Ex Parte Roger et al

Patent Trial and Appeal Board

Apr 19, 2018

13514518 (P.T.A.B. Apr. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/514,518 06/07/2012
29157 7590
K&L Gates LLP-Chicago
P.O. Box 1135
CHICAGO, IL 60690
04/23/2018
FIRST NAMED INVENTOR
Olivier Yves Roger
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
3712036-01611 7732
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/23/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER YVES ROGER,
CHRISTELLE SCHAFFER-LEQUART, and
ANNE-SOPHIE WA VREILLE
Appeal2017-006614
Application 13/514,518
Technology Center 1700
Before JEFFREY T. SMITH, JULIA HEANEY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18, and 20-
23.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 In this Decision, we refer to Appellants' Specification filed June 7, 2012
("Spec."), the Final Office Action dated April 6, 2016 ("Final Act."), the
Advisory Action dated October 3, 2016 ("Adv. Act."), the Appeal Brief filed
December 2, 2016 ("Appeal Br."), the Examiner's Answer dated February 9,
2017 ("Ans."), and the Reply Brief filed March 14, 2017 ("Reply Br.").
2 Appellants identify the real party in interest as Nestec S.A. Appeal Br. 2.
3 The Examiner incorrectly includes claims 5, 8, and 19 in the listing of
pending and rejected claims in the appealed application. Final Act. 1
Appeal2017-006614
Application 13/514,518
The subject matter of the claims on appeal relates to a hydrolyzed
whole grain composition, and a food product that includes the hydrolyzed
whole grain composition. Spec. 1, 11. 4--7, 3, 1. 15 - 4, 1. 7, 4:20-21.
Claim 1, reproduced below from the Claims Appendix of the Appeal Brief,
is illustrative of the claims on appeal.
1. A hydrolyzed whole grain composition comprising:
an alpha-amylase or fragments thereof showing no
hydrolytic activity towards dietary fibers when in an active
state,
the hydrolyzed whole grin composition has a
substantially intact beta-glucan structure relative to a starting
material and at least one characteristic selected from the group
consisting of:
a content of glucose of at least 0.25% by weight of the
hydrolysed whole grain composition on a dry matter basis,
a maltose to glucose ratio below 144: 1 by weight of the
composition,
a maltose to fructose ratio below 230: 1 by weight of the
composition, and
a maltose to glucose+fructose ratio below 144: 1 by
weight of the composition;
a protease or fragment thereof, at a concentration of
0.001-5% by weight of the total whole grain content, the
protease or fragment thereof showing no hydrolytic activity
toward dietary fibers when in an active state; and
0.1-20% dietary fibers by weight of the hydrolyzed
whole grain composition, the dietary fibers comprising soluble
fibers and insoluble fibers.
Appeal Br. 17 (Claims App.).
("Office Action Summary"). Claims 5, 8, and 19 were canceled in a
Response to Final Office Action filed September 1, 2016.
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Application 13/514,518
DISCUSSION
The Examiner maintains the rejection of claims 1, 3, 4, 6, 7, 9, 11, 12,
14, 15, 17, 18, and 20-23 4 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Mitchell et al. (US 2007 /0014892 Al, published
January 18, 2007) ("Mitchell") in view of Conrad (US 4,282,319, issued
August 4, 1981 ), and Bunzel et al., "Diferulates as structural components in
soluble and insoluble cereal dietary fibre," 81 J. Sci. Food Agric. 653---660
(2001) ("Bunzel"). 5 Final Act. 2; Ans. 2.
Appellants' arguments focus on limitations that appear in claim 1.
Appeal Br. 7-14. Although the group of claims 12, 14, and 22, and
claims 15, 17, 18, 20, and 23 are presented in the Appeal Brief under
separate headings, Appellants do not provide any substantively separate
arguments regarding those dependent claims, and instead rely on the
arguments presented regarding claim 1. Id. at 14--15. Thus, we select claim
1 as representative of the rejected claims, and the remaining claims will
stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
4 The Examiner incorrectly includes claims 5, 8, and 19 in the statement of
the rejection. Ans. 2. Claims 5, 8, and 19 were canceled in the Response to
Final Office Action filed September 1, 2016, that was entered into the record
by the Examiner in the Advisory Action dated October 3, 2016. Adv. Act. 2.
5 The Examiner failed to include the Pagan et al. "Effect of drying method
and assay methodology on detergent fiber analysis in plants containing
condensed tannins," 154 Animal Feed Sci. Tech. 119-124 (2009) ("Pagan")
in the statement of the rejection. On this record, we deem this omission as a
harmless error. The Examiner has provided a discussion of this reference in
each of the Final Action, Advisory Action, and the Answer. Appellants have
provided a substantive discussion of this reference in the principal brief.
App. Br. 7-9.
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Application 13/514,518
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence
supports the Examiner's conclusion that the subject matter of Appellants'
claims is unpatentable over the applied prior art. We sustain the Examiner's
§ 103(a) rejection essentially for the reasons set out by the Examiner in the
Final Office Action and the Answer. We add the following.
The Examiner finds that Mitchell discloses making an aqueous slurry
and milling a whole grain rice or com product, and then subjecting the
resulting slurry to enzymatic hydrolysis via liquefaction and optionally
saccharification. Final Act. 2; Mitchell, Abstract. Liquefaction is carried
out using an alpha-amylase enzyme, for example, HT-340L from Valley
Research of South Bend, Indiana. Mitchell i-fi-144, 69 (Example 3). The
Examiner relies on Pagan, as evidence that HT-340L is used for cleaning,
and thus, is not reactive towards dietary fibers. Pagan 120, 123.
After enzymatic hydrolysis, Mitchell teaches that the resulting
composition can have a glucose content of from about 0% by weight to 70%
by weight. Mitchell i-fi-136-40. Mitchell also teaches that its composition
has a fiber content from 1 % by weight to 7% by weight of the hydrolyzed
whole grain composition. Id. i135.
The Examiner finds that Conrad teaches preparing a hydrolyzed
whole grain composition by treating the whole grain with a proteolytic
enzyme, for example 0.03 % by weight ofNeutrase, to transform water
insoluble proteins into water-soluble products, and further to treat the whole
grain with an amylase, for example an alpha-amylase, free from other
carbohydrate hydrolyzing enzymes, to form water-soluble starch products.
Final Act. 4; Conrad, Abstract, 3:5-8, 6:1-5. The Examiner finds that
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Application 13/514,518
Neutrase is "known to be inactive towards certain dietary fibers." Final
Act. 4.
In addition, the Examiner finds that Bunzel teaches using
Alcalase 2.4L, a protease, to prepare soluble and insoluble dietary fibers
from cereal grains. Final Act. 4 (citing Bunzel 654 ); see also Spec. 26, 11.
19-23 (Example 3) (disclosing that Alcalase 2.4L showed no hydrolytic
activity on either beta-glucan or arabinoxylan).
The Examiner finds that one of ordinary skill in the art would have
been led, based on Conrad and Bunzel, to modify Mitchell's process to
include a protease that is inactive towards dietary fibers to control the
viscosity of the slurry as well as improve the nutritional quality of the
product, while leaving the beta-glucan structure intact in the whole grain
hydrolysate. Final Act. 5.
Appellants argue that Mitchell does not disclose or suggest an alpha-
amylase "showing no hydrolytic activity towards dietary fibers when in an
active state,"6 such that the hydrolyzed whole grain composition "has a
substantially intact beta-glucan structure relative to the starting material," as
required by independent Claim 1. Appeal Br. 7-10. Specifically,
Appellants argue that the Examiner has not provided sufficient evidence to
establish that alpha-amylase HT-340L, as disclosed in Mitchell, shows "no
hydrolytic activity towards dietary fibers when in an active state," such that
Mitchell's hydrolyzed whole grain composition "has a substantially intact
beta-glucan structure relative to a starting material." Id. at 7-9; Reply Br. 2-
4.
6 "No hydrolytic activity" is defined in Appellants' Specification as
encompassing "up to 5% degradation of dietary fibers." Spec. 9, 11. 22-23.
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Application 13/514,518
Appellants' argument is not persuasive of reversible error. The
Examiner has provided sufficient evidentiary support and technical
reasoning to establish that alpha-amylase HT 340-L would not hydrolyze
dietary fibers and would not hydrolyze beta glucan. The Examiner finds that
Mitchell teaches a whole grain milk product containing substantially all the
nutritional components of a whole grain, e.g., fiber, protein, and fat, without
the bitterness associated with the whole grain. Ans. 7 (citing Mitchell,
Abstract, i-fi-f 19, 3 5 (Table 1) (disclosing a whole grain milk product having
a fiber content from about 1 %----7% by weight of the hydrolyzed
composition), 57 (disclosing a whole grain powder having substantially all
the nutrition of the whole grain (including the bran layer))). Based on this
disclosure in Mitchell, the Examiner determines that one of ordinary skill in
the art would understand that the alpha-amylase used in Mitchell's method
does not hydrolyze dietary fibers, including beta-glucan. Ans. 7.
In addition, the Examiner relies on Pagan as evidence that alpha-
amylase HT-340L, as disclosed in Mitchell, does not affect dietary fibers.
Ans. 6. Pagan discloses a method for evaluating fiber concentration of
plants using a detergent fiber analysis. Pagan 119----120. Pagan includes
Validase HT 340-L in its detergent to remove starch contamination. Id. at
123. Based on Pagan's disclosure, the Examiner reasons, and Appellants do
not dispute, that one of ordinary skill in the art would understand that
HT 340-L is unreactive to fibers because otherwise it would not have been
used in Pagan's quantification experiments. Compare Ans. 6-7, with Reply
Br. 3. The Examiner also finds that the alpha-amylase HT 340-L is known
as an enzyme capable of randomly hydrolyzing the interior of alpha-1-4-
glycosidic linkages in starch. Ans. 7----8 (citing information from Valley
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Application 13/514,518
Research, Inc., the manufacturer of HT 340-L). The Examiner explains, and
Appellants do not dispute, that the beta-glucan structures are very different
structures in which the bonds between the monomers in the polymer are in
beta-configuration, and thus, there is a reasonable basis for believing that
alpha-amylase HT 340-L would not hydrolyze a beta-glucan structure.
Compare Ans. 7, with Reply Br. 3. Thus, on this record, the Examiner has
provided sufficient evidentiary support and technical reasoning to shift the
burden to Appellants to show that alpha-amylase HT 340-L would hydrolyze
dietary fibers and would hydrolyze beta glucan. Appellants, however, do
not direct us to such a showing.
Appellants argue that the Examiner has not provided evidence
demonstrating that at the time of the invention, alpha-amylase HT-340L was
"known to be unreactive towards dietary fibers." Appeal Br. 9 (emphasis
added); see also Reply Br. 4. To support this contention, Appellants rely on
the Declaration under 37 C.F.R. § 1.132 filed September 1, 2016
("Declaration II"). Declaration II repeats Appellants' contention in the
Briefs that there is no evidence to demonstrate that it was known, at the time
of the invention, that alpha-amylase HT-340L was unreactive towards
dietary fibers, and further contends that the obviousness rejection is
improper "unless this characteristic of the enzyme and the advantages of this
characteristic were known at the time of the claimed invention." Deel. i-f 7.
Appellants' argument and the statements of the declarant, one of the
inventors of the present application, are legally incorrect. Inherency may
supply a missing claim limitation in an obviousness analysis when "the
limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art." See PAR
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Application 13/514,518
Pharm., Inc. v. TWI Pharms., Inc., 113 F.3d 1186, 1195-96 (Fed. Cir. 2014).
"The fact that appellant has recognized another advantage which would flow
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise have been obvious."
Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985); see also In re Spada,
911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition
and its properties are inseparable.).
Appellants argue that Mitchell, Conrad, and Bunzel do not disclose or
suggest a protease showing "no hydrolytic activity towards dietary fibers
when in an active state," such that the hydrolyzed whole grain composition
"has a substantially intact beta-glucan structure relative to the starting
material," as required by independent Claim 1. Appeal Br. 10-13. To
support this argument, Appellants rely on the Declaration under 37 C.F.R.
§ 1.132 filed August 12, 2015 ("Declaration I"). According to Appellants,
Declaration I demonstrates that Neutrase, as disclosed in Conrad, actually
hydrolyzes beta-glucan. Appeal Br. 12 (citing Deel. i-f 7, Figs. 1-2).
Therefore, Appellants contend that contrary to the Examiner's finding,
Neutrase is not inactive toward dietary fibers. Appeal Br. 12.
Appellants' arguments are not persuasive of reversible error. Conrad
is not limited to using Neutrase. 7 Conrad teaches a process for preparing
hydrolyzed products from whole grain that includes an enzymatic treatment
with a protease and an amylase so that the essential, nutritionally important
proteins of the grain are present in a water-soluble state together with the
7 Because Declaration I in the Image File Wrapper is illegible, we presume
that Appellants and the Examiner have accurately interpreted the
Declaration's content.
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Application 13/514,518
water-soluble starch hydrolysis products. Conrad, Abstract, 1 :38--44. As
the Examiner explains, because Mitchell's process is modified in the
proposed rejection, and Mitchell teaches that dietary fibers remain intact in
the nutritional composition, one of ordinary skill in the art would have been
led, based on Conrad, to use a protease that is not active towards the dietary
fibers, including beta-glucan, in an active state, such as Alcalase 2.4. Las
disclosed in Bunzel, in Mitchell's process to obtain a product where the
nutritionally important proteins and starch are present in a water soluble
state, making them more digestible and more nutritionally available to the
human digestive system. Ans. 11, 13; see also Spec. 26, 11. 19-23
(Example 3) (disclosing that Alcalase 2.4L showed no hydrolytic activity on
either beta-glucan or arabinoxylan). Appellants do not identify error in this
reasomng.
Accordingly, based on the totality of the appeal record, including due
consideration of Appellants' arguments, we determine that the
preponderance of the evidence weighs most heavily in favor of obviousness
of the subject matter recited in claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18,
and 20-23 within the meaning of 35 U.S.C. § 103(a).
DECISION
For the above reasons, the rejection of claims 1, 3, 4, 6, 7, 9, 11, 12,
14, 15, 17, 18, and 20-23 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).
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Application 13/514,518
AFFIRMED
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