Ex Parte Ling

Patent Trial and Appeal Board

Oct 19, 2016

12564762 (P.T.A.B. Oct. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/564,762 0912212009
38598 7590 10/21/2016
ANDREWS KURTH KENYON LLP
1350 I STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
HAIBOLING
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2003-002 CIP (199117) 9071
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/21/2016 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):
DCIPDOCKETING@andrewskurth.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HAIBO LING
Appeal2015-003730
Application 12/564,762
Technology Center 1700
Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 1-3, 5-7, 9-11, 13, and 20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 In our Opinion below we reference the Declaration of Haibo Ling filed
April 2, 2013 ("Ling Deel."), the Non-final Action mailed June 9, 2014
("Non-final Act."), the Appeal Brief filed August 12, 2014 ("App. Br."), the
Examiner's Answer mailed December 5, 2014 ("Ans."), and the Reply Brief
filed February 3, 2015 ("Reply Br.").
2 Appellant identifies the real party in interest as Beijing Yihecun
Technology Co., Ltd. App. Br. 3.
Appeal2015-003730
Application 12/564,762
The claims are directed to a fermented milk beverage that maintains a
high viable cell count at ambient temperature for one to six months and a
process for preparing the same. Claim 1, reproduced below with the
disputed limitation underlined, is illustrative of the claimed subject matter:
1. A process of preparing fermented milk beverage keeping
high viable cell count at ambient temperature, comprising:
adding regular yoghurt lactobacillus into milk for
fermentation;
fermenting said milk until pH value to 3.8--4.8;
diluting and mixing the fermented milk with additives
and water;
sterilizing the diluted and mixed fermented milk; and
adding Lactobacillus rhamnosus ATCC 53103 into the
sterilized fermented milk beverage at aseptic condition to
produce a final product,
wherein said regular yoghurt lactobacillus is selected
from the group consisting of a single strain of Lactobacillus
bulgaricus, a single strain of Streptococcus thermophilus,
mixed strains of Lactobacillus bulgaricus, mixed strains of
Streptococcus thermophilus, and mixed strains of Lactobacillus
bulgaricus and Streptococcus thermophilus, and
wherein said final product can be stored for 1---6 months
under room temperature with a viable cell count of
Lactobacillus rhamnosus ATCC 53103 of at least 105 cfu/ml
milk beverage.
App. Br. 24 (Claims App'x).
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
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Appeal2015-003730
Application 12/564,762
Germond et al.
("Germond")
WO 01/88150 Al Nov. 22, 2001
Grosso and Favaro-Trindade, Stability of Free and Immobilized
Lactobacillus acidophilus and Bifidobacterium lactis in Acidified Milk
and of Immobilized B. lactis in Yoghurt, 35 Brazilian J. Microbio. 151
(2004) (hereinafter "Grosso").
REJECTIONS
Claims 1-3, 5-7, 9-11, 13, and 20 stand rejected under 35 U.S.C.
§ 103(a) as obvious over Grosso in view of Germond. Non-final Act. 3.
OPINION
We address the two independent claims, claims 1 and 20, separately
because they address a process (claim 1) and the product of that process
(claim 20).
Rejection of claims 1-3, 5-7, 9-11, and 13
The Examiner contends that Grosso teaches that yogurt is produced by
fermentation of milk with a mixed culture of S. thermophilus and L.
delbrueckii ssp. bulgaricus and is then sterilized and subsequently inoculated
with a probiotic via calcium alginate beads containing the probiotic:
In GROSSO, yoghurt was prepared from whole milk powder,
reconstituted at 15% solids, and sterilized in retort at 121°C for
8 minutes. When producing the yogurt, the fermentation step
was carried out at 45°C with a 2% inoculum (i.e., culture) of a
mixed culture of S. thermophilus and L. delbrueckii ssp.
bulgaricus) until a pH of 4.2 was reached. In this regard, a
regular yoghurt lactobacillus is added to a diluted milk source,
the yoghurt is fermented until a pH of 4.2, the yogurt is then
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Appeal2015-003730
Application 12/564,762
blended/mixed, the yogurt is then sterilized for inoculation of a
probiotic via calcium alginate beads containing the probiotic.
Ans. 6 (citing Grosso, p. 152, right column, third full paragraph)
(underlining in original, bolded italics added). The Examiner urges that
Grosso teaches a step of sterilization, and that it would have been obvious
to one skilled in the art to sterilize a medium before adding a probiotic. Id.
Appellant argues that Grosso fails to teach the step of sterilizing
fermented milk, i.e., Grosso sterilizes milk before, not after, it is fermented.
App. Br. 9 (emphasis added). As support for his position, Appellant points
out that Grosso evaluates the bacterial count of all three bacteria inoculated
into the milk, B. lactis, S. thermophilus, and L. delbrueckii ssp. bulgaricus,
after 0, 7, 14, 21, and 28 days of storage, and, had Grosso sterilized the
fermented milk, there would have been no reason to measure bacterial
counts of S. thermophilus or L. delbrueckii ssp. bulgaricus involved in the
fermentation step, as sterilization would have killed those bacteria. Id. at 11
(citing Grosso p. 152, right column).
According to Appellant, "[a] key feature of the process of
independent Claim 1 is to ferment milk with regular yoghurt lactobacilli
(i.e., the starter culture) and then sterilize the fermented milk before adding
another lactobacillus probiotic that does not metabolize lactose [] in the
fermented milk." Id. at 9 (emphasis in original). Appellant therefore
asserts that whether the sterilization step takes place before or after
inoculation of milk with bacteria such as Lactobacillus acidophilus results
in the sterilization step being qualitatively different, and "produc[ es] a
completely different outcome." Id. at 13.
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Appeal2015-003730
Application 12/564,762
Based on the evidence before us, we agree with Appellant. The
Examiner's interpretation of Gross appears to be based on a misreading of
the sentence "Yoghurt was prepared from whole milk powder, reconstituted
at 15% solids, and sterilized in retort at 121°C for 8 minutes." Gross, p.
152, right column, third full paragraph. In this sentence, "sterilized" refers
to "whole milk powder," not "[y]oghurt." This is evident from the
objective of the process, which is to keep the bacteria alive. If sterilization
occurred after fermentation, sterilization would kill the bacteria.
Grosso teaches sterilization of milk before inoculation with a mixed
bacterial culture of S. thermophilus and L. delbrueckii ssp. bulgaricus, then
fermentation at 45°C until a pH of 4.2 is reached, then mixing of the yogurt,
and then inoculation with calcium alginate beads containing B. lactis.
Grosso, p. 152, right column. When the steps were carried out in the order
described in Grosso, the last-added probiotic bacteria-B. lactis---did not
survive storage for 28 days, even under refrigerated conditions. Id. at
Tables 5 and 6.
In contrast, Appellant claims inoculation of milk with regular yogurt
lactobacillus selected from single or mixed strains of Lactobacillus
bulgaricus and/or Streptococcus thermophilus, fermentation, then
sterilization, and finally inoculation with Lactobacillus rhamnosus ATCC
53103. See App. Br. 24 (Claims App'x). The steps taken in this order
result in a product that can be stored for one to six months at room
temperature wherein the last-added probiotic bacteria (Lactobacillus
rhamnosus ATCC 53103) maintains a viable cell count of at least 105
colony-forming units per milliliter of milk beverage. Id.
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Application 12/564,762
Claim 1 requires "sterilizing the diluted and mixed fermented milk."
App. Br. 24 (Claim App'x) (emphasis added). The step of fermenting the
milk with the required "regular yoghurt lactobacillus" (single or mixed
strains of Lactobacillus bulgaricus and/or Streptococcus thermophilus) must
take place before the step of sterilization of the milk. Appellant explicitly
requires a specific order to the steps, which clarifies how the claimed
invention differs from Grosso.
The additional reference relied on by the Examiner, Germond, does
not cure the defect discussed above. Because Grosso does not teach or
render obvious sterilizing fermented milk and then inoculating the fermented
milk with a pro biotic, we do not reach the issue of whether Germond teaches
use of Lactobacillus rhamnosus ATCC 53103 as a pro biotic.
The Examiner has not established that claim 1 would have been
obvious over Grosso in view of Germond.
Rejection of claim 20
Claim 20 is a product-by-process claim, drawn to the product
produced by the process of claim 1. In response to the Examiner's argument
that determination of the patentability of a product-by-process claim is based
on the product itself, not the process (Non-Final Act. 5), Appellant states
that the Examiner does not identify any equivalent product resulting from
the combination of Grosso and Germond. App. Br. 21. In the Answer, the
Examiner suggests the proposed combination of Grosso and Germond
describes a product having the same physical attributes as claimed. Ans.
10-11. Appellant replies that
the claimed product of Grosso and Germond cannot possibly be
the same product as claimed, essentially because the cited
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Application 12/564,762
references do not describe or suggest the step of sterilizing the
fermented milk beverage, which would kill the yoghurt
lactobacilli so as to completely change the composition of
viable microorganisms and the resulting functional
characteristics the Lactobacillus rhamnosus ATCC 53103 in the
sterilized medium.
Reply Br. 11.
Grosso teaches a yogurt in which the "regular yoghurt lactobacillus"
(single or mixed strains of Lactobacillus bulgaricus and/or Streptococcus
thermophilus) survives and the probiotic bacteria added to the fermented
milk (B. lactis) does not. Grosso p. 152, right column and Tables 5 and 6.
This result is in marked contrast to the claimed product, and the Examiner
has not established that claim 20 is obvious over Grosso in view of
Germond.
CONCLUSION
We do not sustain the Examiner's rejections.
DECISION
For the above reasons, the Examiner's rejections of claims 1-3, 5-7,
9-11, 13, and 20 is REVERSED.
REVERSED
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