raw fish
product with the bacterium would occur in the absence of salt.
Moreover, Sathivel further discloses that enzymes capable of
hydrolyzing proteins and bacteria capable of decomposing proteins can be
used interchangeably to hydrolyze a fish product, and Sathivel exemplifies
the enzymatic hydrolysis of ground flounder fillets in a process that involves
adding only distilled water and a hydrolytic (proteolytic) enzyme to the
ground fish. Sathivel 66, 67, 79, 117. Thus, Sathivel explicitly discloses
a process for producing a hydrolysate via enzymatic hydrolysis of a fish
product under conditions in which salt is not present, and discloses the
interchangeability of enzymes and bacteria that are capable of decomposing
proteins for producing fish hydrolysates, which suggests that bacterial
hydrolysis of fish would also work in the absence of salt with a reasonable
expectation of success. Accordingly, Sathivel’s disclosures as a whole
would have suggested to one of ordinary skill in the art that a fish
hydrolysate would have been produced by mixing the fish with water and a
bacterium capable of decomposing proteins, such as B. natto, and incubating
the mixture under conditions in which little or no salt is present, such as less
than 2% salt by weight as recited in claim 11.
Appellants further argue that one of ordinary skill in the art would
have included salt during the hydrolysis process discloses in Sathivel
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because it was generally known in the art at the time of Appellants’
invention that fresh fish is perishable, and it was also known that salt could
guarantee the safety of fermented fish food products. App. Br. 8. In support
of these arguments, Appellants rely on statements in their Specification
(Spec. 2,11. 11—18) and information provided in Campbell-Platt, Fermented
Foods of the World: A Dictionary and Guide (1987), which Appellants
submitted to the Patent Office on July 15, 2015 (“Fermented Foods”).
However, claim 11 does not recite a process for producing a food
product, and only requires the use of a food-grade bacterium. In contrast,
the relied-upon statements in Appellants’ Specification and Fermented
Foods are directed to food products. Accordingly, Appellants’ arguments
and evidence lack persuasive merit because they are directed to subject
matter that is not recited in claim 11. In re Self 671 F.2d 1344, 1348
(CCPA 1982) (“[Ajppellanf s arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”). Appellants’
arguments and supporting evidence are therefore unpersuasive of reversible
error.
Appellants further argue that Yanai fails to remedy the deficiencies of
Sathivel because “Yanai is entirely directed to using wet soybean flakes in
fermentation with Bacillus natto and is completely silent about the amount
of salt used during the fermentation.” App. Br. 7—8 (emphasis omitted).
However, Appellants’ arguments are unpersuasive of reversible error
because they do not address the basis for the Examiner’s reliance on Yanai.
The Examiner relies on Yanai’s disclosure of fermenting soy beans with
Bacillus natto to produce a food product, reasonably suggesting that such a
food product containing Bacillus natto could be successfully used as the
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Application 14/115,266
source of Bacillus natto to ferment or hydrolyze raw fish, as disclosed in
Sathivel. Final Act. 3-A; Yanai col. 1,11. 11—14; col. 3,1. 34—col. 4,1. 15.
Appellants’ arguments are therefore unpersuasive of reversible error.
Appellants further dispute the Examiner’s statement that Bacillus
natto can grow in an environment containing at most 8% salt. App. Br. 9—
10. However, this statement by the Examiner (from the Response to
Arguments portion of the Final Office Action) was made in response to
Appellants’ prior argument that “Sathivel does not specifically disclose that
salt is present when hydrolyzing” (Appellants’ Amendment, p. 8, filed July
15, 2015), and is not the basis for the rejection set forth by the Examiner.
Final Act. 4. Appellants’ argument therefore is not directed to the basis for
the Examiner’s conclusion of obviousness, and is unpersuasive of reversible
error.
We accordingly sustain the Examiner’s rejection of claims 11—19
under 35 U.S.C. § 103(a) as unpatentable over Sathivel and Yanai.
Claims 1 and 20s
Claims 1 and 20 recite a hydrolysate and a food product, respectively,
produced by hydrolyzing a substrate comprising at least one animal protein
by a food-grade bacterium in an environment having less than 2% salt
content by weight. Accordingly, claims 1 and 20 are product-by-process
5 Although Appellants provide separate arguments for claims 1, 2, 4, 9, and
20, Appellants in essence repeat arguments for claims 2, 4, 9, and 20 that
they provide for claim 1. (See generally App. Br. 6—21.) Therefore, for the
purposes of this appeal, we select claims 1 and 20 as representative of claims
1-10 and 20.
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Application 14/115,266
claims, and their patentability is therefore based on the claimed product
itself, and not on its method of production. In re Thorpe, 111 F.2d 695, 698
(Fed. Cir. 1985).
As discussed above, Appellants present substantially the same
arguments for claims 1 and 20 that they provide for claim 11, and
Appellants’ arguments for claims 1 and 20 are therefore set forth above in
the discussion of claim 11.
On this record, Appellants do not direct us to evidence or reasoning
establishing an unobvious difference between the hydrolysate and protein-
rich comestible (food product) produced as described in Sathivel (Sathivel
Tflf 52, 66, 67, 76, 78, 79, 117 discussed above) and the hydrolysate and food
product recited in claims 1 and 20, respectively. App. Br. 6—21. Nor do
Appellants establish that a hydrolysate and food product obtained by
hydrolyzing a substrate comprising at least one animal protein by a food
grade bacterium in an environment having less than 2% salt by weight as
recited in claims 1 and 20 would result in a hydrolysate and a food product
that are structurally distinct or different from the hydrolysate and food
product produced as described in Sathivel. Id. Thus, Appellants do not
establish a patentable distinction between the hydrolysate and protein-rich
comestible (food product) produced as described in Sathivel and the
hydrolysate and food product recited in claims 1 and 20. In re Marosi, 710
F.2d 799, 802 (Fed. Cir. 1983) (for product-by-process claims, the burden is
upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art product
produced by a different process.)
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We accordingly sustain the Examiner’s rejection of claims 1—10 and
20 under 35 U.S.C. § 103(a) as unpatentable over Sathivel and Yanai.
ORDER
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm the rejection of claims 1—20 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)(l)(iv).
AFFIRMED
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