Ex Parte Segall et al

Patent Trial and Appeal Board

Jul 28, 2016

12704101 (P.T.A.B. Jul. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121704, 101 02/11/2010
24223 7590 08/01/2016
SIM & MCBURNEY
330 UNIVERSITY A VENUE
6THFLOOR
TORONTO, ON MSG 1R7
CANADA
FIRST NAMED INVENTOR
Kevin I. Segall
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.
7865-440 MIS 5456
EXAMINER
MCCLAIN-COLEMAN, TYNES HAL.
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/01/2016 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):
mailsim@sim-mcburney.com
mailroom@sim-mcburney.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN I. SEGALL, MARTIN SCHWEIZER, BRENT E. GREEN,
SARAH MEDINA, and BRANDY GOSNELL
Appeal2015-003577
Application 12/704,101
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-31, 33-36, and 39-73. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM-IN-PART.
Appellants' invention is principally directed to a method of producing
a soy protein product having a soy protein content of at least about 60 wt%
(N x 6.25), dry weight basis (d.b.). App. Br. 2-3. Claim 1 is illustrative of
the subject matter on appeal and is reproduced below:
Appeal2015-003577
Application 12/704, 101
1. A method of producing a soy protein product having a
soy protein content of at least about 60 wt% (N x 6.25), dry
weight basis (d.b.), which comprises:
(a) extracting a soy protein source with an aqueous
calcium salt solution to cause solubilization of soy protein from
the protein source and to form an aqueous soy protein solution,
(b) separating the aqueous soy protein solution from
residual soy protein source,
( c) concentrating the aqueous soy protein solution while
maintaining the ionic strength substantially constant by using a
selective membrane technique,
( d) optionally diafiltering the concentrated soy protein
solution,
( e) diluting the concentrated soy protein solution into
water to cause the formation of a precipitate,
(f) acidifying the mixture of precipitate and diluting
water to a pH of about 1.5 to about 4.4 to re-solubilize the
protein and form a clear soy protein solution,
(g) concentrating the clear acidified soy protein solution
while maintaining the ionic strength substantially constant by
using a selective membrane technique,
(h) optionally diafiltering the concentrated clear acidified
soy protein solution, and
(i) drying the concentrated and optionally diafiltered
clear acidified soy protein solution.
Appellants (App. Br. 6) request review of the following rejections
from the Examiner's Final Action:
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Appeal2015-003577
Application 12/704, 101
I. Claims 1-9, 12-21, 23-25, 28, 33-36, 38--44, 47---61, and 66-71
rejected under 35 U.S.C. § 103(a) as unpatentable over Murray (US
4,208,323, issued June 17, 1980) and Saito '624 (US 2004/0086624 Al,
published May 6, 2004).
II. Claims 10, 11, 22, 27, 29-31, 45, 46, and 62 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Murray, Saito '624, and Schweizer (WO
2005/107492 Al, published November 17, 2005).
III. Claims 26 and 63---65 rejected under 35 U.S.C. § 103(a) as
unpatentable over Murray, Saito '624, and Tombs (US 3,870,801, issued
March 11, 1975).
IV. Claims 72 and 73 rejected under 35 U.S.C. § 103(a) as unpatentable
over Murray, Saito '624, and Saito '531 (US 2003/0138531 Al, published
July 24, 2003).
OPINION
After review of the respective positions provided by Appellants and
the Examiner, we REVERSE the Examiner's prior art rejections of method
claims 1-31, 33-36, and 38---68 under 35 U.S.C. § 103(a) for the reasons
presented by Appellants. However, we AFFIRM the Examiner's prior art
rejections of product claims 69-73 for the reasons presented by the
Examiner.
Method Claims 1-31, 33-36, and 38-681
Claim 1 is directed to a method of producing a soy protein product
having a soy protein content of at least about 60 wt% (N x 6.25), dry weight
basis ( d.b.) comprising, inter alia, the step of acidifying the mixture of
1 We limit our discussion to independent method claim 1.
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Appeal2015-003577
Application 12/704, 101
precipitate and diluting water to a pH of about 1.5 to about 4.4 to re-
solubilize the protein and form a clear soy protein solution.
The Examiner found Murray discloses a method of making a soy
protein product that differs from the claimed invention in that Murray does
not disclose acidification of mixture of precipitate and diluting water to a pH
of about 1.5 to about 4.4 to re-solubilize the protein and form a clear soy
protein solution, and the subsequent processing steps of the acidified
solution. Final Act. 3--4; Murray col. 1, 1. 59-col. 2, 1. 4., col. 2, 11.14, 26-
32, col. 3, 11. 11-21, col. 5, 11. 24--28, 43-57, col. 6, 11. 16-19, 59---62, col. 7,
11. 45-53. To remedy this deficiency, the Examiner relies on Saito '624 as
teaching to convert a cloudy protein solution into a solubilized state having
transparency through acidification to reduce the presence of phytic acid.
Final Act. 4; Saito i-fi-f 13, 28, 32, 36-38. The Examiner determined it would
have been obvious to one skilled in the art to acidify the mixture of cloudy
precipitate and diluting water from Murray's method to re-solubilize the
protein and form a clear soy protein solution with the expectation of
successfully preparing a functional product. Final Act. 5
Appellants principally argue the Examiner provides no motivation to
modify Murray's process of making a soy protein product by incorporating
Saito' s protein acidification step to acidify the mixture of precipitate and
diluting water as required by claim 1. App. Br. 7, 11.
We agree with Appellants. The Examiner has not directed us to any
portion of the cited art or presented an adequate technical explanation that
supports the Examiner's determination that one skilled in the art would have
incorporated the acidification step of Saito '624 in a highly acidic
environment into Murray's method of making a soy protein product to re-
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Appeal2015-003577
Application 12/704, 101
solubilize the protein and form a clear soy protein solution. Thus, we agree
with Appellants that the Examiner has not adequately explained how one
skilled in the art would have combined the teachings of the prior art to arrive
to the claimed invention. Under these circumstances, we cannot conclude
that the Examiner has met the minimum threshold of establishing a prima
facie case of obviousness under 35 U.S.C. § 103(a). In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992).
Accordingly, we reverse the Examiner's prior art rejections of method
claims 1-31, 33-36, and 38---68 under 35 U.S.C. § 103(a) for the reasons
presented by Appellants and given above.
Product Claims 69-73 2
Claim 69 is drafted in a product-by-process format. The patentability
of this type of claim does not depend on the process steps, except to the
extent that the process steps are shown to result in properties not possessed
by prior art products. It has long been held that "'[i]f the product in a
product-by-process claim is the same as or obvious from a product of the
prior art, the claim is unpatentable even though the prior product was made
by a different process."' Smithkline Beecham Corp. v. Apotex Corp., 439
F.3d 1312, 1317 (Fed. Cir. 2006)(quoting In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985)). It is also well settled that when a claimed product
reasonably appears to be substantially the same as a product disclosed in the
2 Claims 70-73 are directed to products comprising the soy bean product of
claim 69. Accordingly, we limit our discussion to claim 69. We note
Appellants did not present arguments separately addressing these claims.
See Appeal Brief, generally.
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Application 12/704, 101
prior art, the burden of proof is on the applicants to prove that the prior art
product does not inherently or necessarily possess the characteristics
attributed to the claimed product. Cf In re Spada, 911 F.2d 705, 708, (Fed.
Cir. 1990)(holding that similarity in terms of reactants and reaction
conditions amounted to a prima facie case of unpatentability and that the
burden was properly shifted to applicants to show that the prior art product
does not have the claimed property); see also In re Best, 562 F.2d 1252,
1255, (CCPA 1977).
In this case, claim 69 is directed to a soy protein product having a soy
protein content of at least about 60 wt% (N x 6.25), dry weight basis (d.b.).
The Examiner found Murray suggests a protein product having a soy protein
content within Appellants' claimed range of at least about 60 wt% (N x
6.25). Final Act. 3--4. Further, Murray suggests protein products having a
soy protein content of at least about 83 wt% (N x 6.25). Murray col. 7
(Table I). That is, Appellants' claimed soy protein product reasonably
appears to be substantially the same as the soy protein product of Murray.
Accordingly, the burden shifted to Appellants to demonstrate that the
claimed soy protein product differs from the soy protein product of the prior
art. Thorpe, 777 F.2d at 698 (citing Best, 562 F.2d at 1255). However,
Appellants have not proffered evidence showing any difference between
their soy protein product and the one of the prior art.
Therefore, we affirm the Examiner's prior art rejections of product
claims 69--73 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
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Appeal2015-003577
Application 12/704, 101
ORDER
The Examiner's prior art rejections of method claims 1-31, 33-36,
38---68 under 35 U.S.C. § 103(a) (Rejections I-III) are reversed.
The Examiner's prior art rejections of product claims 69-73 under
35 U.S.C. § 103(a) (Rejections I and IV) are affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED-IN-PART
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