Ex Parte Peterson

Board of Patent Appeals and Interferences

Sep 29, 2010

10896624 (B.P.A.I. Sep. 29, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/896,624 07/22/2004 Devin G. Peterson PST-14702/36 8732
25006 7590 09/29/2010
GIFFORD, KRASS, SPRINKLE,ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
09/29/2010 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DEVIN G. PETERSON
____________________

Appeal 2009-006504
Application 10/896,624
Technology Center 1700
____________________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL1
I. STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision to reject claims 12 and 16-23. We have jurisdiction under
35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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We AFFIRM.
Appellant’s invention relates to methods for controlling the formation
of flavor/off-flavor compounds in food and beverages during storage and/or
thermal processing (Spec. 1:10-12). The method involves at least partially
blocking the Maillard reaction pathway in the food by, for instance, using a
radical scavenger material such as a flavonoid (Spec. 5: 14-18). The
flavonoid is also said to act by scavenging pyrazine radicals in the food
(Spec. 5:18 to 6:2). The flavonoid compounds are polyphenolic compounds
such as epicatechin (EPC) and epigallocatechin (ECGC) (Spec. 10:15-18).
Claims 12 and 18 are illustrative:
12. A method for controlling the development of flavor
compounds during the processing or storage of foods, said
method comprising the step of:
at least partially blocking a Maillard reaction pathway in
said food.
18. A method for controlling the development of flavor
compounds during the processing or storage of foods, said
method comprising the step of:
scavenging pyrazine radicals in said food.

The following rejections are under review:
1. The rejection of claims 12, 16-19, and 21-23 under 35 U.S.C. § 112,
¶ 1 as lacking enablement for the full scope of the claims; and
2. The rejection of claims 12 and 16-23 under 35 U.S.C. § 102(b) as
anticipated by O’Connell.2

2 John E. O’Connell and Patrick F. Fox, Effects of Phenolic Compounds on
the Heat Stability of Milk and Concentrated Milk, 66 J. Dairy Res. 399-407
(1999).
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II. DISCUSSION
A. SCOPE OF ENABLEMENT
The Examiner finds that the Specification provides enablement for the
addition of flavonoids to foods, but it does not reasonably provide
enablement for any and all ways of at least partially blocking a Maillard
reaction or scavenging pyrazine radicals (Ans. 3). The Examiner points out
that the Specification is directed to adding flavonoids, specifically catechins,
to foods, and Appellants do not teach other ways to at least partially block a
Maillard reaction or scavenge pyrazine radicals, and it would require an
undue amount of experimentation, and would be unpredictable, for one
skilled in the art to attempt to find and produce other effective means for
achieving what is claimed (Ans. 3-4).
Appellant directs arguments to claims 12, 18, and 21. We, therefore,
limit our review to those claims.3 The issue is: Does the evidence support
the Examiner’s conclusion that the Specification fails to enable the ordinary
artisan to make and use the full scope of methods of claims 12, 18, and 21?
“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993). When rejecting a claim for lack of enablement, the Examiner
bears an initial burden of setting forth a reasonable explanation as to why the
Examiner believes that the scope of protection provided by that claim is not
adequately enabled by the description of the invention in the specification.
Id. at 1561-62. If the PTO meets this burden, the burden then shifts to the
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applicant to provide suitable proofs indicating that the specification is indeed
enabling. Id. at 1562.
The Specification, not the knowledge of one skilled in the art, must
supply the novel aspects of an invention in order to constitute adequate
enablement. Automotive Technologies Intern., Inc. v. BMW of North Am.,
Inc., 501 F.3d 1274, 1283 (Fed. Cir. 2007) (quoting Genentech, Inc. v. Novo
Nordisk A/S, 108 F.3d 1361, 1366 (Fed. Cir. 1997).
With respect to claim 12, Appellant contends that one of ordinary skill
in the art would be able to select materials which could function to block the
Maillard pathway in view of the teachings presented in the Specification, in
particular, the passage running from page 20 to page 23 (Reply Br. 3).
The portion of the Specification relied upon by Appellant is directed
to Example 5 and is labeled “Proposed Reactivity of Radical Scavenging
Molecules and the Maillard Reaction.” This section of the Specification
states that “[w]hile not wishing to be bound by speculation, it is believed
that the materials of the present invention act as radical scavengers and/or
inhibit steps in the Maillard reaction.” (Spec. 20:20 to 21:1.) The materials
of the invention are characterized as “proposed chemically reactive forms of
polyphenolic compounds, free radical scavengers, and/or antioxidants
flavonoids (i.e., EPC, EGCG)” (Spec. 20:19 to 21:12). Three potential
chemical properties for the compounds are listed (Spec. 21:8-12). For the
first potential chemical property (“relatively strong antioxidant property/free
radical terminator”), the Specification proposes a reaction mechanism to

3 The other rejected claims stand or fall with the claim from which they
depend.
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explain how the polyphenolic compounds (i.e, epicatechin radical) behave as
reactants in a Maillard-type flavor formation pathway (Spec. 21:13 to
23:14).
The Specification also states that “[t]he Maillard reaction is very
complex (multiple pathways)” (Spec. 3:13-14).
Claim 12 encompasses any mode of at least partially blocking a
Maillard reaction pathway in food that results in controlling the development
of flavor compounds during processing or storage. Appellant discloses one
mode of adding specific polyphenolic flavonoid compounds, but there are
potentially many other modes of accomplishing the claimed blocking. This
is particularly so given that the Malliard reaction is very complex with
multiple pathways. Moreover, that the polyphenolic flavonoid compounds
act by the mechanism described in the Specification is a mere “belief” and
Appellant, according to the Specification, does not desire to be “bound by
speculation.” Under the circumstances, we cannot say that the disclosure of
some of the characteristics, chemical properties, and possible mechanisms
disclosed for epicatechin and epigallocatechin gallate are enough to provide
enablement for every type of Maillard reaction pathway blocking
encompassed by the claims. The Examiner’s conclusion is reasonable, and
Appellant has not met the burden in rebuttal.
Claim 18 is directed to controlling the development of flavor
compounds including a step of scavenging pyrazine radicals in food.
Appellant contends that this concept is fully taught and enabled in the
Specification, citing to page 5, line 18 to page 6, line 2 and page 22, line 10
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to page 23, line 4 and the passage starting at page 20 discussed in reference
to claim 12 (Reply Br. 3).
The Specification at page 5, line 18 to page 6, line 2 merely discloses
that the scavenging may be accomplished by the addition of a radical
scavenger to the food, and that radical scavenger may be a flavonoid. Page
22, line 10 to page 23, line 4 discusses what Appellant proposes as the
reaction pathway for an epicatechin radical. Again, the Specification does
not provide guidance for each and every method of scavenging, only for
scavenging by addition of the specific flavonoid compounds disclosed in the
Specification. We conclude that the Examiner’s conclusion of non-
enablement is reasonable with respect to claim 18, and Appellant has not
met the burden in rebuttal.
Claim 21 further limits claim 18 to scavenging pyrzaine radicals in
food by adding a radical scavenger to the food wherein the radical scavenger
is a polyphenolic compound. Appellant contends the Specification includes
numerous concrete examples of polyphenolic compounds for controlling the
formation of off-flavors in food processing including epicatechin (EPC) and
epigallocatechine gallate (EGCG). The Examiner does not provide any
specific reasoning with regard to claim 21. In view of the lack of analysis
on the part of the Examiner, we agree with Appellant that the weight of the
evidence supports a conclusion of enablement with regard to claim 21.
While the evidence supports the conclusion of the Examiner with
regard to claims 12 and 18, it does not support the conclusion of the
Examiner with regard to claim 21.
B. ANTICIPATION
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In rejecting the claims as anticipated by O’Connell, the Examiner
finds that O’Connell describes adding polyphenolic compounds including
catechin, epicatechin (EPC), and epigallocatechin gallate (EGCG), to milk to
improve heat stability (Ans. 5). The Examiner finds that the claimed
blocking of the Malliard reaction pathway would inherently occur as
O’Connell uses the same components, amounts, and process steps as
Appellant (Ans. 5).
Appellant acknowledges that O’Connell describes using some of the
same catechins Appellant describes as having utility in the invention, but
argues that the practice of O’Connell’s process will not necessarily result in
the practice of the claimed invention and, in fact, O’Connell teaches away
from the use of catechins in its disclosed process (Br. 4-8).
As Appellant does not argue any claim apart from the others, we
select claim 12 as representative for deciding the issue on appeal. The issue
is whether the Examiner’s finding of inherency with regard to the at least
partial blocking of the Malliard reaction is reasonable.
O’Connell describes a process of adding phenolic compounds, such as
epigallocatechin gallate (EGCG), to skim milk and heating to 140°C and
determining the heat stability of the milk composition (O’Connell 400 under
the headings “Milk Supply” and “Heat Stability”). As illustrated by a
comparison of O’Connell’s process with that of Appellant’s Example 2, the
components, amounts, and process steps are similar to those of Appellant’s
process. In Appellant’s Example 2, samples of whole milk with differing
concentrations of EPC (0.0, 0.01, 0.1, and 0.2%) were heated to 138.3°C for
6 seconds (typical UHT processing conditions) and all three UHT milk
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samples containing EPC were significantly lower in cooked flavor compared
to the control (0.0% EPC) (Spec. 13-14).
Appellant’s broader disclosure indicates that the blocking of the
Malliard reaction occurs over a range of process conditions. The
Specification states that the method comprises adding a flavonoid compound
to food and heating the food, but that the step of heating may comprise
storing the food at temperatures ranging from ambient on upward (Spec. 5:1-
5). The invention employs an operating temperature range of about 0°C and
higher (Spec. 11:4-5). The flavonoid compound may be added before the
food is heated or after heating (Spec. 5:10). The flavonoid may be present in
an amount of up to 2% by weight of the food and in certain embodiments
comprises at least 0.2% by weight of the food (Spec. 5:10-13). The
Specification states that addition of EPC or EGCG to foods processed at
temperatures lower than 150°C may be used to limit flavor pathways (reduce
flavor generation). (Spec. 12). Moreover, at temperatures of 150°C or
higher the additives may catalyze specific flavor pathways while limiting
other flavor pathways (Spec. 12-13).
Where an examiner has reason to believe that a characteristic or
functional limitation in a claim may, in fact, be an inherent characteristic of
the prior art, the examiner possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior art does not possess the
characteristic the applicant is relying on for patentability. In re Best, 562
F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210
(CCPA 1971). An examiner’s belief is reasonable where starting materials
and processing of the prior art are so similar to those disclosed by the
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applicant that it appears that the claimed function or property would
naturally result when conducting the process as taught in the prior art. See
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990); In re King, 801 F.2d 1324,
1326 (Fed. Cir. 1986); Best, 562 F.2d at 1255.
Appellant’s Specification discloses heating to similar temperatures as
O’Connell, i.e., about 140°C, and Appellant obtains off-flavor in the control
UHT milk. Therefore, it is reasonable to conclude that similar off-flavor
components would be obtained when heating the untreated skim milk
control of O’Connell. According to Appellant, the off-flavor components
are generated by the Malliard reaction.
O’Connell adds the same polyphenolic compounds as Appellant to
milk. Therefore, there is a reasonable basis to believe that those
polyphenolic compounds would block the Malliard reaction pathway in the
same way those same compounds block the Malliard reaction pathway in
Appellant’s process because the conditions appear to be substantially similar
in O’Connell’s process as compared to Appellant’s process.
Appellant argues that the problem O’Connell addresses, i.e.,
coagulation of milk, proceeds by a much different mechanism than the
mechanism of off-flavor formation addressed by Appellant (Br. 6).
Moreover, according to Appellant, O’Connell notes that the polyphenolic
compounds have numerous reactive sites, and O’Connell uses those sites to
interact with calcium ions, not interact with other species such as active
carbonyl species and pyrazine radicals that cause off-flavor (Br. 7).
However, those facts do not negate the fact that O’Connell’s heat stability
testing process is conducted with the same or substantially similar materials
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under the same or substantially similar processing conditions as Appellant.
The similarities in components and processing supports the reasonableness
of the Examiner’s finding of inherent anticipation.
Appellant also contends that O’Connell teaches away from the use of
catechins in its disclosed process (Br. 8). But the fact is that O’Connell
expressly discloses that the heat stability procedure was followed and
O’Connell reports results for that process. Because O’Connell actually
describes conducting a process meeting the claim limitations it cannot be
said that O’Connell “teaches away.” See Celeritas Techs., Ltd. v. Rockwell
Int’l Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998) (“[T]he question whether a
reference ‘teaches away’ from the invention is inapplicable to an
anticipation analysis.”).
Appellant contends that O’Connell fails to teach, and did not discuss
or otherwise acknowledge, any problem of off-flavor formation in milk (Br.
6). However, such an acknowledgement of the problem or realization that
the Maillard reaction pathway is being blocked is not required for
anticipation where it is reasonable to believe that the blocking occurs
inherently. See In re Omeprazole Patent Litig., v. Andrx Pharms, Inc., 483
F.3d 1364, 1373 (Fed. Cir. 2007) (recognition in the prior art is not
necessary when the claimed characteristic or function is inherently present in
the prior art).
III. CONCLUSION
On the record before us, we sustain the rejection of claims 12, 16-19,
22, and 23 under 35 U.S.C. § 112, ¶ 1 as lacking enablement for the full
scope of those claims, but do not sustain the rejection of claim 21 on that
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ground. We further sustain the rejection of claims 12 and 16-23 under
35 U.S.C. § 102(b) as anticipated.
IV. DECISION
The decision of the Examiner is affirmed.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cam
GIFFORD, KRASS, SPRINKLE,
ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY MI 48007-7021