Ex Parte Noordam et alDownload PDFPatent Trial and Appeal BoardDec 19, 201412667980 (P.T.A.B. Dec. 19, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BERTUS NOORDAM and JANT GERRIT KORTES __________ Appeal 2013-004721 Application 12/667,9801 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and GEORGE C. BEST, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from a final rejection of claims 1, 3–9, 11, and 16–21. An oral hearing was held on November 4, 2014. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The subject matter on appeal is directed to a yeast autolysate. The Appellants disclose that the yeast autolysate may be used as a flavor enhancer. 1 According to the Appellants, the real party in interest is DSM IP Assets B.V., Netherlands. Appeal Brief dated October 12, 2012 (“App. Br.”), at 4. Appeal 2013-004721 Application 12/667,980 2 Spec. 5, ll. 3–5. According to the Appellants, a yeast autolysate comprises both solubilized and solid (insoluble) yeast material. In contrast, a yeast extract, which also may be used to enhance flavor, comprises only the solubilized yeast material. App. Br. 8; see also Spec. 1, ll. 13–22. Claims 1 and 5 are reproduced below from the Claims Appendix of the Appeal Brief. 1. A yeast autolysate having a dry solids ratio of ≥50% and ≤95% and comprising at least 0.75% w/w 5´-GMP based on sodium chloride free dry matter of the yeast autolysate. 5. A process for preparing the yeast autolysate as defined in claim 1 having a dry solids ratio of ≥50% and ≤95% comprising: a. subjecting yeast to autolysis at pH 4‒7 and at a temperature in the range of 40‒60ºC in the presence of an endogenous protease of the yeast; b. an enzymatic treatment of the yeast to produce 5´-ribonucleotides; c. optionally a further enzymatic treatment of the yeast to convert 5´-AMP into 5´-IMP; and d. concentrating the complete reaction mixture to yield the yeast autolysate with the proviso that the process does not comprise a solid liquid separation step. App. Br. 23. The claims on appeal stand rejected as follows: (1) claims 1, 3–9, and 16–21 under 35 U.S.C. § 103(a) as unpatentable over Eguchi2 in view of Feuillat3 and Harada;4 and (2) claim 11 under 35 U.S.C. § 103(a) as unpatentable over Eguchi in view of Feuillat and Harada and further in view of Choi.5 2 US 4,066,793, issued January 3, 1978. 3 FR 2 607 147, published May 27, 1988. In this Decision on Appeal, we rely on the English translation dated August 31, 2011, which is of record in the instant Application. 4 EP 0 299 078, published January 18, 1989. Appeal 2013-004721 Application 12/667,980 3 B. DISCUSSION 1. Rejection (1) The Examiner finds that Eguchi discloses a process for preparing a yeast extract which includes the step of preparing a yeast autolysate. Ans. 3.6 In particular, Eguchi discloses: The presently preferred process for preparing the seasonings comprises the steps of: 1. decomposing suspended yeast cells by autolysis in the presence of potassium ions at a pH of 5 to 7 and a temperature of from 30º to 60º C, and thereafter performing the following steps in any convenient order; 2. adding from 5 to 20% by weight sodium chloride, so that the [K+]/[Na+] ratio is more than 0.5, 3. separating resulting clear extract from the insoluble residue, 4. heating at from 90º C to 100º C for from 10 to 30 minutes, and 5. adding from 0.5 to 4% by weight of a 5´-nucleotide. Eguchi, col. 2, ll. 7–20 (emphasis added). The Examiner finds, and the Appellants do not dispute, that the process pH and temperature disclosed in Eguchi step 1 “clearly overlap” the pH and temperature requirements of claim 5. Ans. 3. Based on this overlap, the Examiner finds that the product prepared in step 1 of Eguchi’s process (i.e., a yeast autolysate) will inherently have a dry solids ratio as recited in claim 1. Id. at 8. “Where, as here, the claimed and prior art products . . . are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the 5 KR 2001095724 A, published November 7, 2001. 6 Examiner’s Answer dated December 21, 2012. Appeal 2013-004721 Application 12/667,980 4 characteristics of his claimed product.” See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). In this case, the Appellants do not make such a showing. Instead, the Appellants argue that “Eguchi . . . is directed to a yeast extract, not a yeast autolysate” as recited in claim 1. App. Br. 15. The Appellants argue that the yeast autolysate prepared in step 1 of Eguchi is, at most, an intermediary product. Reply Br. 4, 5; see also Reply Br. 7 (“Appellants respectfully submit that the Office is correct that Eguchi first autolyzes yeast to produce an intermediary yeast autolysate.”).7 Claim 1 recites a product, i.e., a yeast autolysate, but does not specify a use for that product. Therefore, claim 1 reads on any yeast autolysate having a dry solids ratio and an amount of 5´-GMP within the claimed ranges regardless of its use. Cf. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558 (Fed. Cir. 1995) (claim drawn to a lubricating oil composition “reads on any product at any time that contains the claimed proportions of ingredients”). Eguchi discloses step(s) for preparing a yeast autolysate.8 See Eguchi, col. 2, ll. 9–13, 44–53. Although the yeast autolysate is subsequently used to prepare a yeast extract, the yeast autolysate disclosed in Eguchi is, nonetheless, a distinct product. See Tr. 5:23–6:2 (pointing out that the yeast autolysate disclosed in Eguchi “is recognized as a distinct material”).9 Based on the record before us, the properties of that distinct product are the same or substantially the same as products within the scope of claim 1. For this reason, claim 1 reads on the yeast autolysate disclosed in Eguchi. 7 Reply Brief dated February 19, 2013. 8 The Appellants do not direct us to any error in the Examiner’s finding that Eguchi “teaches adding 5’-nucleotides to the autolysate product.” Ans. 11; see also Eguchi, col. 2, ll. 9–20 (disclosing that steps 2-5 may be performed “in any convenient order”). 9 Transcript of the November 4, 2014 oral hearing. Appeal 2013-004721 Application 12/667,980 5 As for claim 5, the Appellants argue that “the cited art does not teach or suggest, at least claimed process step (a) of ‘subjecting yeast to autolysis at pH 4‒ 7.’” App. Br. 19. The Appellants argue that Feuillat teaches away from the claimed pH range “because Feuillat makes it clear that a pH of 3 is required” and “Eguchi and Harada cannot remedy the deficiencies of Feuillat, as each relates to yeast extracts and not autolysates.” Id. In the rejection on appeal, the Examiner does not propose modifying the pH disclosed in Feuillat.10 Rather, the Examiner finds that Eguchi prepares a yeast autolysate according to the conditions recited in step (a) of claim 5. See Ans. 10 (“Eguchi teaches incubating yeast cells at pH 5‒7 at 30-60 C and allowing the autolysis.”); Id. at 16 (“Subjecting the yeast to autolysis at pH 5-7 at 30‒60C is taught by Eguchi who teaches how to prepare a yeast autolysate.”). As discussed above, the yeast autolysate prepared under these conditions is a distinct product. On the present record, that product falls within the scope of claims 1 and 5.11 For the reasons set forth above, the § 103(a) rejection of claims 1, 3–9, and 16–21 is sustained.12 2. Rejection (2) The Appellants do not direct us to any error in the Examiner’s findings of fact or conclusions of law as to Choi. Rather, the Appellants argue that “Choi does 10 The Examiner relies on Feuillat to establish that it would have been obvious to one of ordinary skill in the art to dry the yeast autolysate disclosed in Eguchi. Ans. 5, 8, 13, 16. 11 The separation step disclosed in Eguchi is performed after the yeast autolysate has been prepared. See Eguchi, col. 2, ll. 16–17; see also Reply Br. 7 (“Eguchi is clear that the yeast autolysate intermediate taught therein is subjected to a solid/liquid separation step to remove the soluble components from the autolysate intermediate, in order to derive the final end product of a yeast extract.”). 12 The Appellants do not present any arguments in support of the separate patentability of claims 3, 4, 6–9, and 16–21. Appeal 2013-004721 Application 12/667,980 6 not remedy the deficiencies of the previously discussed references of Eguchi, Feuillat, and Harada.” App. Br. 20. For the reasons discussed above, there are no deficiencies in Eguchi, Feuillat, or Harada in the rejection of claims 1 and 5 that require curing by Choi. Therefore, the § 103(a) rejection of claim 11 is also sustained. C. DECISION The decision of the Examiner 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). 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