Ex Parte Sagi et al

Board of Patent Appeals and Interferences

Feb 2, 2010

10477829 (B.P.A.I. Feb. 2, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte NOBUO SAGI, TADAYUKI OKADA,
and MASAYUKI FUKAZAWA
__________

Appeal 2009-013318
Application 10/477,829
Technology Center 1600
__________

Decided: February 02, 2010
__________

Before ERIC GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134 involving claims to methods
for enzymatic interesterification of fats or oils. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.

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Statement of the Case
Background
“Conventionally, a fat or oil, and a fatty acid or its ester with a
monohydric alcohol . . . are subjected to enzymatic interesterification to
convert triglycerides into a specific triglyceride molecular species and
increase its concentration, thereby improving characteristic properties of the
fat or oil” (Spec. 1, ll. 7-13). According to the Specification, “when a fatty
ester is used as a source of an acyl group, a reaction system can be made up
at a not so high temperature without introduction of an organic solvent and it
is very advantageous from the industrial viewpoint” (Spec. 3, ll. 11-15).
The Claims
Claims 1-4 are on appeal. Claim 1 is representative and reads as
follows:
1. An enzymatic method of interesterification of a fat or oil,
comprising performing enzymatic esterification of a reaction substrate
comprising a fat or oil (triglycerides), a fatty acid and a fatty ester,
wherein the acid value of the reaction substrate is 8 to 30.

The prior art
The Examiner relies on the following prior art references to show
unpatentability:

Sawamura et al. US 4,985,358 Jan. 15, 1991
Kokusho et al. US 5,190,868 Mar. 2, 1993
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The issue
The Examiner rejected claims 1-4 under 35 U.S.C. § 103(a) as
obvious over Kokusho and Sawamura (Ans. 4-6).
The Examiner finds that “Kokusho et al. teach ‘an interesterification
of a glyceride oil or fat by treating such an oil or fat in the presence of a fatty
acid or fatty acid ester’ (col 3, lines 55-60)” (Ans. 5). The Examiner
acknowledges that “Kokusho et al. does not teach the importance of the AV
of the substrate (Ans. 5). The Examiner finds that “Sawamura et al. taught
that when ‘the mixture of fatty acids and fatty acid esters is the same as that
of the glyceride fat or oil star[t]ing material, in general the AV should be not
more than 15, preferable, not more than 8’ (col 3, lines 58-61)” (Ans. 5).
The Examiner concludes that it would have been obvious to optimize the
interesterification method of Kokusho “because Sawamura teaches the
advantage of both an AV in the range of 8-15 . . . in a lipase interestification
[sic, interesterification] process” (Ans. 6).
Appellants argue that “the Examiner has misunderstood the teachings
of Sawamura et al.” (App. Br. 10). Appellants argue that the passage cited
by the Examiner from Sawamura “is not referring to the acid value of the
reaction substrate as a whole, but rather to the acid value of only the fatty
acids and fatty acid esters, prior to mixing with the fat or oil” (App. Br. 10).
Appellants argue that “[s]ince the reaction substrate of Sawamura et al. is
prepared by mixing safflower oil and methyl stearate at a ratio of 1:1, the
acid value of the reaction substrate is diluted to about one half of the starting
material, i.e. about 5” (App. Br. 11).
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In view of these conflicting positions, we frame the obviousness issue
before us as follows:
Have Appellants demonstrated that the Examiner erred in concluding
that Sawamura suggests the use of an acid value of 8 to 30 in
interesterification reactions such as those of Kokusho?

Findings of Fact (FF)
1. Kokusho teaches “a process for the interesterification of
glyceride oil or fat by treating such oil or fat in presence of a fatty acid or
fatty acid ester or different glyceride oil or fat” (Kokusho, col. 3, ll. 54-57).
2. Kokusho teaches that “the same alkaline high molecular weight
lipases as used in the above batch process of interesterification are enzymes
that are very suitable to apply to the continuous process of
interesterification” (Kokusho, col. 3, ll. 27-30).
3. Kokusho teaches that “if a substrate material is continuously
passed together with a constant supply of trace water that is necessary for the
reaction across a reactor packed with an alkaline high molecular weight
lipase preparation, interesterification proceeds at a high rate for a prolonged
duration of time without requiring any dehydration” (Kokusho, col. 3, ll. 31-
37).
4. Sawamura teaches that the:
desired AV of a mixture of fatty acids and fatty acid esters
contained in a mixture of the starting materials of the ester
interchange reaction may vary depending upon the
temperature of the ester interchange reaction and the mixing
ratio of the glyceride fat or oil starting material and the
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mixture of fatty acids and fatty acid esters, and can not be
defined uniformly.

(Sawamura, col. 3, ll. 47-53).
5. Sawamura teaches that “in general, when the reaction
temperature is higher, or the mixing ratio of the mixture of fatty acids and
fatty acid esters to the glyceride fat or oil is lower, a higher AV is
acceptable” (Sawamura, col. 3, ll. 54-57).
6. Sawamura teaches that “when the reaction temperature is 40°C
and the amount of the mixture of fatty acids and fatty acid esters is the same
as that of the glyceride fat or oil starting material, in general, the AV should
be not more than 15, preferably, not more than 8” (Sawamura, col. 3, ll. 57-
61).
7. Sawamura teaches that “[w]hen the AV is higher than 15,
crystals may be precipitated in the mixture of the starting materials of the
ester interchange reaction, which results in clogging of an immobilized
enzyme bed or decrease in reactivity unless a solvent is used” (Sawamura,
col. 3, ll. 62-66).
8. Sawamura teaches that “[w]hen the AV becomes not more than
8, isomerization during distillation hardly occurs, which results in a best
quality or a best yield of the triglyceride fat or oil obtained from the reaction
mixture of the ester interchange reaction” (Sawamura, col. 3, l. 66 to col. 4,
l. 2).
Principles of Law
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
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(2) the level of ordinary skill in the art; (3) the differences between the
claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has emphasized that “the [obviousness] 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.” KSR Int'l v.
Teleflex Inc., 550 U.S. 398, 418 (2007).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
Id. at 416. “If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability.” Id. at 417. As noted by the
Court in KSR, “[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton.” 550 U.S. at 421.
Moreover, as our reviewing court stated in Peterson:
In cases involving overlapping ranges, we and our
predecessor court have consistently held that even a slight
overlap in range establishes a prima facie case of
obviousness …. We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one
skilled in the art would have expected them to have the same
properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985).

In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).

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Analysis
Kokusho teaches an enzymatic method of interesterification of a fat or
oil which comprises performing enzymatic esterification of a reaction
substrate comprising a fat or oil, a fatty acid and a fatty ester (FF 1-3). The
Examiner acknowledges that “Kokusho et al. does not teach the importance
of the AV of the substrate” (Ans. 5). The Examiner relies upon Sawamura
to reach the claimed AV (acid value) of 8 to 30, since Sawamura teaches that
“when the reaction temperature is 40°C. and the amount of the mixture of
fatty acids and fatty acid esters is the same as that of the glyceride fat or oil
starting material, in general, the AV should be not more than 15, preferably,
not more than 8” (Sawamura, col. 3, ll. 57-61; FF 6).
Appellants dispute this interpretation of Sawamura, arguing that “[i]t
is clear, based upon the context of the paragraph as a whole, that the
discussion regarding AV relates to the mixture of the fatty acids and fatty
acid esters, i.e., the starting material” (App. Br. 13). Appellants argue that
“[t]his is distinct from the reaction substrate. Accordingly, in the teachings
of Sawamura et al., the AV of the reaction substrate would be halved” (App.
Br. 13). Appellants conclude that “Sawamura et al. teach that the acid value
of the reaction substrate should be not more than 7.5, preferably not more
than 4. This value is clearly outside the requirements of Appellants’ claims”
(App. Br. 11).
In our view, Sawamura’s discussion of the desired AV at columns 3
and 4 is ambiguous. Sawamura does not clearly indicate whether the desired
AV values refer to the starting material or to the complete reaction substrate
(see FF 5-8). Accordingly, since Sawamura is an ambiguous reference, we
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do not find it appropriate to rely upon Sawamura to teach a range of 8 to 15
for the AV. See, e.g., In re Turlay, 304 F.2d 893, 899 (CCPA 1962).
However, Appellants do not dispute, and in fact expressly recognize,
that Sawamura “teach that the acid value of the reaction substrate should be
not more than 7.5” (App. Br. 11). Further, as the Examiner found (Ans. 8),
Sawamura expressly recognizes that the acid value is a result effective
variable, noting that the:
desired AV of a mixture of fatty acids and fatty acid esters
contained in a mixture of the starting materials of the ester
interchange reaction may vary depending upon the
temperature of the ester interchange reaction and the mixing
ratio of the glyceride fat or oil starting material and the
mixture of fatty acids and fatty acid esters, and can not be
defined uniformly.

(Sawamura, col. 3, ll. 47-53; FF 4).
Thus, the question before us is whether Sawamura’s teaching an acid
value of 7.5 under particular conditions and that acid values are results
effective variables renders the acid value range of 8 to 30 in Claims 1 and 3
obvious. In Peterson, the court found that “[w]e have also held that a prima
facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties”. In re Peterson, 315
F.3d 1325, 1329 (Fed. Cir. 2003). Here, the acid value of 7.5 in Sawamura
and 8 in Claims 1 and 3 do not overlap, but are close enough to reasonably
conclude that the skilled artisan would have expected them to have the same
properties.
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In our opinion, it would have been obvious to persons of ordinary skill
in the art at the time the invention was made to identify optimum acid values
at particular temperatures and fatty acid mixtures in an interesterification
reaction which would reasonably encompass at least the lower end value of
8 of the acid value range of Claims 1 and 3. The discovery of an optimum
value of a results-effective variable in a known process is normally obvious.
In re Antonie, 559 F.2d 618, 620 (CCPA 1977); In re Aller, 220 F.2d 454,
456 (CCPA 1955). Appellants have provided no evidence or argument to
rebut the finding that the acid value is a results-effective variable or to
demonstrate unexpected results with the claimed acid value range.

Conclusion of Law
Appellants have not demonstrated that the Examiner erred in concluding that
Sawamura suggests the use of an acid value of 8 to 30 in interesterification reactions
such as those of Kokusho.
SUMMARY
In summary, we affirm the rejection of claim 1 under 35 U.S.C.
§ 103(a) over Kokusho and Sawamura. Pursuant to 37 C.F.R.
§ 41.37(c)(1)(vii)(2006), we also affirm the rejection of claims 2-4 as these
claims were not argued separately.

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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)(2006).
AFFIRMED

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