Ex Parte Saito et al

Patent Trial and Appeal Board

Aug 25, 2017

13145435 (P.T.A.B. Aug. 25, 2017)

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.
13/145,435 07/20/2011 Kenji Saito Q125664 5184
23373 7590 08/29/2017
SUGHRUE MION, PLLC
2100 PENNSYLVANIA AVENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
08/29/2017 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI SAITO
and TADAHIRO HIRAMOTO
Appeal 2017-001678
Application 13/145,435
Technology Center 1700
Before GEORGE C. BEST, N. WHITNEY WILSON, and
DEBRA L. DENNETT, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, and 4-8 of Application
13/145,435 under 35 U.S.C. § 112, 1 for failing to comply with the written
description requirement; and under 35 U.S.C. § 103(a) as obvious. Final
Act. (February 29, 2016). Appellants1 seek reversal of these rejections
pursuant to 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6.
1 Takasago International Corp. is identified as the applicant and the real
party in interest. Br. 2.
Appeal 2017-001678
Application 13/145,435
For the reasons set forth below, we affirm. Because our affirmance
relies upon reasoning that differs from that used by the Examiner in rejecting
the ’435 Application’s claims, we designate this opinion as containing new
grounds of rejection.
BACKGROUND
The ’435 Application describes a method for providing a tea extract
by treating a raw material tea with raw tea leaves and a polygalacturonase
enzyme preparation. Spec. 4:5-7; 5:16-19. The raw material tea may be a
mixture of tea leaves and water; or a liquid extracted therefrom. Id. at 4:24;
5:6-9. The raw tea leaves may be unprocessed or a non-heated product,
which is processed through lyophilization and grinding steps to form a
powder. Id. at 5:14-19.
A known method for providing a tea extract includes the step of
treating a liquid extracted from tea with raw tea leaf powder. Id. at 2:1-8.
Although this treated tea extractis said to have an excellent taste, strong
flavor, and is inexpensive, the raw tea leaf powder is said to cause formation
of polysaccharide deposits during long term storage. Id. at 2:12-18; 3:11.
Appellants have identified a polygalacturonase treatment that is said to
provide a tea extract with improved taste, flavor, and decreased cost without
undesirable deposit formation. Id. at 3:24-4:1-2.
Claim 8 is representative of the ’678 Application’s claims and is
reproduced below:
8. A method for producing a tea extract, consisting of the step
of treating a raw material tea by using raw tea leaves and an
enzyme preparation having a polygalacturonase activity, and
optionally at least one step selected from the group consisting of
inactivating the enzymes by a heat treatment, cooling the
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Application 13/145,435
mixture, separating solid components to obtain an extract,
concentrating the extract, and drying the extract to obtain a
powder, wherein the raw material tea is selected from the group
consisting of green tea, oolong tea, black tea and black-colored
fermented tea, and the enzyme preparation having a
polygalacturonase activity is used in an amount of 0.005 or more
polygalacturonase activity unit/g of the raw material tea.
Appeal Br. 22 (Claims App.).
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, and 4-8 are rejected under 35 U.S.C. § 112, 1 for
failing to comply with the written description requirement.
Answer 2.
2. Claims 1, 2, and 4-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Hiramoto2 and Yamashita.3
Answer 3.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, and 4-8 for failing to
comply with the written description requirement. Answer 2-3. The
Examiner found that the limitation requiring “0.005 or more
polygalacturonase activity unit/g of the raw material tea,” as recited in
independent claims 1 and 8, was not described in the ’435 Application’s
2 US 2007/0009640 Al, published January 11, 2007.
3 JP 2003-111558, published April 15, 2003. We shall follow the Examiner
and Appellants by referring to a machine translation that was made of the
record in this appeal on December 2, 2012.
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Application 13/145,435
Specification. Id. at 3. According to the Examiner, “the polygalacturonase
[in the Specification] is being used on a percent by weight of the tea extract,
not the raw material tea.” Id. The Examiner further found that, with respect
to Pectinase 3S and Cellulosin HC, “the PGU/g of tea extract will be less
than 0.005 PGU/g extract.” Id.
For an applicant to comply with the written description requirement of
35 U.S.C. § 112, first paragraph, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
For the reasons set forth in Appellants’ Brief, see Br. 6-9, we find that
Appellants have demonstrated that they were in possession of the claimed
invention as of the ’435 Application’s filing date. Thus, we reverse the
rejection of claims 1,2, and 4-8 for lack of written description.
Rejection 2. Appellants argue for reversal of this rejection without
specific reference to any of the claims on appeal. See id. at 9-20.
Appellants provide additional arguments for reversal of this rejection to
claim 8. See id. at 20. We, therefore, select claim 8 as representative of the
claims subject to this ground of rejection and limit our discussion
accordingly. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
The Examiner found that Hiramoto describes or suggests every
limitation of the method for producing a tea extract treated with raw tea
leaves recited in claim 8 except the details regarding polygalacturonase
treatment. Answer 4. As the Examiner found, Yamashita describes and
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exemplifies a method for treating a tea extract with polygalacturonase. Id. at
4 (citing Yamashita 11-13, 19). The Examiner further found that
Yamashita’s resulting tea extract is disclosed “to be a strong clear kind tea
with good taste.” Answer 5 (citing Yamashita 19, 23). The Examiner
determined that it would have been obvious to one of ordinary skill in the art
to modify Hiramoto’s green tea extract by treating it with Yamashita’s
polygalacturonase because such a treatment would result in “good tasting tea
extracts which will remain haze free (i.e., no precipitation) upon storage.”
Answer 5.
Appellants, inter alia, argue that this rejection should be reversed
because: (1) the applied prior art does not teach or suggest the limitation
requiring that “the enzyme preparation having a polygalacturonase activity is
used in an amount of 0.005 or more polygalacturonase activity unit/g of the
raw material tea,” Br. 10 (emphasis added); (2) there would have been no
motivation to combine Yamashita’s polygalacturonase treatment for
reducing tea viscosity with Hiramoto’s green tea extract because viscosity
reduction is a different purpose than inhibiting deposition formation, id. at
12-13; (3) the applied prior art fails to recognize that hemicellulose deposits
originally contained in liquid extracted from tea are different from deposits
formed from the reaction between the raw tea leaf powder and the liquid
extracted from tea, id. at 14; (4) if the ordinary skilled artisan would have
been motivated to modify Hiramoto by adding an enzyme to Hiramoto’s tea
leaf powder, “she would try to use one of the . . . three enzymes taught in
Hiramoto,” id. at 15; (5) because claim 8 requires that the claimed method
“consists of’ the recited steps, the claim excludes additional steps, such as
Yamashita’s required polyvinyl polypyrrolidone treatment, id. at 20; and (6)
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the “Declaration under 37 C.F.R. § 1.132 executed by Mr. Kenji Saito
(‘Saito Declaration 2’)” demonstrates “unexpectedly superior results” over
the applied prior art. Id. at 15. We address these arguments below.
First, Appellants’ argument (1) is not persuasive because Yamashita
teaches or suggests the claimed recitation “polygalacturonase activity unit.”
As the Examiner found, Yamashita discloses that the amount of
polygalacturonase enzyme is 0.005-0.5% by weight of the tea extract,
depending on the “‘enzyme activity.’” Answer 7 (citing Yamashita]} 12).
We discern no reversible error in the Examiner’s finding that Yamashita
suggests that an enzyme preparation having a high activity in terms of units
is used at a lower percentage by weight of the tea extract. Answer 7; see In
re Preda, 401 F.2d 825, 826 (CCPA 1968) (“[I]n considering the disclosure
of a reference, it is proper to take into account not only specific teachings of
the reference but also the inferences which one skilled in the art would
reasonably be expected to draw therefrom.”).
Second, Appellants’ arguments (2) and (3) regarding the lack of
recognition by the applied prior art of problems solved by the claimed
invention are similarly not persuasive. “[I]t is not required . . . that the prior
art disclose or suggest the properties newly-discovered by an applicant in
order for there to be aprima facie case of obviousness.” In re Dillon, 919
F.2d 688, 697 (Fed. Cir. 1990) (en banc). Furthermore, even assuming there
would have been no reason to combine the applied prior art, Hiramoto
clearly discloses that in addition to treating a tea extract with tea leaf
powder, other enzymes, including polygalacturonase, may be used. See
Answer 7; see also Hiramoto ]} 69.
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Third, Appellants’ argument (4) is not persuasive because it fails to
address the Examiner’s rationale for modifying Hiramoto’s green tea extract
to incorporate Yamashita’s polygalacturonase treatment.
Fourth, Appellants argue in connection with argument (5) that
“Yamashita explicitly requires . . . that it is necessary to treat the
[polygalacturonasej-treated tea extract with [polyvinyl] polypyrrolidone
(PVPP) in order to obtain a strong flavored, clear type of tea extract with
good taste (‘strong clear kind tea extract of a taste’ in the machine
translation of Yamashita).” Br. 20 (citing Yamashita ^ 20).
Appellants’ argument is directed to whether Hiramoto teaches
incorporation of another treatment step, such as Yamashita’s polyvinyl
polypyrrolidone treatment.
The test for obviousness[, however,] is not whether the features
of a secondary reference may be bodily incorporated into the
structure [or method] of the primary reference; nor is it that the
claimed invention must be expressly suggested in any one or all
of the references. Rather, the test is what the combined teachings
of the references would have suggested to those of ordinary skill
in the art.
In re Keller, 642 F.2d413, 425 (CCPA 1981).
Furthermore, argument (5) is not persuasive because Appellants’
characterization of Yamashita’s disclosure is incorrect. Yamashita discloses
two processes: (1) “the 1st process” of polygalacturonase treatment in order
“to obtain enzyme treated liquid,” see Yamashita Claim 1; see also id. TJ 19,
and (2) “the 2nd process” of polyvinyl polypyrrolidone treatment, which
only begins after enzyme heat inactivation. See id. at Claim 1; see also id. TJ
19. In other words, the polyvinyl polypyrrolidone treatment occurs
downstream of the production of enzyme treated tea. Thus, Yamashita’s
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Application 13/145,435
disclosure does not require the addition of any steps to the method for
producing a tea extract suggested by the combination of Hiramoto and
Yamashita that are excluded by Appellants’ use of the transition “consisting
of’ in claim 8.
Fifth, Appellants also allege that the obviousness rejection is based on
several “Errors in the Examiner’s Reasoning.” Br. 16-20. For the reasons
set forth above and in the Examiner’s Answer, see Answer 12-16, we
discern no reversible error in the Examiner’s reasoning with respect to these
alleged errors.
Sixth, Appellants’ argument (6) contends that they have provided
sufficient evidence of unexpected results to overcome the Examiner’s prima
facie case of obviousness. Br. 15-16. In the Answer, the Examiner
concluded that Appellants’ evidence was insufficient to overcome the prima
facie case of obviousness because Appellants rely upon a declaration that
merely demonstrates expected results. Answer 12. The Examiner explained
that
[pjectin and cellulose or hemicellulose have different chemical
structures. Therefore, polygalacturonase (pectinase) is expected
to affect pectin (a polymer comprising galacturonic acid units);
rather than affecting cellulose (a polymer comprising glucose
units). This explains why pectinase (polygalacturonase) is more
effective than cellulase in a composition containing more pectin
than cellulose.
Id.
The Examiner’s conclusion is based upon faulty reasoning because it
ignores the Declaration’s disclosure that Cellulosin AC 40, a cellulase,
contains polygalacturonase activity at 151 PGU/g. Saito Declaration 2, p.3;
see also Spec. 7:5-8 (explaining that “[sjorne enzyme preparations other
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than enzyme preparations marketed as pectinase[, e.g., Cellulosin AC 40,]
have a polygalacturonase activity, and these may also be used . . .
Moreover, the Examiner’s reasoning overlooks that Cellulosin AC 40
provides the requisite amount of 0.005 polygalacturonase activity unit/g
enzyme to raw material tea. Saito Declaration 2, p.3. The Examiner,
therefore, erred by concluding that Appellants’ evidence of unexpected
results was not convincing because it merely demonstrated expected results
comparing polygalacturonase and cellulase.
In this case, the Examiner’s error was harmless. We conclude that
Appellants’ evidence of unexpected results is not convincing because it is
not commensurate in scope with the ’435 Application’s claims. See, e.g., In
re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003) (“[T]he applicant’s
showing of unexpected results must be commensurate in scope with the
claimed range.”). Saito Declaration 2 provides data comparing the
deposition inhibiting performance of three enzymes on green tea extract A.
The claims on appeal, however, are not limited solely to green tea. Rather,
the claims on appeal encompass raw material tea made from green tea,
oolong tea, black tea, and black-colored fermented tea. Thus, the data
presented by Appellants is not commensurate in scope with the claims.
Furthermore, Saito Declaration 2 asserts that the included “table
shows the criticality of the lower limit of 0.005 PGU/g.” Saito Declaration
2, p.3. However, the table only provides single data points 0.001 PGU/g
above and 0.002 PGU/g below the alleged critical point. Id. Thus,
Appellants have not shown that the entirety of the claimed range is critical.
We, therefore, affirm the obviousness rejection of claims 1, 2, and 4-
8. Because our affirmance relies upon facts and reasoning that differ from
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those used by the Examiner, we designate our affirmance as setting forth a
new ground of rejection. See 37 C.F.R. § 41.50(b).
CONCLUSION
For the reasons set forth above, we affirm the rejections of claims 1, 2,
and 4-8. To protect Appellants’ procedural rights, we designate our
affirmance as setting forth a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b).
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b), which provides that “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides that the Appellants, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be remanded
to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
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: NEW GROUND OF REJECTION
PURSUANT TO 37 C.F.R, § 41,501b)
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