Ex Parte Murray et alDownload PDFPatent Trial and Appeal BoardSep 10, 201410498130 (P.T.A.B. Sep. 10, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DONALD E. MURRAY and PAUL S. WESTDAL ____________ Appeal 2012-005122 Application 10/498,1301 Technology Center 1700 ____________ 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. Appeal 2012-005122 Application 10/498,130 2 (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). Appeal 2012-005122 Application 10/498,130 3 (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. Appeal 2012-005122 Application 10/498,130 4 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° Appeal 2012-005122 Application 10/498,130 5 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 Appeal 2012-005122 Application 10/498,130 6 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). Appeal 2012-005122 Application 10/498,130 7 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 Copy with citationCopy as parenthetical citation