Nakano, Masatoshi et al.

Patent Trials and Appeals Board

Mar 3, 2020

13260772 - (D) (P.T.A.B. Mar. 3, 2020)

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.
13/260,772 09/28/2011 Masatoshi Nakano 146030.146038-US 7703
24335 7590 03/03/2020
WARNER NORCROSS + JUDD LLP
INTELLECTUAL PROPERTY GROUP
1500 WARNER BUILDING
150 OTTAWA AVE NW
GRAND RAPIDS, MI 49503
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/03/2020 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):
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PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
Ex parte MASATOSHI NAKANO,
MIKA ARIFUKU, HARUMI MIZUKOSHI,
SUSUMU MIZUSAWA, KAZUMASA KIMURA,
and MASAHIKO ITO
_______________
Appeal 2019–003883
Application 13/260,772
Technology Center 1700
_______________
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 3, 11, 12, 14, and 15 of Application

1 In our Decision, we refer to the Specification filed September 28, 2011
(“Spec.”) of Application 13/260,772 (“the ’772 Application”); the Non-Final
Office Action dated September 5, 2018 (“Non-Final Act.”); the Appeal Brief
filed November 19, 2018 (“Appeal Br.”); the Examiner’s Answer dated
March 8, 2019 (“Ans.”); and the Reply Brief filed April 18, 2019 (“Reply
Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Kabushiki Kaisha Yakult Honsha as
the real party in interest. Appeal Br. 2.
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Application 13/260,772

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13/260,772. See Appeal Br. 6; Non-Final Act. 1. We have jurisdiction
under 35 U.S.C. § 6.
For the reasons set forth below, we REVERSE.
BACKGROUND
The ’772 Application relates to (i) a method for culturing lactic acid
bacteria, and (ii) a food and drink product comprising a lactic acid bacteria
culture obtained by this method. Spec. ¶ 1.
The ’772 Application describes that lactic acid bacteria is frequently
cultured in a milk medium to produce fermented dairy foods such as yogurt,
lactic acid bacteria beverages, cheese, etc. Id. ¶ 3. Milk quality, however, is
said to be highly variable, which may detrimentally affect the stability of
lactic acid bacteria in fermented dairy products. Id. ¶ 8, 9. The ’772
Application describes that lactic acid bacteria cultured in a milk medium
having a free phosphoric acid concentration of less than 0.25 wt%, along
with phosphate added thereto, produces fermented milk products having
desirable product stability. Id. ¶ 9.
Claims 1, 11, and 12 are representative of the ’772 Application’s
claims and are reproduced below from the Claims Appendix of the Appeal
Brief with key limitations emphasized.
1. A method of making a lactic acid bacteria beverage by
fermenting lactic acid bacteria comprising the steps of:
providing a medium comprising a skim milk powder, the
skim milk powder having a free phosphoric acid concentration
of less than 0.25 wt% based on the weight of the skim milk
powder and wherein a protein content per solid nonfat milk
component (SNF) of the milk ingredient is less than 35 wt%;
selecting a phosphate compound for addition to said
medium;
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determining a free phosphoric acid concentration after
the addition of the phosphate compound based on the weight of
the skim milk powder, wherein the free phosphoric acid
concentration is between about 0.25 wt% and about 0.5 wt%
based on the weight of the skim milk powder;
determining an amount of the phosphate compound by
calculation using the formula

wherein the skim milk powder concentration in the
medium is between 5 wt[]% and 30 wt%; adding the
phosphate compound in the amount determined as above
to the medium; and inoculating lactic acid bacteria to the
medium,
wherein the lactic acid bacteria is Lactobacillus casei,
and wherein a pH of the medium subsequent to adding the
phosphate compound is about 3.6.
11. A fermented milk product prepared by the method of
making a lactic acid bacteria according to claim 1.
12. A lactic acid bacteria beverage prepared by the method of
making a lactic acid bacteria according to claim 1.
Appeal Br. 30–31, 32 (Claims App.).
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REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Name Reference Date
Holbrook et al.
(“Holbrook”)
US 4,376,791 Mar. 15, 1983
Irvine et al.
(“Irvine”)
US 4,692,338 Sept. 8, 1987
Ogasawara et al.
(“Ogasawara”)
US 6,759,067 B1 July 6, 2004
Murakami et al.
(“Murakami”)
JP 2001-095484 3 April 10, 2001
S. Kim et al., “Optimization of Growth and Storage Conditions
for Lactic Acid Bacteria in Yogurt and Frozen Yogurt,” J.
Korean Soc. Appl. Biol. Chem., 52(1), 76–79 (2009)
(hereinafter “Kim”).
REJECTIONS
The Examiner maintains the following rejections:4, 5
1. Claims 11 and 12 under 35 U.S.C. § 102(b) as anticipated by
Ogasawara. Non-Final Act. 4–5.

3 The Examiner relies on the machine translation of record, to which
Appellant does not object. Non-Final Act. 4; Appeal Br. generally. Thus,
we will rely on and cite to the machine translation.
4 Because this application claims priority to an application filed before the
March 16, 2013 effective date of the America Invents Act, we refer to the
pre-AIA version of the statutes.
5 In the Answer, the Examiner withdrew the rejections of (i) claims 1, 3, 14,
and 15 under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement, and (ii) claims 1, 3, 11, 14, and 15 under 35
U.S.C. § 112, second paragraph, as indefinite. Ans. 9.
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2. Claims 1, 11, 12, 14, and 15 under 35 U.S.C. § 103(a) as obvious
over Kim, in view of Murakami, Ogasawara, and further in view of
Holbrook. Non-Final Act. 6–10.
3. Claim 3 under 35 U.S.C. § 103(a) as obvious over Kim, in view of
Murakami, Ogasawara, Holbrook, and further in view of Irvine.
Non-Final Act. 10–11.
DISCUSSION
Ground 1: Rejection of claims 11 and 12 as anticipated by
Ogasawara
Appellant argues claims 11 and 12 as a group. See Appeal Br. 13–15.
Our decision regarding Ground 1 turns on whether the prior art discloses
each of the claimed compositions, which are produced by the step of “adding
the phosphate compound” in a pre-determined amount. See Appeal Br. 30–
31, 32 (Claims App.).
The Examiner finds, inter alia, that Ogasawara’s method of
reconstituting a skim milk powder in a medium and fermenting the medium
with L. casei results in a fermented milk drink, which is a lactic acid
beverage having the requisite pH. Non-Final Act. 4 (citing Ogasawara
Abstract; 4:35–67; 6:23–54; Test Examples 1–3; Table 6); see also Non-
Final Act. 5. The Examiner finds Ogasawara anticipates claims 11 and 12
because “there is no evidence that the recited process [of claim 1] produces a
product that is materially different from what is disclosed in” Ogasawara.
Non-Final Act. 4; see id. 5.
Appellant distinguishes Ogasawara’s fermented milk drink, which
requires hemicellulose, from the unexpectedly stable compositions of claims
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11 and 12. Appeal Br. 13–14 (asserting that “the beverages of claims 11 and
12 do not recite the addition of water-soluble hemicellulose.”). Appellant
additionally argues that Ogasawara does not disclose the “addition of any
phosphate compound to any composition” and “nowhere so much as even
mentions ‘phosphate.’” Id. 14.
The Examiner responds by arguing that “claims 11 and 12 do not
exclude the presence of hemicellulose.” Ans. 10. The Examiner’s position
is persuasive as claim 1 contains the open transitional term “comprising,”
which permits elements in addition to those specified in the recited medium
of the claim. In re Crish, 393 F.3d 1253, 1257 (Fed. Cir. 2004). We agree
with the Examiner that “unexpected results are not sufficient to overcome a
[§ 102(b)] rejection.” Ans. 10.
However, the Examiner does not respond to Appellant’s remaining
argument. Specifically, the Examiner does not rebut Appellant’s assertion
that Ogasawara is silent regarding the fermented milk drink’s phosphate
content. Id.; Appeal Br. 14.
The Examiner must establish a prima facie case of anticipation under
§ 102 by showing, as a matter of fact, that all elements arranged as specified
in a claim are disclosed within the four corners of a reference, either
expressly or inherently, in a manner enabling one skilled in the art to
practice an embodiment of the claimed invention without undue
experimentation. ClearValue, Inc. v. Pearl River Polymers, Inc., 668 F.3d
1340, 1344 (Fed. Cir. 2012); Sanofi-Synthelabo v. Apotex Inc., 550 F.3d
1075, 1083 (Fed. Cir. 2008).
On this record, the Examiner has not made any findings that
Ogasawara describes the fermented milk product’s or lactic acid bacteria
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beverage’s phosphate content. The Examiner, furthermore, has not
adequately explained how Ogasawara’s product or beverage is identical to
the claimed compositions, which result from the addition of phosphate.
Thus, the Examiner has not established that all of the elements, as specified
in claims 11 and 12, are disclosed within Ogasawara, either expressly or
inherently.
We do not sustain the rejection of claims 11 and 12 as anticipated by
Ogasawara.
Ground 2: Rejection of claims 1, 11, 12, 14, and 15 as obvious over
Kim, in view of Murakami, Ogasawara, and further in view of
Holbrook
Appellant argues patentability of claims in this rejection on the basis
of limitations recited in claim 1. See Appeal Br. 15–29. We select claim 1
as representative. Claims 11, 12, 14, and 15 stand or fall with claim 1. See
37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds Kim teaches, inter alia, a lactobacillus starter
culture comprising skim milk powder and potassium phosphate. Non-Final
Act. 6. According to the Examiner, “Kim discloses that the addition of
phosphate slows the dropping of the pH and increased the growth of the
bacteria.” Id.
The Examiner finds that Kim does not disclose: (i) that “the free
phosphoric acid concentration of the skim milk powder is less than .25%”
and (ii) the step of “determining an amount of the phosphate compound by
calculation using the formula . . . recited in claim 1[,] wherein the free
phosphoric acid concentration in skim milk powder after the addition of
phosphate compound based on the weight of the skim milk powder is
between about .25% and about 0.5%.” Id.
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The Examiner, however, finds that “Murakami discloses cow’s milk
with a low phosphorus milk such that the milk contains 750 ppm (.075%)
phosphate.” Id. 7. The Examiner concludes that
[a]t the time of the invention it would have been obvious to one
of ordinary skill in the art having the teachings of Kim and
Murakami to provide the skim milk powder in a low
phosphorus form in order for the milk to be digestible for those
with ailments or for infants drinking the milk. Further[,] it
would have been obvious to include a phosphate component in
order to increase the phosphate content of medium containing a
low amount of phosphorus since Kim discloses that the adding
phosphate components to the medium containing skim milk
powder for fermentation of lactic acid bacteria results in an
increase in the number of bacteria that are produced due to
buffering of the medium and that the addition of phosphate also
stabilizes the medium.
Id. 7–8. According to the Examiner, “there is no patentable distinction”
provided by the formula recited in claim 1. Id. 9.
Appellant argues that the Examiner’s reliance on Kim for merely
teaching the step of adding phosphate is misplaced. Appeal Br. 15.
Appellant contends that the Examiner’s applied prior art would not have
motivated one of ordinary skill in the art to add a particular phosphate
amount. Id. Appellant argues that Kim would not have suggested
calculating the specific amount from a determination of a free phosphoric
acid concentration, after the addition of the phosphate compound, between
about 0.25 wt% and about 0.5 wt%, based on the skim milk powder’s
weight. Id.; see also id. 30–31, 32 (Claims App.).
In response, the Examiner argues that the “determining step,” as
recited in claim 1, “does not limit the amount of phosphorus added.” Ans.
10; see also id. 13.
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Appellant explains that “[t]he ‘free phosphoric acid concentration
after the addition’ is used to calculate the associated lower and upper limits
on the amount of phosphate to add by ‘determining an amount of the
phosphate compound by calculation using the [claimed] formula.’” Appeal
Br. 12. Appellant argues that “the maximum amount of phosphate
compound that can be added to the medium is that amount of phosphate
compound determined by the formula and corresponding to a ‘determined
phosphoric acid concentration after the addition’ equal to ‘0.5 wt% based on
the weight of the skim milk powder.’” Reply Br. 4. Appellant further
argues that “Kim provides no teaching whatsoever as to how much
phosphate to add,” nor “any limit on how much phosphate may be
advantageously added.” Id. 5–6.
“After evidence or argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a preponderance
of evidence with due consideration to persuasiveness of argument.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Sullivan, 498
F.3d 1345, 1352 (Fed. Cir. 2007) (“Whether the composition would have
been obvious cannot be determined without considering evidence attempting
to rebut the prima facie case.”).
On the record before us, Appellant’s contention that the Examiner’s
reliance on Kim is misplaced because the determining step recited in claim 1
limits the amount of phosphate added is persuasive of reversible error by the
Examiner. See Appeal Br. 15–18; 30–31 (Claims App.). We, furthermore,
agree with Appellant that Kim fails to disclose or suggest an upper limit for
the amount of phosphate added. See id. 15–18; see also Reply Br. 3–6.
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We do not sustain the rejection of claim 1 as obvious over Kim, in
view of Murakami, Ogasawara, and further in view of Holbrook. For the
same reasons, we do not sustain the rejection of claims 11, 12, 14, and 15 as
obvious over the same combination of references.
Ground 3: Rejection of claim 3 as obvious over Kim, in view of
Murakami, Ogasawara, Holbrook, and further in view of Irvine
Claim 3, which depends from claim 1, was rejected as obvious over
Kim, in view of Murakami, Ogasawara, Holbrook, and further in view of
Irvine. Non-Final Act. 10–11. The additional Irvine reference does not
remedy the deficiency of the Examiner’s proposed combination of Kim,
Murakami, Ogasawara, and Holbrook, in the rejection of claim 1. Although
Appellant did not argue separately against the rejection of claim 3 (see
Appeal Br. 29), we do not sustain the rejection of the parent claim, and,
therefore, do not sustain the rejection of claim 3.
CONCLUSION
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
11, 12 102(b) Ogasawara 11, 12
1, 11, 12,
14, 15
103(a) Kim, Murakami,
Ogasawara,
Holbrook
1, 11, 12,
14, 15
3 103(a) Kim, Murakami,
Ogasawara,
Holbrook, Irvine
3
Overall
Outcome
1, 3, 11, 12,
14, 15
REVERSED