Ex Parte Topinka et alDownload PDFPatent Trial and Appeal BoardMay 2, 201812059776 (P.T.A.B. May. 2, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/059,776 03/31/2008 48940 7590 05/02/2018 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR John Benjamin Topinka 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. 1410-77530-US 5501 EXAMINER TIJRNER, FELICIA C ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 05/02/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOHN BENJAMIN TOPINKA, STACEY A. PRAGER, PAUL VICTOR GASS, DANIEL G. LIS, PETER HARRIS BROWN, ROBERT F. CLASS, RICHARD STUART SILVER, and STEVEN DONALD ZBYLUT Appeal2017-004431 Application 12/059,776 1 Technology Center 1700 Before ADRIENE LEPIANE HANLON, ROMULO H. DELMENDO, and MARK NAGUMO, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134(a) from an Examiner's decision finally rejecting claims 1-16, 18-28, 30--39, and 44. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 The real party in interest is said to be Kraft Foods Group Brands LLC, of Northfield, Illinois. Appeal Brief dated June 27, 2016 ("App. Br."), at 3. Appeal2017-004431 Application 12/059,776 The claimed subject matter is directed to a method for preparing a treated egg yolk composition ( claims 1-8, 31-33, and 44), a method for preparing an egg-flavored food composition (claims 9-16 and 34--39), a food flavoring composition (claims 18-24 and 30), and a food product comprising the treated egg yolk composition ( claims 25-28). According to the Appellants' method, liquid egg yolk, phospholipase, and protease are combined at substantially the same time and the phospholipase and protease are permitted to simultaneously treat the liquid egg yolk for a time, at a temperature, and in amounts effective to provide a particular peptide mixture and convert at least about 50 percent of phospholipids in the liquid egg yolk to lysophospholipids. See, e.g., App. Br. 57 ( claim 1 ). The Appellants disclose that the treated egg yolk compositions "confer to food products in which they are incorporated increased functionality and egg flavor and can be used in reduced amounts as compared to the amount of whole eggs and/or egg yolks normally used in the food products." Spec. ,r 14. According to the Appellants: The treated egg yolk compositions ... are particularly useful because (1) they permit the use of less egg yolk in the preparation of food products to achieve the same emulsification characteristics, stability, and flavor intensity as is achieved using higher levels of untreated egg yolk or whole eggs in food products; (2) the treated egg yolk and food products containing them have greater heat stability and stability to freeze/thaw; (3) enable the use of lower amounts of oil in food emulsion products, such as mayonnaise, yet avoid separation and retain good texture and flavor; (4) they provide significant cost savings in the preparation of food products for mass consumption because of the reduced amount of egg yolk required to achieve food products with satisfactory organoleptic 2 Appeal2017-004431 Application 12/059,776 and flavor characteristics comparable to those of food products produced using conventional amounts of untreated egg yolks or whole eggs; and ( 5) they exhibit characteristics of robustness and functionality after treatment with elevated temperatures. Spec. ,r 14. Representative claims 1 and 30 are reproduced below from the Claims Appendix of the Appeal Brief. 1. A method for preparing a treated egg yolk composition having increased egg flavor and functionality, the method compnsmg: combining liquid egg yolk, phospholipase and protease at substantially the same time to treat the liquid egg yolk; and permitting the phospholipase and protease to simultaneously treat the liquid egg yolk for a time, at a temperature and in amounts effective for the protease to cleave proteins in the liquid egg yolk to provide a peptide mixture comprising at least about 6000 ppm peptides less than about 13 kDa, at least about 2500 ppm peptides of about 14 to about 105 kDa, and less than about 2500 ppm peptides of about 106 to about 240 kDa, with ppm based on the treated egg yolk, the protease having endo- and exo-peptidase activity, and the phospholipase effective to convert at least about 50 percent of phospholipids in the liquid egg yolk to lysophospholipids to provide the treated egg yolk composition. App. Br. 57 ( emphasis added). 30. A food flavoring composition which is effective for imparting increased egg flavor and functionality, the flavoring composition comprising lysophospholipids and a mixture of egg yolk peptides from enzyme treated egg yolk, the mixture of egg yolk peptides comprising at least about 6000 ppm peptides less than about 13 kDa, at least about 2500 ppm peptides of about 14 to about 105 kDa, and less than about 2500 ppm peptides of about 106 to about 240 kDa, with ppm based on the treated egg yolk, the flavoring composition having not more than about 50 percent of phospholipids which were in the egg 3 Appeal2017-004431 Application 12/059,776 yolk prior to enzyme treatment to provide a food flavoring composition which has increased egg flavor over egg yolk which has not been treated with the enzymes to provide the peptide mixture. App. Br. 61---62. The Examiner maintains the following grounds of rejection on appeal: (1) claims 1-3, 5, 9-13, 16, 18-23, 25-28, and 30-39 under 35 U.S.C. § I03(a) as unpatentable over Hayashi et al. 2 in view of van Dam3 and Ito et al.; 4 (2) claims 4, 12, and 21 under 35 U.S.C. § I03(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of JP 021; 5 (3) claims 6, 14, and 23 under 35 U.S.C. § I03(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Castle et al.;6 (4) claims 7, 8, 15, 24, and 44 under 35 U.S.C. § I03(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Campbell et al.; 7 (5) claims 1-5, 9-13, 16, 18-22, 25, 26, 28, and 30-39 under 2 JP 2002-233334A, published August 20, 2002 ("Hayashi"). We refer to the English translation of record in the instant Application. 3 US 4,034,124, issued July 5, 1977 ("van Dam"). 4 JP 2002-110254A, published October 8, 1996 ("Ito"). We refer to the English translation of record in the instant Application. 5 JP 2004-30502 IA, published November 4, 2004 ("JP 021 "). We refer to the English translation of record in the instant Application. 6 US 5,213,968, issued May 25, 1993 ("Castle"). 7 US 2004/0076717 Al, published April 22, 2004 ("Campbell"). 4 Appeal2017-004431 Application 12/059,776 35 U.S.C. § 103(a) as unpatentable over JP 021 in view of Ohta et al., 8 van Dam, and Ito; (6) claims 6, 14, and 23 under 35 U.S.C. § I03(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of Castle; (7) claims 7, 8, 15, 24, and 44 under 35 U.S.C. § I03(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of Campbell; and (8) claims 27 and 28 under 35 U.S.C. § I03(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of allrecipes.com. 9 The Appellants present arguments in support of the patentability of independent claims 1, 9, 18, 25, and 30, but do not argue the patentability of the dependent claims separately. Therefore, for purposes of this appeal, dependent claims 2-8, 10-16, 19-24, 26-28, 31-39, and 44 stand or fall with the patentability of the respective independent claim. 3 7 C.F .R. § 4I.37(c)(l)(iv). B. DISCUSSION 1. Rejections ( 1 }-{ 4) The Examiner finds Hayashi discloses a process of treating a liquid egg yolk with a protease and phospholipase in the same step (i.e., 8 US 2003/0091721 Al, published May 15, 2003 ("Ohta"). 9 Home Made Mayonnaise, http://web.archive.org/web/ 20061230114 718/http://allrecipes.com/recipe/home-made-mayonnaise /detail.aspx (last visited July 11, 2011) ("allrecipes.com"). 5 Appeal2017-004431 Application 12/059,776 simultaneously). Final Act. 2; see also Final Act. 5, 8, 12, 15. 10 The Examiner also finds that Hayashi Comparative Example 2 describes adding phospholipase and protease to an egg yolk at the same time. Final Act. 2 (citing Hayashi ,r,r 39, 40 (Table 1, no. 11 11)). The Examiner finds Hayashi does not disclose the amounts and molecular weights of peptides produced by the process. Final Act. 2; see also Final Act. 6, 9, 12, 15. Nonetheless, the Examiner finds that "the amount of and molecular weights of the peptides produced are a result of treating a liquid egg with a protease having endo- and exo-peptidase activity for a time and temperature and that time and temperature appear to be the variables affecting the result." 12 Final Act. 3; see also Final Act. 6, 9, 12- 13, 15. In that regard, the Examiner finds Hayashi discloses that suitable proteases include Flavorzyme, which has both endo- and exo-peptidase activities. Final Act. 2 ( citing Hayashi ,r 22; Spec. ,r 40); see also Final Act. 5, 9, 12, 15; App. Br. 17 (stating that FLAVOURZYME® has endo- and exo-peptidase activities). The Examiner also finds: Ito discloses treating egg yolk with a protease in order to reduce at least 80% of the protein in the yolk to a molecular weight of 2000 (Da i.e. 2 kDa) or less [claims 1 and 2; para 0001]. Ito discloses a peak molecular weight from 100 to 100,000 (Da i.e. 0.1 kDa to 100 kDa) and that the molecular weight of 2000 Da or less was 85.3% of the peak [para 0013]. Therefore the 1° Final Office Action dated August 26, 2015. 11 Hayashi identifies "11" as representing comparative examples. Hayashi 12. 12 See In re Boesch, 617 F.2d 272,276 (CCPA 1980) (discovery of an optimum value of a result effective variable is ordinarily within the skill in the art). 6 Appeal2017-004431 Application 12/059,776 molecular weight above 2,000 Dato 100,000 (2 to 100 kDa) accounted for the remaining 14.7%. Final Act. 3; see also Final Act. 6, 9-10, 13. The Examiner finds that the amounts and molecular weights disclosed in Ito are either commensurate with or overlap the amounts and molecular weights of the peptides recited in the claims on appeal. 13 Final Act. 4--5; see also Final Act. 7-8, 10-11, 14, 16-1 7. Ito discloses that the peptide mixture promotes the efficient absorption of calcium, iron, magnesium, zinc, copper, and other minerals that may be lacking in the modem diet. Ito ,r 3. The Examiner concludes that "it would have been obvious to treat the egg yolk as in Ito in order to reduce most of the protein to molecular weights below 100 kDa in order for the egg to also increase mineral absorption." Final Act. 3 (citing Ito ,r,r 1, 3); see also Final Act. 7, 10, 13, 16. 14 a. Claim 1 13 The Examiner interprets "less than about 2500 ppm peptides of about 106 to about 240 kDa" ( emphasis added) recited in the claims on appeal to include zero peptides having a molecular weight of about 106 to about 240 kDa. Final Act. 4--5; see also Final Act. 8, 11, 14, 17. "Since Ito discloses an upper limit of the molecular weight at 100 kDa," the Examiner finds "the disclosure in Ito is commensurate with the molecular weight of peptides at 106 kDa to 240 kDa being zero." Final Act. 5; see also Final Act. 8, 11, 14, 17. 14 The Examiner also finds van Dam discloses treating egg yolks with phospholipase A at a time and temperature to convert at least 50% of the phospholipids to lysophospholipids. Final Act. 3; see also Final Act. 6, 9, 13, 16. The Examiner concludes that it would have been obvious to treat the liquid egg yolk in Hayashi with phospholipase A as disclosed in van Dam. Final Act. 3; see also Final Act. 6, 10, 13, 16. The Appellants do not direct us to any error in the Examiner's factual findings or legal conclusions as to van Dam. 7 Appeal2017-004431 Application 12/059,776 Claim 1 recites a method for preparing a treated egg yolk composition comprising, inter alia, the steps of "combining liquid egg yolk, phospholipase and protease at substantially the same time to treat the liquid egg yolk; and permitting the phospholipase and protease to simultaneously treat the liquid egg yolk." App. Br. 57 ( emphasis added). The Appellants argue that Hayashi describes a method for providing an egg product having heat resistance. The Appellants argue that "though Hayashi et al. use the words 'simultaneous processing' to refer to their process, they are actually describing a sequential process where phospholipase is added first and the protease is added after a time difference." App. Br. 16 (citing Hayashi ,r 9). Therefore, the Appellants argue that Hayashi teaches away from combining egg yolk, phospholipase, and protease at substantially the same time. App. Br. 21. To support their argument, the Appellants direct our attention to Hayashi paragraph 30, which states: It is not necessarily clear why a processed egg product with an excellent heat resistance can be obtained by providing the time difference of the addition of the 2 enzymes. However, the following speculation can be made. More precisely, if both are simultaneously added and processed from the beginning without providing the time difference, the yolk will be digested and inactivated by protease before phospholipase A2 displays its effect. App. Br. 21-22 ( original emphasis omitted). The Examiner "agrees that Hayashi does disclose adding the phospholipase to the egg yolk at a time before the protease is added." Ans. 8 Appeal2017-004431 Application 12/059,776 41 ( emphasis added). 15 However, the Examiner finds that "when the protease is added to the egg yolk to cleave proteins, the phospholipase still is reacting with the lecithin and other phospholipids within the egg yolk." Ans. 41. Thus, the Examiner finds that both the phospholipase and the protease are reacting at the same time during exposure to the egg yolk. Ans. 41. As pointed out above, claim 1 recites the steps of "combining liquid egg yolk, phospholipase and protease at substantially the same time to treat the liquid egg yolk; and permitting the phospholipase and protease to simultaneously treat the liquid egg yolk for a time." App. Br. 57 ( emphasis added). The Appellants define "simultaneously" as follows: "[S]imultaneously" or similar expression is defined as treating an egg yolk mixture by addition of protease and phospholipase enzymes at the same or substantially the same time but also includes sequential addition of protease and phospholipase enzymes provided that no more than 10 percent of the protease reaction or, alternatively, no more than 30 percent of the phospholipase reaction has been completed prior to the addition of the second added enzyme. For example, when protease is the first added enzyme, "simultaneous" treatment includes addition of phospholipase after no more than 10 percent of the protease reaction has been completed. When phospholipase is the first added enzyme, "simultaneous" treatment includes addition of protease after no more [than] about 30 percent of the phospholipase reaction has been completed (i.e., no more than about 30 percent of the phospholipids have been converted to lysophospholipids). Preferably, the phospholipase and protease enzymes are added at the same or substantially the same time. Spec.~ 37. 15 Examiner's Answer dated November 18, 2016. 9 Appeal2017-004431 Application 12/059,776 Based on the Appellants' disclosure, we conclude that one skilled in the relevant art would have reasonably understood the phrase "substantially the same time" in the combining step of claim 1 to mean that phospholipase and protease are either combined at the same time or combined sequentially, wherein no more than 10 percent of the protease reaction or, alternatively, no more than 30 percent of the phospholipase reaction is completed prior to adding the second enzyme (i.e., phospholipase or protease, respectively). According to Hayashi' s process, "phospholipase A2 is added to an egg yolk to start the enzyme processing, and protease is successively added with a time difference set up for a simultaneous enzyme processing." Hayashi ,r 9 ( emphasis added). Hayashi discloses that the time difference is 0.5--4.5 hour. Hayashi ,r 27. On this record, the Examiner does not offer sufficient evidence or technical reasoning to establish that no more than 30 percent of the phospholipase reaction is, or would reasonably appear to be, completed in Hayashi' s process when protease is added to the mixture. Therefore, the Examiner has failed to show, in the first instance, that Hayashi teaches combining liquid egg yolk, phospholipase, and protease at substantially the same time as recited in claim 1. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (Examiner bears the initial burden of establishing a prima facie case of unpatentability). For that reason, the Section 103(a) rejection of claims 1-3, 5, and 31-33 is not sustained. The Examiner does not rely on the remaining prior art of record to cure the deficiency in the Section 103 (a) rejection of claim 1 based on the combination of Hayashi, van Dam, and Ito. Therefore, the Section 103(a) rejections of claims 4, 6-8, and 44 based on Hayashi in view of van Dam 10 Appeal2017-004431 Application 12/059,776 and Ito, and further in view of JP 021, Castle, or Campbell also are not sustained. b. Claim 9 Claim 9 recites a method for preparing an egg-flavored food composition comprising, inter alia, the step of "combining liquid egg yolk, phospholipase and protease at substantially the same time to treat the liquid egg yolk." App. Br. 58 ( emphasis added). Consistent with the Appellants' Specification (Spec. ,r 37), we interpret the phrase "substantially the same time" in the combining step of claim 9 to mean that phospholipase and protease are either combined at the same time or combined sequentially, wherein no more than 10 percent of the protease reaction or, alternatively, no more than 30 percent of the phospholipase reaction is completed prior to adding the second enzyme (i.e., phospholipase or protease, respectively). For the reasons discussed above, the Examiner has failed to establish, in the first instance, that Hayashi teaches, or would reasonably appear to teach, combining liquid egg yolk, phospholipase, and protease at substantially the same time as recited in claim 9. See App. Br. 28 (arguing that claim 9 is patentable for the same reasons claim 1 is patentable). Therefore, the Section 103(a) rejection of claims 9-13, 16, and 34--39 is not sustained. The Examiner does not rely on the remaining prior art of record to cure the deficiency in the Section 103(a) rejection of claim 9 based on the combination of Hayashi, van Dam, and Ito. Therefore, the Section 103(a) rejections of claims 12, 14 and 15 based on Hayashi in view of van Dam and Ito, and further in view of JP 021, Castle or Campbell also are not sustained. 11 Appeal2017-004431 Application 12/059,776 c. Claims 18 and 25 Claims 18 and 25 are product-by-process claims and recite a food flavoring composition and a food product, respectively, comprising "a peptide mixture comprising at least about 6000 ppm peptides less than about 13 kDa, at least about 2500 ppm peptides of about 14 to about 105 kDa, and less than about 2500 ppm peptides of about 106 to about 240 kDa, with ppm based on the treated egg yolk." App. Br. 59, 61. The Appellants argue that neither Hayashi nor van Dam describes or suggests the claimed peptide mixture and argue that the Examiner relies on Ito to "fill[] in the blank regarding the molecular weight achieved upon treatment of egg yolk with protease." App. Br. 28-29 (citing Final Act. 42). The Appellants argue that the peptide sizes described in Ito, however, cannot be compared to the peptide sizes obtained in other processes due to a number of steps in Ito's process. App. Br. 29. In particular, the Appellants direct our attention to pargraph 9 of the Second Topinka Declaration, which states: 16 Ito et al. use a defatting step (which will remove some peptides [from egg yolk]), conduct protease treatment on a substrate that is very different from egg yolk that has not been defatted, and use a filtration step to collect only the filtrate including a large percentage of very small peptides. All of these differences will significantly impact the molecular weights of the peptides collected at the end of the process. Therefore, Ito et al.' s peptide sizes cannot be considered to be representative of the peptide sizes that would be achieved upon treatment of egg yolk with protease in other processes. App. Br. 30 ( emphasis omitted) ( quoting Second Topinka Declaration~ 9). 16 Declaration of John B. Topinka dated June 11, 2015. 12 Appeal2017-004431 Application 12/059,776 The Appellants also argue there is no rational reason to modify Hayashi' s method to include Ito's protease treatment. In that regard, the Appellants argue that the Examiner provides no reason why one of ordinary skill in the art "would look to a reference like Ito et al. ( which talks about preparing an egg yolk product that promotes mineral absorption) and combine that with references about heat stability (Hayashi et al. and van Dam)." App. Br. 32. The Appellants' arguments are not persuasive of reversible error. The Examiner is not modifying Hayashi' s process with the steps of Ito's process. Ans. 43. Rather, the Examiner finds that the amounts and molecular weights of the peptides produced in Hayashi' s process are the result of treating liquid egg yolk with a protease, including a protease having endo- and exo- peptidase activity, 17 for a time and temperature, wherein the time and temperature affect the result. 18 Final Act. 9, 12-13. The Appellants do not direct us to any harmful error in the Examiner's finding. 17 Hayashi discloses that proteases include protease A, N, P, S, M, and B, jlavorzyme, alkalase, punchidase NP-2, punchidase HP, Aroaze AP- I 0, denapsin IOP, denazyme AP, bioprase SP-I5FG, and edible purified papain. Hayashi ,r 22. The Appellants do not direct us to any error in the Examiner's finding that flavorzyme has endo- and exo-peptidase activities. Rather, the Appellants argue that Hayashi lists flavorzyme as "among about fourteen other proteases but do[ es] not provide any reason to select it or provide any teaching that selection of that enzyme would provide a better result than any of the other enzymes." App. Br. 17. Contrary to the Appellants' argument, one of ordinary skill in the art would have understood that each of the proteases listed in Hayashi would be suitable in the disclosed process. Moreover, Hayashi need not disclose that flavorzyme provides a better result than any of the other listed proteases to establish obviousness. 18 See Boesch, 617 F.2d at 276 (discovery of an optimum value of a result effective variable is ordinarily within the skill in the art). 13 Appeal2017-004431 Application 12/059,776 The Examiner relies on Ito to show that one of ordinary skill in the art would have been motivated to adjust the time and temperature in Hayashi's process to produce lower molecular weight peptides (i.e., peptides having a molecular weight lower than 100 kDa) for the purpose of enhancing mineral absorption. Final Act. 10, 13; Ans. 45. Significantly, the Appellants do not direct us to any evidence showing that varying the time and temperature in Hayashi' s process to produce lower molecular weight peptides would have been outside the level of ordinary skill in the art at the time of the Appellants' invention. In that regard, the Examiner finds, and the Appellants do not dispute, that Hayashi discloses time and temperature ranges that overlap the ranges recited in Appellants' claim 19. Ans. 45. For the reasons set forth above, the Section 103(a) rejection of claims 18 and 25 based on the combination of Hayashi, van Dam, and Ito is sustained. Likewise, the Section 103(a) rejection of claims 19-23 and 26-28 based on the combination of Hayashi, van Dam, and Ito, and the Section 103(a) rejections of claims 21, 23 and 24 based on Hayashi in view of van Dam and Ito, and further in view of JP 021, Castle, or Campbell are sustained. d. Claim 30 Claim 30 recites a food flavoring composition comprising, inter alia, a mixture of egg yolk peptides comprising "at least about 6000 ppm peptides less than about 13 kDa, at least about 2500 ppm peptides of about 14 to about 105 kDa, and less than about 2500 ppm peptides of about 106 to about 240 kDa, with ppm based on the treated egg yolk." App. Br. 61. 14 Appeal2017-004431 Application 12/059,776 The Appellants argue that the Examiner's rejection of claim 30 is erroneous for substantially the same reasons that the Examiner's rejection of claims 18 and 25 is erroneous. See App. Br. 33-37. As discussed above, the Appellants' arguments do not show reversible error in the Examiner's rejection of claims 18 and 25 based on the combination of Hayashi, van Dam, and Ito. Therefore, the§ 103(a) rejection of claim 30 based on the combination of Hayashi, van Dam, and Ito is sustained. 2. Rejections (5}-{8) The Examiner finds JP 021 discloses a process of treating a liquid egg yolk with a protease and phospholipase simultaneously, wherein no lag time exists between the addition of the protease and phospholipase. Final Act. 21; see also Final Act. 24, 27-28, 31, 34. The Examiner finds JP 021 also discloses food products containing the treated liquid egg, wherein the enzyme reaction prevents bitterness and improves emulsification properties. Final Act. 24; see also Final Act. 21, 28, 31, 34. The Examiner, however, finds JP 021 does not disclose using proteases having both endo- and exo- peptidase activities. Final Act. 22; see also Final Act. 24, 28, 31, 34. The Examiner finds Ohta discloses a method of enhancing the salty taste in food by hydrolyzing protein. The Examiner finds Ohta uses proteases having exo- and endo-peptidase activities to produce a savory flavor and a reduced bitter taste. Final Act. 22; see also Final Act. 25, 28, 31, 34. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to substitute the protease in JP 021 with Ohta' s protease "in order to provide hydrolysis such that the bitterness is reduced 15 Appeal2017-004431 Application 12/059,776 and a more savory flavor is produced." Final Act. 22; see also Final Act. 26, 29, 32, 35. The Examiner also finds JP 021 does not disclose that the process produces the peptide mixture recited in the claims on appeal. 19 Final Act. 21-22; see also Final Act. 25, 28, 31, 34. Therefore, the Examiner turns to Ito. The Examiner finds: Ito discloses treating egg yolk with a protease in order to reduce at least 80% of the protein in the yolk to a molecular weight of 2000 (Da i.e. 2 kDa) or less [claims 1 and 2; para 0001]. Ito discloses a peak molecular weight from 100 to 100,000 (Da i.e. 0.1 kDa to 100 kDa) and that the molecular weight of 2000 Da or less was 85.3% of the peak [para 0013]. Therefore the molecular weight ... above 2,000 Dato 100,000 (2 to 100 kDa) was the remaining 14.7%. Final Act. 22; see also Final Act. 25, 28-29, 32, 35. The Examiner finds that the amounts and molecular weights of the peptides disclosed in Ito are either commensurate with or overlap the amounts and molecular weights of the peptides recited in the claims on appeal. 2° Final Act. 23-24; see also 19 In the Section 103(a) rejection of claim 25, the Examiner, however, finds "the amount and molecular weights of the peptides produced are a result of treating a liquid egg with a protease for a time and temperature and that time and temperature appear to be the variables affecting the result." Final Act. 32. "[S]ince the application of the requisite enzymes for a particular time and temperature is known in the art and has also been disclosed in the JP'021 and Ohta references," the Examiner concludes that "it would have been obvious to one of ordinary skill in the art to use an optimum value to obtain his or her desired result." Final Act. 32. The Appellants do not direct us to any evidence to the contrary. 20 The Examiner interprets "less than about 2500 ppm peptides of about 106 to about 240 kDa" recited in the claims on appeal to include zero peptides having a molecular weight of about 106 to about 240 kDa. Final Act. 24; see also Final Act. 27, 30, 34, 36. "Since Ito discloses an upper limit of the 16 Appeal2017-004431 Application 12/059,776 Final Act. 26-27, 29-30, 33-34, 36. Ito discloses that the peptide mixture promotes the efficient absorption of calcium, iron, magnesium, zinc, copper, and other minerals that may be lacking in the modem diet. Ito ,r 3. The Examiner concludes that "it would have been obvious to treat the egg yolk as in Ito in order to reduce most of the protein to molecular weights below 100 kDa in order for the egg to also increase mineral absorption." Final Act. 23 (citing Ito ,r,r 1, 3); see also Final Act. 26, 29, 33, 35. 21 a. Claim 1 The Appellants recognize that Ohta discloses a protease with endo- and exo-peptidase activities. The Appellants, however, argue that Ohta does not disclose treating egg yolk but rather only mentions egg white. App. Br. 39. Therefore, the Appellants argue that Ohta "do[ es] not provide any motivation to use protease having endo- and exo-peptidase activities on the egg yolk of JP '021." App. Br. 39. The mere fact that Ohta discloses treating an egg white and JP 021 discloses treating an egg yolk, wherein both egg white and egg yolk are known to contain protein, does not demonstrate reversible error. There is no molecular weight at 100 kDa," the Examiner finds "the disclosure in Ito is commensurate with the molecular weight of peptides at 106 kDa to 240 kDa being zero." Final Act. 24; see also Final Act. 27, 30, 34, 36. 21 The Examiner also finds van Dam discloses treating egg yolks with phospholipase A at a time and temperature to convert at least 50% of the phospholipids to lysophospholipids. Final Act. 22; see also Final Act. 25, 28, 32, 35. The Examiner concludes that it would have been obvious to treat the liquid egg yolk in Hayashi with phospholipase A as disclosed in van Dam. Final Act. 22; see also Final Act. 25, 29, 32, 35. The Appellants do not direct us to any error in the Examiner's factual findings or legal conclusions as to van Dam. 17 Appeal2017-004431 Application 12/059,776 dispute on this record that JP 021 and Ohta are both interested in reducing bitter taste in foods, such as mayonnaise. JP 021, at ,r 26; Ohta ,r 107. Therefore, one of ordinary skill in the art, following the teaching in JP 021 to reduce bitter taste, would have been motivated to use proteases known to form peptides that reduce bitter taste, such as the proteases disclosed in Ohta. Moreover, the evidence of record suggests that one of ordinary skill in the art would have had a reasonable expectation of success in treating an egg yolk with the proteases disclosed in Ohta, including a protease having endo- and exo-peptidase activity, to yield peptides that reduce bitterness. See Ans. 46; Ohta ,r 86. The Appellants also argue that Ohta describes making a salty flavor from a variety of protein starting materials. App. Br. 39. The Appellants argue: As noted in paragraph 3 of the First Topinka Declaration,[22J generation of a new, yet appealing, flavor would have been unacceptable. Instead, to be useful in mayonnaise products, one would need to produce an "eggy" flavor. (See First Topinka Declaration, ,r 3.) Therefore, there would have been no motivation to substitute the protease of JP '021 with a protease from Ohta et al., particularly when endopeptidase is preferred in Ohta et al, to provide the claimed method. App. Br. 39. The Appellants' arguments are not persuasive of reversible error. As found by the Examiner, an "eggy" flavor is subjective. Ans. 46. Nonetheless, both JP 021 and Ohta disclose that peptides formed by treating egg yolk and egg white, respectively, with protease may be added to 22 Declaration of John B. Topinka dated December 15, 2010. 18 Appeal2017-004431 Application 12/059,776 mayonnaise (JP 021, at ,r 26; Ohta ,r 107), thus motivating one of ordinary skill in the art to substitute the protease of JP 021 with Ohta' s protease. The fact that Ohta may prefer endopeptidase does not weigh against the Examiner's conclusion of obviousness. The Examiner finds, and the Appellants do not dispute, that Ohta also discloses protease having endo- and exo-peptidase activity. 23 Final Act. 22 ( citing Ohta ,r,r 86, 87); see also Ohta ,r 83-85. The Appellants do not direct us to any harmful error in the Examiner's finding that the amounts and molecular weights of peptides obtained by Ito's process are either commensurate with or overlap the amounts and molecular weights of peptides in the claimed peptide mixture. Final Act. 23-24. Rather, the Appellants argue that the peptide sizes disclosed in Ito should not be used as evidence of the peptide sizes obtained using other protease treatments of egg yolk given the likely loss of peptides in several steps of Ito's process (e.g., defatting step and filtration steps). App. Br. 43--44. The Appellants also argue that "there is no rational reason provided as to why a person of ordinary skill in the art would look to a reference like Ito et al." App. Br. 44. More specifically, the Appellants argue that "[i]t is unclear why one of ordinary skill in the art looking to improve emulsification as in JP '021 would also then decide to increase mineral absorption in food as in [Ito]." App. Br. 44. Contrary to the Appellants' arguments, the Examiner is not relying on Ito to show the peptide sizes obtained using the process disclosed in JP 021. 23 See In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) ("all disclosures of the prior art, including unpreferred embodiments, must be considered"). 19 Appeal2017-004431 Application 12/059,776 Rather, the Examiner is proposing to treat the egg yolk in JP 021 using Ito's process. See Final Act. 23 ( concluding that "it would have been obvious to treat the egg yolk [in JP 021] as in Ito"). The Examiner finds that one of ordinary skill in the art would have been motivated to modify the process of JP 021 as proposed "in order for the egg to also increase mineral absorption." Final Act. 23 ( citing Ito ,r,r 1, 3 ). In that regard, Ito discloses that the lack of minerals such as calcium, iron, magnesium, zinc, and copper is a problem associated with the widespread consumption of processed foods in the modem diet. Ito ,r,r 2, 3. For the reasons set forth above, the Section 103 (a) rejection of claims 1-5 and 31-33 based on JP 021 in view of Ohta, van Dam, and Ito is sustained. Likewise, the Section 103 (a) rejections of claims 6-8 and 44 based on JP 021 in view of Ohta, van Dam, and Ito, and further in view of Castle or Campbell are sustained. b. Claim 9 The Appellants argue that claim 9 and dependent claims 10-16 and 34--39 are patentable for the same reasons that claim 1 is patentable. App. Br. 45. For the reasons discussed above, the Appellants' arguments do not show reversible error in the Examiner's Section 103(a) rejection of claim 1 based on JP 021 in view of Ohta, van Dam, and Ito. Therefore, the Section 103(a) rejection of claims 9-13, 16, and 34--39 based on JP 021 in view of Ohta, van Dam, and Ito is sustained. Likewise, the Section 103(a) rejections of claims 14 and 15 based on JP 021 in view of Ohta, van Dam, and Ito, and further in view of Castle or Campbell also are sustained. C. Claims 18, 25, and 30 20 Appeal2017-004431 Application 12/059,776 The Appellants argue that the combination of JP 021 and Ito is improper in the§ 103(a) rejection of claims 18, 25, and 30 for the same reasons that the combination is improper in the Section 103(a) rejection of claim 1. See App. Br. 45-55. For the reasons discussed above, the Appellants' arguments do not demonstrate reversible error in the Section 103(a) rejection of claim 1 based on the combination of JP 021, Ohta, van Dam, and Ito. Therefore, the Section 103(a) rejection of claims 18, 25, and 30 based on JP 021 in view of Ohta, van Dam, and Ito is sustained. Likewise, the Section 103(a) rejection of claims 19-22, 26, and 28 based on JP 021 in view of Ohta, van Dam, and Ito, and the Section 103(a) rejections of claims 23, 24, 27, and 28 based on JP 021 in view of Ohta, van Dam, and Ito, and further in view of Castle, Campbell, or allrecipes.com are sustained. C. DECISION The Examiner's decision rejecting claims 1-3, 5, 9-13, 16, and 31-39 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito is reversed. The Examiner's decision rejecting claims 18-23, 25-28, and 30 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito is affirmed. The Examiner's decision rejecting claims 4 and 12 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of JP 021 is reversed. The Examiner's decision rejecting claim 21 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of JP 021 is affirmed. 21 Appeal2017-004431 Application 12/059,776 The Examiner's decision rejecting claims 6 and 14 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Castle is reversed. The Examiner's decision rejecting claim 23 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Castle is affirmed. The Examiner's decision rejecting claims 7, 8, 15, and 44 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Campbell is reversed. The Examiner's decision rejecting claim 24 under 35 U.S.C. § 103(a) as unpatentable over Hayashi in view of van Dam and Ito, and further in view of Campbell is affirmed. The Examiner's decision rejecting claims 1-5, 9-13, 16, 18-22, 25, 26, 28, and 30-39 under 35 U.S.C. § 103(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito is affirmed. The Examiner's decision rejecting claims 6, 14, and 23 under 35 U.S.C. § 103(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of Castle is affirmed. The Examiner's decision rejecting claims 7, 8, 15, 24, and 44 under 35 U.S.C. § 103(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of Campbell is affirmed. The Examiner's decision rejecting claims 27 and 28 under 35 U.S.C. § 103(a) as unpatentable over JP 021 in view of Ohta, van Dam, and Ito, and further in view of allrecipes.com 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). 22 Appeal2017-004431 Application 12/059,776 AFFIRMED 23 Copy with citationCopy as parenthetical citation