Ex Parte Murray et al

Patent Trial and Appeal Board

Sep 10, 2014

10498130 (P.T.A.B. Sep. 10, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte DONALD E. MURRAY and PAUL S. WESTDAL
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Appeal 2012-005122
Application 10/498,1301
Technology Center 1700
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Before BRADLEY R. GARRIS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 1, 5–36, 43, 45, 46, and 53. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Claim 1 is illustrative of the claimed subject matter:
1. A process of preparing a canola protein isolate, which comprises:
(a) crushing canola oil seeds to form canola oil and canola oil seed
meal therefrom.

1 The real party in interest is Burcon Nutrascience (MB) Corp. Br. 2.
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(b) solvent extracting the canola oil seed meal to recover residual
canola oil therefrom,
(c) recovering solvent from the extracted canola oil seed meal at a
temperature of 0° to about 100°C to provide a dried canola oil seed meal,
(d) extracting the dried canola oil seed meal with an aqueous salt
solution to cause solubilization of canola protein in said dried canola oil seed
meal and to form an aqueous canola protein solution having a pH of about 5
to about 6.8,
(e) separating the aqueous canola protein solution from residual
canola oil seed meal,
(f) increasing the protein concentration of said aqueous canola protein
solution while maintaining the ionic strength substantially constant by using
a selective membrane technique to provide a concentrated canola protein
solution,
(g) diluting said concentrated canola protein solution into chilled
water having a temperature of below 15°C to cause the formation of discrete
canola protein particles in the aqueous phase in the form of micelles,
(h) settling the canola protein micelles to form an amorphous, sticky,
gelatinous, gluten-like canola protein micellar mass, and
(i) recovering the canola protein micellar mass from supernatant, the
canola protein micellar mass having a canola protein content of at least
about 90 wt% as determined by Kjeldahl nitrogen x 6.25 on a dry weight
basis,
wherein said steps (d) to (i) are effected in a continuous mode of
operation.

Independent claims 20, 24, 25, 31, and 53 are also directed to similar
processes of preparing a canola protein isolate as recited in claim 1 (Br.
Claims App’x).
The Examiner maintains the following rejections under 35 U.S.C.
§ 103(a):
(a) claims 1, 5 to 21, 24 to 36, 45, and 46 as being unpatentable over
Murray ’076 (US 6,005,076, patented Dec. 21, 1999) in view of Anjou (US
Patent No. 4,083,836, patented Apr. 11, 1978).
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(b) claims 22 and 23 as being unpatentable over Murray ’076, Anjou,
and Walterick, Jr. (US 4,668,404, patented May 26, 1987).
(c) claims 43 and 53 as being unpatentable over the combined prior art
of Murray ’076, Anjou, and Murray ’090 (US 4,169,090, patented Sept. 25,
1979).
The Examiner also rejects the claims on the ground of non-statutory
obviousness-type double patenting as being unpatentable over the claims of
US 7,687,083 B2 (patented Mar. 30, 2010), with Murray ’076 and Anjou.
Additionally, in the final rejection, the Examiner provisionally
rejected the claims on the ground of non-statutory obviousness-type double
patenting as being unpatentable over the claims of copending Application
No. 10/137,391 (now US 8,741,356) with Murray ’076 and Anjou.
Appellants state that since this rejection was provisional at the time of this
appeal, “it is not yet possible to appeal the rejection” (Br. 5). The
Examiner’s Answer does not repeat this provisional rejection. Accordingly,
we will not reach the merits of this rejection.

Appellants argue claims 1, 5–10, 12–16, 24, and 31–35 as a group in
the first ground of rejection, and mainly focus on independent claim 1 (Br.
11–20). Appellants explicitly rely upon the arguments for claim 1 for
independent claim 24 (Br. 13), as well as for rejection (b) of claims 22 and
23 (Br. 20). Appellants do not make any separate arguments for claims 31 –
35.
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Accordingly, claims 1, 5–10, 12–16, 22–24, and 31–35 stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims that were
separately argued in Appellants’ brief will be addressed below.
ANALYSIS
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in agreement with the Examiner that the
claimed subject matter of representative claim 1, as well as all the other
claims, is unpatentable under § 103 in view of the applied prior art.
Accordingly, we sustain all of the Examiner’s prior art rejections for the
reasons set forth in the Answer. Since the obviousness-type double
patenting rejection relies upon a similar rationale as in the rejection of claim
1, we shall also sustain that rejection.
We add the following primarily for emphasis.
In assessing whether a claim to a combination of prior art elements
would have been obvious, the question to be asked is whether the
improvement of the claim is more than the predictable use of prior art
elements or steps according to their established functions. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418.
We are not persuaded by Appellants’ argument that it would not have
been obvious to use the modified lower temperature hexane extraction with
toasting of Anjou as an alternative for the admitted prior art hexane
extraction with “intense heat treatment” toasting (e.g., Anjou, col. 2, ll. 20–
28; Br. 7, 11, 12 (“conventional toasting temperatures (about 120° to 140°
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C)”)) in a process as exemplified in Murray ’076, because Anjou overall
teaches different process steps than Murray ’076 for preparing a protein
concentrate.
It is well established that in evaluating references it is proper to take
into account not only the specific teachings of the references but also the
inferences which one skilled in the art would reasonably be expected to draw
therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). A preponderance
of the evidence supports the Examiner’s position that, regardless of the
differences between the processes of Anjou and Murray ’076,
Anjou still teaches the generic process for oil extraction of a
[canola] seed meal which comprises using hexane followed by
a desolventizing/toasting step at conventionally high
temperatures and teaches the problems associated with such
steps. One of ordinary skill in the art would have reasonably
expected that such prior art knowledge would be applicable to
the method of Murray of preparing canola or oil seed protein
isolates, particularly when Murray teaches that the starting
material of the canola seed meal can be the result of a hexane
extraction. Furthermore, Anjou is in the same field of endeavor
as Murray . . . . Lastly, when further considering Appellant’s
specification, it is noted that it is disclosed that conventional
desolventizing/toasting steps affects and leads to a darkened
color of the seed meal and the amount of protein which can be
extracted from the oil seed meal, both of which are taught by
Anjou as being solved by the disclosed lower temperatures
during the desolventizing/toasting step.

(Ans. 32– 33; no Reply Brief has been filed.)

Appellants have not provided persuasive reasoning or credible
evidence why one of ordinary skill in the art would not have, using no more
than ordinary creativity, predictably used the known lower temperature
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hexane extraction and toasting of canola oil seed meal as exemplified in
Anjou, for the admitted prior art higher temperature process discussed in the
applied prior art and by Appellants, so as to result in the use of steps (b) and
(c) (as recited in claim 1) in the process of Murray ’076 (e.g., Ans. 8–10;
Br., generally). See KSR, 550 U.S. at 421 (“A person of ordinary skill is
also a person of ordinary creativity, not an automaton.”).
With respect to claim 25, Appellants’ argument that, contrary to the
Examiner’s position, Murray ’076 does not teach or suggest concentration of
the aqueous canola protein solution to “at least about 200 g/L” as recited in
claim 25 (Br. 13), is not persuasive. As pointed out by the Examiner,
Murray exemplifies that concentrations of about 200 g/L are achievable for
oil seed meal in general (Ans. 14, 36). Appellants have not shown error in
the Examiner’s determination that one of ordinary skill in the art would have
understood that the general range of Murray ’076 was applicable to canola
oil seeds as well (id.). Furthermore, Appellants have not shown any error in
the Examiner’s determination that once one modified the process of Murray
’076 to include the improved extraction/toasting steps of Anjou, the result of
a concentration of at least about 250 g/L as recited in claim 26, and the result
of “a protein content of at least 100 wt.% (N x6.25)” as recited in claims 36
and 53 would have naturally followed (see, e.g., Ans. 14, 15, 20). See Ex
parte Obiaya, 227 USPQ 58, 60 (BPAI 1985) (holding that the recognition
of another advantage flowing naturally from following the suggestion of the
prior art cannot be the basis for patentability when the difference would
otherwise be obvious).

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With respect to all the other separately argued claims, a
preponderance of the evidence supports the Examiner’s rejections of these
claims for the reasons explained by the Examiner (e.g., Ans. 33–37).
Therefore, we affirm the Examiner’s § 103 rejections of all the claims
on appeal.
We also affirm the Examiner’s obviousness-type double patenting
rejection based on US 7,687,083, which relies upon a rationale similar to the
obviousness rejection based on the same prior art of Murray ’076 and Anjou.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

ORDER
AFFIRMED

cdc