Ex Parte Murray

Board of Patent Appeals and Interferences

Jul 27, 2007

10137306 (B.P.A.I. Jul. 27, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________

Ex parte E. DONALD MURRAY
________________

Appeal 2007-1213
Application 10/137,306
Technology Center 1700
________________

Decided: July 27, 2007
________________

Before BRADLEY R. GARRIS, CHARLES F. WARREN, and
JEFFREY T. SMITH, Administrative Patent Judges.
SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 and 4. We have jurisdiction under 35 U.S.C. § 6 (2006).
We AFFIRM.
Appeal 2007-1213
Application 10/137,306

2
Appellant’s present invention directed to a foodstuff comprising a
substantially undenatured canola protein isolate. Representative claim 1 is
reproduced below:
1. In a food composition comprising a foodstuff and at least one
component providing functionality to said food composition, said
functionality being selected from the group consisting of
solubility, viscosity, water binding, gelation, cohesion/adhesion,
elasticity, emulsification, foaming, fat binding, film forming and
fibre forming, the improvement which comprises at least partially
replacing said at least one component for its specific functionality
in a specific food composition by a substantially undenatured
canola protein isolate having a protein content of at least about
100 wt %, as determined by Kjeldahl nitrogen N x 6.25, said
canola protein isolate being capable of providing all such
functionalities in food compositions.

The prior art set forth below is relied upon by the Examiner as
evidence in rejecting the appealed claims:
Cameron US 4,418,013 Nov. 29, 1983

Charles Morris, New Technology Isolates Canola Protein, Food
Engineering, 73-74 (2001).

Claims 1 and 4 stand rejected under 35 U.S.C. § 102(a) as anticipated
by Morris; and claims 1 and 4 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Cameron.
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.” In re
Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997);
Appeal 2007-1213
Application 10/137,306

3
accord Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047, 34 USPQ2d
1565, 1567 (Fed. Cir. 1995). However, anticipation by a prior art reference
does not require that the reference recognize either the inventive concept of
the claimed subject matter or the inherent properties that may be possessed
by the prior art reference. See Verdegaal Bros., Inc. v. Union Oil Co.,
814 F.2d 628, 633, 2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S.
827 (1987).
Claims 1 and 4 are argued as a group. We select claim 1 as the
representative claim on which we shall decide this appeal.
The issue presented for review with respect to these rejections is: Do
the Morris and Cameron references each have a disclosure that anticipates
the claimed subject matter? We answer this question in the affirmative.

The Rejection over Morris.
The Examiner finds that Morris discloses a canola protein isolate,
suitable for use in food composition, having a protein content in excess of
100 wt% as determined by Kjeldahl nitrogen N x 6.25 (Answer 3). Morris
discloses that the canola protein isolate is suitable for a variety of food
compositions (see unnumbered page 4).
Appellant has not disputed the Examiner’s factual findings. Appellant
acknowledges that Morris describes a canola protein isolate having a protein
content of 100 wt% as determined by Kjeldahl nitrogen x 6.25 that is
suitable for various food product compositions (Br. 4). However, Appellant
Appeal 2007-1213
Application 10/137,306

4
contends that Morris provides insufficient details as to the manner of
preparation of the canola protein isolate and therefore does not provide
enablement of the preparation of the canola protein isolate (Br. 4-5).
Appellant’s contention is not persuasive. Appellant has not provided
evidence to establish the descriptions of Morris could not enable a person of
ordinary skill in the art to make the describe canola protein isolate. The
Examiner, recognizes that the Morris reference discloses the method of
making a protein isolate which is the subject of a patent to the Assignee of
the present application (Answer 4). Appellant has failed to present evidence
that the patent referenced in the Morris disclosure would not have enabled a
person of ordinary skill in the art to practice the Morris invention.

The Rejection over Cameron.
The Examiner finds that Cameron discloses a substantially
undenatured canola protein isolate having a protein content of 106 wt% as
determined by Kjeldahl nitrogen N x 6.25 (Answer 3). Cameron discloses
the canola protein isolate is suitable for a variety of food compositions
(Cameron, col. 1, ll. 26-29).
Appellant acknowledges that Cameron describes a canola protein
isolate having a protein content of 106 wt% as determined by Kjeldahl
nitrogen x 6.25 (Br. 5). Appellant acknowledges that Cameron discloses
that the protein isolate is suitable for use in various food compositions (Id.).
Appeal 2007-1213
Application 10/137,306

5
However, Appellant contends that Cameron does not provide specific
examples demonstrating any utility for the protein isolate (Br. 5-6).
A reference is not limited to the descriptions of the preferred
disclosure or the disclosure of the examples; all its portions must be
considered for what they disclose to one of ordinary skill in the art. A
person of ordinary skill in the art would recognize that canola protein
isolates are used in food product compositions.1
Appellant contends that Cameron does not suggest that the protein
isolate has functional properties such as those specified in the claimed
invention. Appellant's contention is not persuasive. The claimed invention
is directed to a food composition that comprises a canola protein isolate.
Cameron discloses to a person of ordinary skill in the art food product
compositions that incorporate canola protein isolate. The identification of
the functional properties of the protein isolate is of no patentable moment.
That is, a person of ordinary skill in the art forming a food product
composition comprising the canola protein isolate described in Cameron
would have been practicing the claimed invention. Mehl/Biophile Int’l
Corp. v. Milgraum, 192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir.
1999) (“Where, as here, the result is a necessary consequence of what was
deliberately intended, it is of no import that the article’s authors did not
appreciate the results.”).

1The prior art, Morris and Cameron, as well as the prior art discussed in the
Background of the Invention portion of the Specification establish canola
protein isolates are routinely incorporated into food product compositions.
Appeal 2007-1213
Application 10/137,306

6

Decision
The decision of the Examiner rejecting claims 1 and 4 under 35
U.S.C. §102 as anticipated by Morris and Cameron individually 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)(1)(iv)(2006).

AFFIRMED

sld

SIM & MCBURNEY
330 UNIVERSITY AVENUE
6TH FLOOR
TORONTO, ON MSG 1R7 CANADA