Ex Parte Segall et al

Patent Trial and Appeal Board

Apr 28, 2014

11524431 (P.T.A.B. Apr. 28, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD

____________

Ex parte KEVIN I. SEGALL, RANDY WILLIARDSEN,
and MARTIN SCHWEIZER
__________

Appeal 2012-010070
Application 11/524,431
Technology Center 1700
____________

Before ROMULO H. DELMENDO, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-15, 20-25, and 30. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appellants’ invention is directed to processes for preparing protein
isolates from oil seed meals, particularly canola oil seed meal (Spec. para.
[0002]).
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Claims 1, 5, 6, 7, 9, 14, 20, 21, and 22 are illustrative:
1. A process of preparing a protein isolate, which comprises:
(a) extracting an oil seed meal to cause solubilization of protein in the
oil seed meal and to form an aqueous protein solution having a pH of about
5 to about 6.8;
(b) separating the aqueous protein solution from residual oil seed
meal;
(c) acidifying the aqueous protein solution to isoelectrically
precipitate therefrom a protein isolate having a protein content of at least
about 90 wt% (N x 6.25); and
(d) separating the precipitated protein isolate from supernatant.

5. A process of preparing a canola protein isolate, which comprises:
(a) extracting a canola oil seed meal to cause solubilization of canola
protein in the canola oil seed meal and to form an aqueous protein solution
having a pH of about 5 to about 6.8;
(b) separating the aqueous protein solution from residual canola oil
seed meal;
(c) acidifying the aqueous protein solution to a pH of about 3 to about
4 to precipitate therefrom a canola protein isolate having a protein content of
at least about 90 wt% (N x 6.25) and comprising predominantly 7S canola
protein; and
(d) separating the precipitated canola protein isolate from supernatant.

6. The process of claim 5 wherein said supernatant is processed to
recover therefrom additional canola protein isolate having a protein content
of at least about 90 wt% (N x 6.25) comprising predominantly 2S canola
protein.

7. The process of claim 6 wherein said supernatant is heat-treated to
precipitate 7S and any 12S protein from the supernatant and the degraded
7S/12S protein is separated from the heat-treated supernatant.

9. The process of claim 7 wherein the pH of said supernatant is
adjusted to the range of about 5 to about 6.8 prior to said heat treatment step.

14. The process of claim 5 wherein said aqueous canola protein
solution is concentrated to a concentration of about 20 to about 25 wt%
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protein and, prior to said acidifying step, the concentration of the canola
protein solution is adjusted to about 5 to about 10 wt% by the addition of
aqueous salt solution.

20. A canola protein isolate produced by the process of claim 6.

21. An acidified beverage containing the canola protein isolate of claim
20.

22. The beverage of claim 21 which is a clear protein fortified soft drink.

Appellants appeal the following rejections:
1. Claims 1-4 and 23 are rejected under 35 U.S.C. § 103(a), as being
unpatentable over Logie et al. (US 2004/0034200 A1, published Feb.
19, 2004) in view of Diosady et al. (US 6,905,713 B2, patented Jun.
14, 2005).
2. Claims 5, 6, 11, 12, 13, 14, and 20 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Logie in view of Diosady.
3. Claim 24 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Logie in view of Diosady and Schweizer et al. ’112 (US
2005/0181112 A1, published Aug. 18, 2005).
4. Claims 7-10 and 30 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Logie in view of Diosady and Schweizer ’112.
5. Claims 15 and 25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Logie in view of Diosady, Schweizer ’112, and
Rajendran et al. (Measurement of conductivity of liquids using
AT89C55WD microcontroller, 35 MEASUREMENT 59-63 (2004)).
6. Claim 21 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Logie in view of Diosady and Murray (US 2003/0021884 A1,
patented Jan. 30, 2003).
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7. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Logie in view of Diosady, Murray, and NPL Soft drink
(Waybackmachine record 2000, www.britishsoftdrinks.com).

Regarding rejections (1) and (2), Appellants argue the subject matter
of independent claims 1 and 5, and dependent claim 14 (App. Br. 6-15).
While Appellants discuss the subject matter of claims 2-4, 6, 11, 13, 20, and
23, no argument against the Examiner’s rejection appears to have been
provided (App. Br. 9-10, 13). Rather, Appellants agree with the Examiner’s
findings regarding some of the claims. Id. Accordingly, we do not find that
the subject matter of claims 2-4, 6, 11, 13, 20 and 23 has been separately
argued. Regarding rejections (3) and (5), Appellants relies on arguments
made regarding the combination of Logie and Diosady in rejections (1) and
(2) (App. Br. 16, 20). Accordingly, dependent claims 15, 24, and 25 will
stand or fall with our analysis of rejections (1) and (2). Regarding rejection
(4), Appellants argue the subject matter of claims 7, 9, and 30 (App. Br. 16-
18). Appellants further argue claims 21 and 22 under rejections (6) and (7)
(App. Br. 20-22).

REJECTIONS (1), (2), (3), AND (5): Claims 1, 5, and 14

ISSUES
1. Did the Examiner reversibly err in determining that the combined
teachings of Logie and Diosady would have suggested the process of
claims 1 and 5 that include an acidifying step (claims 1 and 5) and
wherein the acidifying step precipitates a protein comprising
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“predominately 7S canola protein” (claim 5)? We decide this issue in
the negative.
2. Did the Examiner reversibly err in determining that the teachings of
Logie and Diosady would have suggested concentrating the protein
solution to about 20 to 25% protein prior to the acidifying step and
adjusting the canola protein solution to about 5 to about 10 wt% by
adding an aqueous salt solution as recited in claim 14? We decide this
issue in the negative.

FINDINGS OF FACT AND ANALYSES
Issue (1): Claims 1 and 5
The Examiner’s findings and conclusions regarding the teachings of
Logie and Diosady with respect to claims 1 and 5 are located on pages 6-10
of the Answer. The Examiner finds and Appellants do not contest that Logie
teaches extracting step (a) and separating step (b) of claims 1 and 5 (Ans. 6-
10; App. Br. 7, 13). The Examiner finds that Diosady teaches acidifying a
canola protein extract solution to form a precipitated isolate which is then
separated from the solution (Ans. 6-10). With regard to the claim 5
limitation that the canola protein precipitated from the solution is
predominately a 7S protein, the Examiner concludes that it would have been
obvious that the precipitated isolate in Diosady represents the high
molecular weight protein micellar mass and predominately comprises 7S
canola protein (Ans. 8). The Examiner further finds that Schweizer et al.
(US 2008/0299282 A1 published Dec. 4, 2008) evinces that when a canola
protein extract solution is acidified to its isoelectric point at a pH of 3.5, the
canola protein precipitate predominately consists of 7S protein (Ans. 20;
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Final Off. Act. 20). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to combine Diosady’s acidifying
step to form a precipitated isolate and the step of separating the precipitated
isolate with Logie’s process in order to precipitate isoelectrically the desired
protein to isolate it from a heterogeneous population, to remove phenolic
compounds, and to provide an economical step to acquire the canola protein
(Ans. 8, 10).
Appellants argue that there is no reason to combine Diosady’s
teachings with Logie’s process because Diosady uses a highly alkaline
solution to extract the protein from the oil seed meal that is then acidified to
precipitate the canola protein isolate (App. Br. 8). Appellants contend that
Logie’s teachings regarding an alkaline pH for extraction still requires a pH
adjustment to 5 to 6.8 as taught by Logie prior to further processing (App.
Br. 11). While Appellants agree that Specification paragraph [0017]
describes isoelectric precipitates consists predominately of 7S protein,
Appellants argue that paragraph [137] in Schweizer US 2008/0299282 A1
refers to adjusting the pH of salinated supernatant to effect isoelectric
precipitation of 7S protein (App. Br. 12).
We are unpersuaded by Appellants’ arguments. While Diosady
teaches using a salt solution with an alkaline pH around 12, Logie discloses
that the salt extraction solution may be either alkaline or acidic in pH (Logie,
paragraph [0047]). As noted by Appellants, Logie describes adjusting the
pH of the acidic extraction solution to a pH range of 5 to 6.8 before further
processing as required by Appellants’ claims (Logie, paragraph [0048]).
While Logie form micelles of the protein by adding chilled water to the
extraction solution (Logie, paragraph [0057]), Appellants do not contest the
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Examiner’s finding that Diosady teaches that at a pH of 3.5 the protein will
isoelectrically precipitate from the solution (Ans. 19).
Accordingly, even if Logie teachings adjusting the pH of an acidic
extraction solution to a pH range of 5 to 6.8 before further processing, the
combined teachings of Diosady and Logie would have suggested acidifying
the extracted protein solution to a pH of 3.5 to precipitate the protein from
the solution. Notably, Appellants do not specifically challenge the
Examiner’s finding that one of ordinary skill in the art would have combined
Diosady’s acidification step with Logie’s process in order to economically
form the protein isolate.
Appellants’ argument regarding whether predominately 7S canola
protein is isolated from the extracted solution is undermined by the
Schweizer US 2008/0299282 A1’s disclosure that by adjusting the pH to
around 3.5 7S canola protein is isoelectrically precipitated from a solution.
Even if Schweizer’s paragraph 137 disclosure relates to supernatant solution,
Appellants have not explained why the Examiner’s finding that paragraph
137 teaches that isoelectric precipitation at a pH of 3.5 produces a protein
predominately comprised of 7S protein is in error. Indeed, Appellants
concede that their own Specification instructs that acidifying a protein
extract solution to a pH of between 3 and 4 produces a precipitate which is
predominately 7S protein (App. Br. 12).
On this record, we find that the Examiner has established a prima
facie case of obviousness of the subject matter of claims 1 and 5. Appellants
arguments fail to adequately rebut that prima facie case.

Issue (2): Claim 14
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Appellants argue that Logie does not teach or suggest a concentration
and dilution operation as required by claim 14 (App. Br. 14). Appellants
contend that they add aqueous salt solution to a concentrated protein solution
to reduce the viscosity of the solution prior to acid addition in order to
permit the acid to better react with the protein (App. Br. 14). Appellants
argue that Logie does not recognize this benefit or have any concern for
difficulties encountered by acidifying a viscous solution (App. Br. 14-15).
The Examiner finds that protein concentration is a result-effective
variable that would have been optimized to the desired concentration
followed by dilution to an optimum condition of isoelectric precipitation
(Ans. 23-24). Appellants do not respond to this reasonable finding of the
Examiner. Generally, changes in concentrations would have been obvious
modifications absent a showing of unexpected results. In re Aller, 220 F.2d
454, 456 (CCPA 1955). Appellants have not proffered any evidence of
unexpected results with regard to the concentration of the protein solution.
On this record, the Examiner has established a prima facie case of
obviousness, which has not been rebutted by Appellants. On this record, we
affirm the Examiner’s § 103 rejections (1), (2), (3) and (5).

REJECTION (4)
ISSUE
Did the Examiner reversibly err in concluding that the combined
teachings of Logie, Diosady, and Schweizer would have suggested the
subject matter of claims 7, 9, and 30? We decide this issue in the negative
with the regard to claim 7 and in the affirmative with regard to claims 9 and
30.
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FINDINGS OF FACT & ANALYSIS
The Examiner finds that Logie does not teach the heat treatment to
precipitate 7S and 12S proteins from the supernatant and that the degraded
7S/12S protein is separated from the heat-treated supernatant (Ans. 14). The
Examiner finds that Schweizer teaches heat treating the supernatant to
precipitate the 7S and 12S protein from the supernatant and the degraded
7S/12S protein is separated from the heat-treated supernatant (Ans. 15). The
Examiner concludes that it would have been obvious to combine
Schweizer’s teachings regarding the heat treating step into Logie in order to
“concentrate relatively higher purity of 2S protein in the supernatant as 2S
protein is not affected by the heat treatment and so the heat treatment
increases the proportion of 2S protein present by decreasing the residual 7S
protein through degradation in the supernatant” (Ans. 15).
Appellants do not specifically contest the Examiner’s findings or
conclusions with regard to the teachings Schweizer or the combination of
Schweizer with Logie to render obvious the subject matter of claim 7 (App.
Br. 18). Appellants only contest the Examiner’s findings regarding
Schweizer’s pH teachings (App. Br. 18-19). As Appellants have not shown
error with the Examiner’s rejection of claims 7, 8, or 10/8,1 we affirm the
Examiner’s § 103 rejection of these claims.
Regarding claims 9 and 30, Appellants argue that the Examiner
erroneously finds that Logie in paragraph 48 and Schweizer in paragraph 38
teach adjusting the pH of the supernatant to between 5 and 6.8 prior to heat
treatment (App. Br. 17-19). Appellants contend that Logie at paragraph 48

1 We use the denomination 10/8 to represent our affirmance of the rejection
of multiply dependent claim 10 that depends on claim 8.
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discloses adjusting the pH of the extracted protein solution, not the
supernatant (App. Br. 17). Appellants contend that Schweizer at paragraph
38 discloses pH adjustment of the protein solution resulting from extraction
of the oil seed meal, not the supernatant (App. Br. 18-19).
The Examiner never specifically responds to Appellants’ arguments
regarding claims 9 and 30. Our review of paragraph 48 of Logie and
paragraph 38 of Schweizer reveals that both paragraphs refer to adjusting the
pH of the protein solution extracted from the oil seed meal, not the
supernatant. Because the Examiner’s rejection of claims 9 and 30 is based
on an error in fact, we reverse the Examiner’s § 103 rejection of claims 9,
10/9, and 30.

REJECTIONS (6) AND (7)
Appellants argue that canola protein in Murray is a protein micellar
mass (PMM) and not a protein isolate recovered from supernatant from the
formation of PMM as required by claim 21 (App. Br. 20). Regarding claim
22, Appellants argue that it not clear from Logie, Diosady, and Murray
whether the resulting soft drink will be clear as required by claim 22 (App.
Br. 22).
Claims 21 and 22 are product-by-process claims in that these claims
recite a product but state the product includes the canola protein isolate
made by the process of claim 6. As product-by-process claims, the
patentability of a product does not depend on its method of production. In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). If the product in a product-by-
process claim is the same as or obvious from a product of the prior art, the
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claim is unpatentable even though the prior product was made by a different
process. Id.
In the present case, the Examiner finds that the Murray discloses a
canola protein isolate as recited in the claims (Ans. 26). In other words, the
Examiner finds that the prior art canola protein isolate and the claimed
canola protein isolate are the same. In our view the Examiner’s findings
regarding the process used to form the canola protein isolate of claim 6 and
the prior art establishes that the process as taught by Logie, Diosady, and
Schweizer would have formed a canola protein isolate as claimed. The
Examiner has established a prima facie case that the canola protein isolate of
the prior art would have reasonably been expected to be identical to that
claimed and thus have the same properties such as clarity upon mixing with
an acidified beverage composition. The burden shifted to Appellants to
show that the prior art product does not necessarily or inherently possess the
characteristics of the claimed product. Thorpe, 777 F.2d at 698.
Appellants have not provided any evidence to substantiate the mere
attorney argument that the products may be different. On this record, we
affirm the Examiner’s § 103 rejections (6) and (7).

DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART

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