Ex Parte Parthasarathy

Board of Patent Appeals and Interferences

Feb 29, 2008

10271902 (B.P.A.I. Feb. 29, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MUKUND PARTHASARATHY
____________

Appeal 2008-0742
Application 10/271,902
Technology Center 1700
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Decided: February 29, 2008
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Before EDWARD C. KIMLIN, CHUNG K. PAK, 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 1-7. We have jurisdiction under 35 U.S.C. § 6.
Appeal 2008-0742
Application 10/271,902

Appellant’s invention relates to a dry pet food. An
understanding of Appellant’s invention can be gleaned from
independent claim 1 which appears below:
1. A dry pet food comprising less than 15%, by weight,
water and thermal-stable α-amylase and having a bulk
density above about 25 pounds per cubic foot.

The Examiner relies on the following references in rejecting
the appealed subject matter:

Coffee 4,190,679 Feb. 26, 1980
Spradlin 4,393,085 Jul. 12, 1983
Marino 4,418,086 Nov. 29, 1983
Priegnitz 4,540,585 Sep. 10, 1985
Tonyes 4,713,250 Dec. 15, 1987

Claims 1-7 stand rejected under 35 U.S.C. § 103(a) as
follows:
I. Claims 1-3 stand rejected over Priegnitz in view of Coffee.
II. Claims 4-7 stand rejected over Priegnitz, Coffee and further
in view of Marino and Tonyes or Spradlin.
We have thoroughly reviewed each of Appellant’s arguments
for patentability. However, we are in complete agreement with the
Examiner that the claimed subject matter would have been obvious
to one of ordinary skill in the art within the meaning of § 103 in
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Application 10/271,902

view of the applied prior art. Accordingly, we will sustain the
Examiner's rejections. 1
The Examiner contends that Priegnitz describes a pet food
product comprising the claimed enzyme and having the claimed
density. The Examiner recognizes that Priegnitz does not
characterize the pet food product as a "dry" pet food product
comprising water that is less than 15% by weight. (Answer 4). The
Examiner contends that Coffee describes the advantages of a dry pet
food product. The Examiner concludes that it would have been
obvious to a person of ordinary skill in the art to formulate a pet
food product comprising a moisture content of less than 15% to
obtain the disclosed advantages of a dry pet food. (Answer 4).
Appellant contends that the Examiner has failed to establish a
prima facie case of obviousness in the rejection because there is no
teaching or suggestion to combine the cited references to arrive at
the present claims and, even if combinable, the cited references fail
to disclose or suggest every element of the present claims. (Br. 12-
15).
The issue presented is as follows:
Has the Examiner correctly determined that a person of
ordinary skill in the art would have found it obvious to have
formulated a pet food product, having a moisture content of less than
15%, with α-amylase, within the meaning of 35 U.S.C. § 103? On
this record, we answer this question in the affirmative.

1 Appellant has grouped the arguments for claims 1-3 together and
claims 4-7 together. We select claims 1, 4 and 5 as representative.
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Application 10/271,902

Under 35 U.S.C. § 103, the factual inquiry into obviousness
requires a determination of: (1) the scope and content of the prior
art; (2) the differences between the claimed subject matter and the
prior art; (3) the level of ordinary skill in the art; and (4) secondary
considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). “[A]nalysis [of whether the subject matter of a claim would
have been obvious] 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.” KSR Int’l Co. v. Teleflex,
Inc., 127 S. Ct. 1727, 1740-41 (2007) quoting In re Kahn, 441 F.3d
977, 988 (Fed. Cir. 2006); see also DyStar Textilfarben GmbH &
Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed.
Cir. 2006)(“The motivation need not be found in the references
sought to be combined, but may be found in any number of sources,
including common knowledge, the prior art as a whole, or the nature
of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390 (CCPA
1969)(“Having established that this knowledge was in the art, the
examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common
sense of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference.’”); In re Hoeschele, 406
F.2d 1403, 1406-07 (CCPA 1969)(“[I]t is proper to take into account
not only specific teachings of the references but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom . . .”).
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Application 10/271,902

Priegnitz invention relates to food products and more
particularly to food products of an amylaceous character containing
heat stable α-amylase which is added in amounts sufficient to
maintain or improve the soft texture after a heat treatment. (Col. 1,
ll. 9-14).
Priegnitz discloses hardness and change in texture is
inherently undesirable in most food products, and it thus becomes
clearly desirable to prevent this change in texture or reduce the
texture deterioration in a stored food. (Col. 1, ll. 31-34).
Priegnitz discloses to avoid texture deterioration in food
products, α-amylase is added to the food product in quantities that
would have assured a sufficiently high activity level after processing
to maintain or improve the texture of the food product. (Col. 2, ll.
50-55). Priegnitz also discloses that another advantage in adding α-
amylase is an improvement in palatability upon storage. (Col. 4, ll.
18-22).
Priegnitz discloses processing of the food product depends on
temperature and time, which must be sufficient to cook the food and
gelatinize the starch, yet insufficient to inactivate the α-amylase. In
other words, the α-amylase must be heat stable. Priegnitz discloses,
[p]rocessing temperatures of food
containing α-amylase can range up to 150o C for
short periods of time with the effective amounts
of the added α-amylase remaining active.
However, it is more preferable to operate at
process temperatures between 75o C and 110o C,
which is an effective temperature range for
achieving most food processing and
stabilization. It is critical that the α-amylase not
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Application 10/271,902

be totally or substantially inactivated by such
conditions as overly high temperatures or long
retention times during processing.
(Col. 3, ll. 20-37).
Priegnitz discloses that suitable residence time for the food
product ranges from 5 seconds to 15 minutes. (Col. 3, ll. 38-42).
Priegnitz also discloses that the rate and degree of softening of
the food is dependent upon the activity of the enzyme used, the
presence and amount of free moisture, enzyme, chloride ion,
calcium, the pH and temperature of the product. (Col. 3, ll. 3-5).
Priegnitz discloses α-amylase is active in a pH range of about 2 to
11 with a moisture content of over 10-15%. (Col. 3, ll. 11-13).
Priegnitz further discloses that when stored for the same
period of time under the same conditions food products are at least 5
percent softer than the extruded foods without α-amylase added.
Food products without the α-amylase added experienced a staling or
hardening effect, while the food products with the additional α-
amylase were at least as soft as the original texture. (Col. 3, ll. 49-
57).
Appellant’s principal contention is that the cited prior art does
not describe or suggest the use of a heat stable α-amylase enzyme in
a dry pet food. In support of this position Appellant contends that
Priegnitz is directed to a semi-moist or wet pet food and teaches
away from a dry pet food. (Br. 12-15). Appellant also contends that
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Application 10/271,902

Priegnitz discourages the uses of α-amylase in food products
containing less than 15% moisture. (Reply Br. 3).2
Priegnitz discloses the concept of adding α-amylase enzyme is
applicable to any type of food, preferably to semi-moist foods. (Col.
3, ll. 58-60). Priegnitz discloses the α-amylase utilized must
withstand the processing conditions sufficient to cook the food
product and gelatinize the starch, without inactivating α-amylase.
(Col. 3, ll. 20-37). In an obviousness analysis, we consider “not
merely what the references disclose, but whether a person of
ordinary skill in the art, possessed with the understandings and
knowledge reflected in the prior art, and motivated by the general
problem facing the inventor, would have been led to make the
combination recited in the claims.” In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). In the present case, a person of ordinary skill in
the art would have recognized from the teachings of Priegnitz that α-
amylase could have been added to any type of food product with the
expectation that α-amylase would have had some activity in an
environment comprising a moisture content within 10-15%, a
product identified by Appellant as “dry”. Moreover, based on the
teachings of Priegnitz, we find that a person of ordinary skill in the
art would have been led to add α-amylase to any type of food
product to obtain an improvement in palatability upon storage.
Regarding claims 4-7, Appellant contends that the claimed
invention requires water in the range of from 8 to about 11% by

2 Appellant has not presented arguments directed to the bulk density
of the food product.
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Application 10/271,902

weight and further that claims 5-7 require the α-amylase to be added
before extrusion. (Br. 16-19). As discussed above, we find that
Priegnitz evidences the obviousness of adding α-amylase to a food
product comprising a moisture content within 10-15%. Priegnitz
also discloses the addition of α-amylase to the food product prior to
extrusion.
The Examiner has added additional prior art references to the
combination of Priegnitz and Coffee to address the specific
limitations of the claims. Appellant has not specifically argued that
the additional cited prior art references do not teach the features
identified by the Examiner and would not have been suitable for
combining the teachings thereof with the teachings of Priegnitz and
Coffee.
For the foregoing reasons and those presented in the Answer,
the rejections of claims 1-7 under 35 U.S.C. § 103(a) are affirmed.
As a final point with respect to the § 103 rejections, we note that
Appellant bases no argument upon objective evidence of
nonobviousness, such as unexpected results.
ORDER
The rejection of claims 1-7under 35 U.S.C. § 103 (a) is
affirmed.
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Application 10/271,902

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).

AFFIRMED

tf/ls

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