Ex Parte Zehnacker et al

Patent Trial and Appeal Board

Feb 27, 2018

13511540 (P.T.A.B. Feb. 27, 2018)

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.
13/511,540 05/23/2012 Olivier Zehnacker 399048US99PCT 4230
22850 7590 03/01/2018
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/01/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLIVIER ZEHNACKER, THOMAS TACKE, THOMAS HAAS,
NICOLE BRAUSCH, and MARC BECKER
Appeal 2017-005731
Application 13/511,540
Technology Center 1700
Before ROMULO H. DELMENDO, WESLEY B. DERRICK, and
DEBRA L. DENNETT, Administrative Patent Judges.
DELMENDO, Administrative Patent Judge.
DECISION ON APPEAL
The Applicants (hereinafter “Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Primary Examiner’s decision to reject claims 2—8 and 13—
19.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 The Appellants identify the real party in interest as “Evonik Degussa
GMBH” (Appeal Brief filed May 9, 2016, hereinafter “Br.,” 2).
2 Br. 4—14; Non-Final Office Action entered November 24, 2015, hereinafter
“Non-Final Act.,” 3—9; Examiner’s Answer entered December 5, 2016,
hereinafter “Ans.,” 2—13.
Appeal 2017-005731
Application 13/511,540
I. BACKGROUND
The subject matter on appeal relates to a method for producing a
sweetener (Specification filed May 23, 2012, hereinafter “Spec.,” 1,11. 5—6).
Representative claim 2 is reproduced from the Claims Appendix to the
Appeal Brief (Appeal Br. 15), with key limitations emphasized, as follows:
2. A method of producing a dietetic sweetener, the
method comprising reacting a carbohydrate mixture comprising
isomaltulose and sucrose with hydrogen to obtain a dietetic
sweetener,
wherein:
the reaction occurs in the presence of at least one catalyst
comprising ruthenium, at least one oxide of ruthenium, or a
mixture thereof
the at least one catalyst is immobilized on an oxide-
containing support comprising Al;
the carbohydrate mixture comprises at least 0.2 wt.% of
the sucrose, relative to a dry weight of the carbohydrate mixture;
and
the method does not include a step of separating sucrose
from the carbohydrate mixture.
II. REJECTIONS ON APPEAL
On appeal, the Examiner maintains several rejections under pre-AIA
35 U.S.C. § 103(a), as follows:
A. Claims 2—6, 13—16, 18, and 19 as unpatentable over Weichert3
in view of Goldscher4 and Hirth et al.5 (hereinafter “Hirth”);
B. Claims 7 and 8 as unpatentable over Weichert in view of
Goldscher and Hirth, and further in view of Gubitosa et al.6
3 WO 2008/077640 Al, published July 3, 2008.
4 US 5,679,781, issued October 21, 1997.
5 US 2008/0051573 Al, published February 28, 2008.
6 US 5,326,912, issued July 5, 1994.
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Application 13/511,540
(hereinafter “Gubitosa”); and
C. Claim 17 as unpatentable over Weichert in view of Goldscher
and Hirth, and further in view of Heinen et al.7
(Ans. 2—13; Non-Final Act. 3—9.)
III. DISCUSSION
The Appellants rely on the same arguments for all three rejections (Br.
5—13). Therefore, we address the rejections together. Additionally, unless a
claim is separately argued pursuant to the requirements set forth in 37 C.F.R.
§ 41.37(c)(l)(iv), all claims stand or fall with representative claim 2.
With respect to claim 2, the Examiner finds that Weichert describes a
method for producing a sweetener comprising reacting a mixture of
isomaltulose and sucrose in the presence of a catalyst (Ans. 2). The
Examiner acknowledges that Weichert’s disclosure differs from claim 2’s
subject matter in that the reference does not describe a ruthenium and/or
ruthenium oxide catalyst immobilized on an Al oxide support (id.). To
resolve this difference, the Examiner relies on Goldscher and Hirth (id. at 2—
3). In particular, the Examiner finds that Hirth describes a method in which
“at least one mono-, di-, oligo-, and/or polysaccharides containing at least
one glucose and/or fructose unit, which by definition includes disaccharides
isomaltulose and sucrose[,] are hydrogenated to sugar alcohols comprising
sorbitol and mannitol in the presence of a ruthenium/ ruthenium oxide mixed
catalyst on an aluminum oxide support” (id. at 3). The Examiner finds that
Hirth teaches various advantages in using a ruthenium/ruthenium oxide
catalyst immobilized on an Al oxide support, including complete
7 Annemieke W. Heinen, et al., “Hydrogenation of Fructose on Ru/C
Catalysts,” 328 Carbohydrate Research 449-457 (2000).
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Application 13/511,540
hydrogenation of a disaccharide as exemplified by sucrose (id.). Based on
these findings, the Examiner concludes that a person of ordinary skill in the
art would have been prompted to use Hirth’s Ru-based catalyst immobilized
on an aluminum oxide support in Weichert to obtain the advantages
disclosed in Hirth (id. at 3, 11). Regarding the sucrose content recited in the
claim, the Examiner finds that Weichert discloses a sucrose content of 0.1 %
(dry matter) in Example 4 but that higher contents in the carbohydrate
mixture were known, as shown in the Appellants’ own relied-upon
evidentiary document (Handbuch Sufiungsmittel: Eigenschaften und
Anwendung 340-359, 342 (2007), hereinafter “Handbook”) (id. at 10).
Regarding claim 3, which recites “the carbohydrate mixture comprises 0.2
wt.% to 15 wt.% of the sucrose relative to a dry weight” (Br. 15), the
Examiner concludes that “[i]t would have been obvious to one of ordinary
skill in the art to consider hydrogenating mixtures of isomaltulose and
sucrose with higher content of sucrose, depending upon the desired
composition and sweetening potential of the hydrogenated product” (Ans.
4).
The Appellants contend that “[n]one of the cited documents suggest
the invention, which is to simplify the process of producing a sweetener” by
“eliminating the removal of the residual sucrose before hydrogenation” (Br.
4—5). According to the Appellants, it was common knowledge that sucrose
had to be separated from an isomaltulose-containing carbohydrate mixture
prior to hydrogenation and that Weichert would also have required such a
separation (id. at 5—8) (relying on Spec. 2-4 and Inventor Olivier
Zehnacker’s Declaration executed November 15, 2015 (Evidence
Appendix)). The Appellants further argue that “the Raney Ni catalysts used
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Application 13/511,540
in Weichert have been demonstrated to be incapable of reducing sucrose on
numerous occasions (example 5 of the present application)” and that “the
temperatures used in Example 4 of Weichert would have led to the
caramelisation of sucrose on the catalyst surface, which may poison the
catalyst” (Br. 8). Regarding claim 3, the Appellants acknowledge that
although it “may have been possible” to use higher sucrose contents for the
reason provided by the Examiner, “the problem clearly described in the
application (the need to separate/remove the unreacted sucrose) is
exasperated and considerably so when the amount of sucrose reaches the
upper limits of [cjlaim 3” (id. at 11). Finally, the Appellants argue that the
selection of alumina as the support for the Ru-containing catalyst provides
unexpected results and that the Examiner’s failure to consider this evidence
constituted reversible error {id. at 11—12) (relying on Inventor Marc
Becker’s Declaration executed January 26, 2015 (Evidence Appendix)).
The Appellants’ arguments fail to identity any reversible error in the
Examiner’s rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Weichert teaches a method for producing sugar alcohols comprising
hydrogenating a solution including, inter alia, 85.8% (dry matter)
isomaltulose and 0.1% (dry matter) sucrose using a nickel catalyst (Degussa,
BK 111 W) at 130°C (Weichert, 3,1. 3^1,1. 30; 14,1. 1-15,1. 9 (Example
4)).
As the Examiner finds (Ans. 3; Non-Final Act. 4), Hirth describes a
method for producing sugar alcohols (sorbitol and mannitol) comprising
hydrogenating at least one mono-, di-, oligo- and/or polysaccharide
containing at least one glucose and/or fructose unit using the same supported
catalyst (i.e., ruthenium/ruthenium oxide catalyst immobilized on an
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aluminum oxide support) recited in claim 2 (Hirth, || 14, 16). In this regard,
the Appellants do not dispute the Examiner’s finding that Hirth’s disclosure
would have suggested the hydrogenation of a mixture that includes
isomaltulose (compare Br. 12—13 with Ans. 3; Non-Final Act. 4).
According to Hirth, the ruthenium/ruthenium oxide catalyst immobilized on
an aluminum oxide support provides various advantages including complete
educt conversion, high selectivity, activity maintained over a very long
period of time, non-toxicity, and easier handling {id. 116). In Example 7,
Hirth discloses that saccharose (sucrose) concentrations in the reactor of 5%
at 200°C and 250°C resulted in substantially complete conversion of the
sucrose {id. H 63—68).
Given these teachings, we discern no reversible error in the
Examiner’s conclusion that a person ordinary skill in the art would have
been prompted to use Hirth’s supported catalyst (namely, a
ruthenium/ruthenium oxide catalyst immobilized on an aluminum oxide
support) in Weichert’s process with a reasonable expectation of achieving
substantially complete conversion of the starting reactant mixture including
sucrose and obtaining other benefits, as disclosed by Hirth. Moreover, a
person of ordinary skill in the art would have found it obvious to perform
Hirth’s process to hydrogenate a mixture including, e.g., isomaltulose and up
to 5% of sucrose—as is typically used in the prior art as evidenced by the
Handbook (Table 7.2-1) and Hirth itself—to form sugar alcohols. Although
the Zehnacker Declaration asserts that removal of sucrose would have been
necessary (Zehnacker Deck 111), such an assertion is directly rebutted by
objective experimental evidence disclosed in Hirth. Therefore, the
Examiner’s prima facie case of obviousness against claims 2 and 3 is amply
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Application 13/511,540
supported by the evidence. In reSkoll, 523 F.2d 1392, 1397 (CCPA 1975)
(“Expected beneficial results are evidence of obviousness of a claimed
invention, just as unexpected beneficial results are evidence of
unobviousness.”).
We find no merit in the Appellants’ argument that “the temperatures
used in Example 4 of Weichert would have led to the caramelisation of
sucrose on the catalyst surface, which may poison the catalyst” (Br. 8). The
Appellants do not direct us to any objective evidence in support of this
contention. Again, the Appellants’ contention is directly refuted by Hirth’s
teachings.
Finally, we detect no error in the Examiner’s assessment of the
proffered evidence of unexpected results (Ans. 10). The Becker Declaration
states that “[t]he experiments [described in the Declaration] show that
surprisingly [ajluminumoxide gives the best saccharose use-up in the
reaction when compared to oxides of Si and Ti” (Becker Decl. 13). Hirth,
however, discloses the same catalyst for hydrogenating a mixture containing
significant amounts of sucrose to achieve substantially complete sucrose
conversion. Therefore, the results cannot be said to have been unexpected
over the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”); Skoll, 523 F.2d at 1398 (“[W]here appellant has
failed to present evidence to rebut the specific suggestion of the prior art, we
conclude that the affidavit is inadequate to overcome the showing of
obviousness made by the prior art.”).
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For these reasons, and those given by the Examiner, we uphold the
Examiner’s rejections.
IV. SUMMARY
Rejections A through C are sustained. The Examiner’s decision to
reject claims 2—8 and 13—19 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).
AFFIRMED
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