Sahagian, Michael

Patent Trials and Appeals Board

May 28, 2020

2019005021 (P.T.A.B. May. 28, 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.
12/294,004 05/20/2009 Michael Sahagian BERESKINPARR002 5847
93756 7590 05/28/2020
Adam R. Stephenson, LTD.
8350 E Raintree Dr., Ste 245
Scottsdale, AZ 85260
EXAMINER
COX, AMBER M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
05/28/2020 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):
adam@iptech.law
ipdocket@iptech.law
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL SAHAGIAN
Appeal 2019-005021
Application 12/294,004
Technology Center 1700
Before LINDA M. GAUDETTE, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1–3, 6, 10, 14, 16, 17, 20–23, 28–39, and
42–44.3 An oral hearing was held on May 18, 2020.

1 This Decision includes citations to the following documents: Specification
filed September 22, 2008 (“Spec.”); Final Office Action dated June 4, 2018
(“Final”); Appeal Brief filed November 20, 2018 (“Appeal Br.”);
Examiner’s Answer dated April 18, 2019 (“Ans.”); and Reply Brief filed
June 17, 2019 (“Reply Br.”).
2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as McCain Foods
Limited. Appeal Br. 1.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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We AFFIRM.
CLAIMED SUBJECT MATTER
According to the Specification, acrylamide is generated by the
Maillard reaction between amino acids, e.g., asparagine, and reducing sugars
when heat treating root vegetables. Spec. 1:14–16. The invention relates to a
method of surface modifying root vegetable products to reduce acrylamide
formation. Id. at 1:4–6. Claim 1, reproduced below, is illustrative of the
inventive method:
1. A method of modifying a root vegetable product
comprising:
blanching the root vegetable product in a blancher;
contacting the surface of the root vegetable product with
an effective amount of asparaginase in order to modify the
surface of the root vegetable product;
drying the root vegetable product in a dryer while
contacting the surface with the asparaginase;
wherein the asparaginase is contacted with the surface by
spraying the asparaginase on the surface immediately prior to,
or during, the drying step, and the spraying occurs i) during
conveying the root vegetable product on a conveyor from the
blancher to the dryer, or ii) at the time that the root vegetable
product is at, or proximate to, the inlet of the dryer;
wherein the contacting step and the drying step are
partially concurrent or fully concurrent;
wherein the root vegetable product is dried at an applied
heated air temperature and an applied relative humidity suitable
for i) drying the root vegetable product and ii) maintaining
asparaginase activity so that asparaginase activity and resulting
surface modification occur substantially or entirely during the
drying step;
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wherein the root vegetable product is dried between
about 30°C and about 50°C and at a relative humidity between
about 40% and about 80%, and
wherein the drying step is less than 30 minutes and
greater than about 5 minutes.
Appeal Br. 8 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Name Reference Date
Zyzak
Lindsay
Plank
Lynglev
US 2004/0058046 A1
US 2004/0224066 A1
US 2005/0037123 A1
US 2006/0275879 A1
Mar. 25, 2004
Nov. 11, 2004
Feb. 17, 2005
Dec. 7, 2006

REJECTIONS
1. Claims 1–3, 6, 10, 16, 17, 20, 22, 28, 30–39, and 42–44 are
rejected under 35 U.S.C. § 103(a) as unpatentable over Zyzak and Lynglev.
2. Claims 14, 23, and 29 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Zyzak, Lynglev, and Plank.
3. Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Zyzak, Lynglev, and Lindsay.

OPINION
The Examiner found that Zyzak suggests the claim 1 method for
reducing acrylamide in a root vegetable product except that Zyzak does not
expressly disclose that “the root vegetable product is dried between about
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30°C and about 50°C and at a relative humidity between about 40% and
about 80%, and . . . the drying step is less than 30 minutes and greater than
about 5 minutes” (claim 1). See Final 4–9. The Examiner found, however,
that Zyzak describes a known relationship between enzyme activity and
heating temperature. Id. at 5. The Examiner also found that Zyzak discloses
that “optimal pH and temperature conditions for specific enzymes are
typically available in the literature and/or from enzyme suppliers.” Id.
(quoting Zyzak ¶ 41).
The Examiner found that Lynglev discloses treating root vegetable
products with asparaginase during heating to reduce acrylamide production.
Final 7. The Examiner further found that Lynglev discloses a temperature
activity profile for asparaginase. Id. The Examiner determined that because
Lynglev demonstrates asparaginase activity of greater than 0.50 (50%) at
temperatures of 37 ⁰C, 50 ⁰C, and 60 ⁰C, and denaturation at 70 ⁰C, “it would
have been well within the skill level of one of ordinary skill in the art to dry
the root vegetable product of Zyzak . . . within the claimed range” (id. at 7)
of “between about 30°C and about 50°C” (claim 1). The Examiner also
found that achieving the claimed drying time of “less than 30 minutes and
greater than about 5 minutes” would have been a matter of routine
optimization. See Final 9. The Appellant does not dispute the above findings
of fact. See generally Appeal Br. 3–7.
As to the claim 1 requirement that drying occurs “at a relative
humidity between about 40% and about 80%,” the Examiner found that
because
it is well known within the art that relative humidity and
temperature are related and given that Zyzak . . . teach[es]
drying the asparaginase treated food product in a suitable dryer
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. . . [and] that Lynglev . . . suggest[s] temperatures at which
asparaginase activity occurs, it would have been well within the
skill level of one [of] ordinary skill in the art to adjust the
relative humidity according to the dryer used and in order to
achieve sufficient asparaginase activity (enzymatic reaction).
Final 8 (“[I]t has been held that the provision of adjustability, where needed,
involves only routine skill in the art.” (citing In re Stevens, 212 F.2d 197
(CCPA 1954))). As further discussed below, the Appellant argues that the
Examiner reversibly erred in finding that humidity was recognized as a
result effective variable in an enzymatic treatment method’s drying step.
The Appellant argues that “[t]he [E]xaminer’s reliance upon Stevens
is misplaced as that case involved the predictable art area of fishing poles,
not the unexpected area of enzymatic food treatment.” Appeal Br. 5. The
Appellant argues that “the principles set forth in In re Antonie, 559 F.2d 618
(CCPA 1977) are more relevant to the present [issue]” of “whether one of
ordinary skill in the art would have found it obvious to optimize the
humidity conditions in the Zyzak dr[y]er during . . . enzymatic treatment.”
Appeal Br. 6. In Antonie, the predecessor to our reviewing court held that an
exception to “the rule that the discovery of an optimum value of a variable in
a known process is normally obvious” is the case “in which the parameter
optimized was not recognized to be a result-effective variable.” 559 F.2d at
620. The Appellant argues that because the applied references do not
document the effect that varying dryer temperature and humidity levels has
on residual acrylamide content in root vegetables, the Examiner reversibly
erred in finding that adjusting the relative humidity to achieve sufficient
asparaginase activity would have been a matter of routine optimization.
Appeal Br. 6; see also Ans. 21 (“In summary, it is the appellant’s stance that
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since neither Zyzak nor Lynglev provide[s] evidence that the humidity level
in the Zyzak dryer would have any effect on the results, i.e. humidity was
not recognized to be a result effective variable, the examiner’s rejection is in
error.”).
The Examiner “acknowledge[s] that the chemical arts are often
unpredictable,” but maintains that Zyzak’s express statements that “a skilled
artisan should readily be able to determine optimal conditions of temperature
and other parameters (e.g., water content), which affect enzymatic activity
and that the optimal temperature conditions for specific enzymes can be
found in literature,” would have “provide[d] sufficient motivation to those
having ordinary skill in the art to optimize parameters that affect enzymatic
activity, such as temperature and water content.” Ans. 21–22; see also Final
5 (“As known in the art, pH and temperature are factors that affect
enzymatic activity. One skilled in the art should readily be able to determine
optimal conditions of these and other parameters (e.g. water content).”
(emphasis added) (quoting Zyzak ¶ 41)). The Examiner argues that Lynglev
provides guidance to select the optimal temperature for asparaginase activity
and that the ordinary artisan “would also [have been] capable of determining
the optimal relative humidity . . . [because] the very definition of relative
humidity demonstrates the relationship” between temperature and relative
humidity. Ans. 23 (citing Collins English Dictionary and American Heritage
Science Dictionary).
Before discussing the Appellant’s argument that adjusting the relative
humidity would not have been a matter of routine optimization (see Appeal
Br. 5–6), we address the Appellant’s argument that the Examiner raises a
new ground of rejection in the Answer (Reply Br. 3). The Appellant requests
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that we “disregard[] the undesignated new ground of rejection and decide[]
the appeal based upon the stated rejection found in the final office action.”
Id. at 4.
We determine that because the Appellant failed to file a timely
petition to the Director, the Appellant waived its right to seek review of the
Examiner’s Answer as improperly raising a new ground of rejection without
designating it as such. See 37 C.F.R. § 41.40 (2018) (“Any request to seek
review of the primary examiner’s failure to designate a rejection as a new
ground of rejection in an examiner’s answer must be by way of a petition to
the Director under § 1.181 of this title filed within two months from the
entry of the examiner’s answer and before the filing of any reply brief.
Failure of appellant to timely file such a petition will constitute a waiver of
any arguments that a rejection must be designated as a new ground of
rejection.” (emphasis added)).
Moreover, we disagree with the Appellant’s contention that the
rejection should have been designated as a new ground. The Appellant
argues that the Answer raises a new ground of rejection because the
Examiner relies on a new theory, summarized by the Appellant as follows:
“Even though Zyzak et al. fail to expressly disclose relative humidity, the
express recitation of one of ordinary skill in the art being readily able to
determine ‘other parameters’ in addition to temperature and water content
cannot be ignored.” Reply Br. 4. The Appellant has not explained with
sufficient specificity how the Examiner’s statement represents a new theory.
The Appellant is directed to the Final Office Action, page 5, where, in
discussing the claim 1 relative humidity limitation, the Examiner quotes
Zyzak paragraph 41: “As known in the art, pH and temperature are factors
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that affect enzymatic activity. One skilled in the art should readily be able to
determine optimal conditions of these and other parameters (e.g. water
content)” (emphasis added). See also Final 8, quoted supra pp. 4–5.
The Appellant also argues that the rejection should have been
designated as a new ground because the Examiner cited two dictionary
definitions for the first time in the Answer. Reply Br. 3. This argument is not
persuasive because the Manual of Patent Examination Procedure (“MPEP”)
expressly excludes dictionary definitions from the type of newly relied-on
evidence requiring designation of a rejection as a new ground. MPEP
§ 1207.03, ¶ III (9th ed. rev. 08.2017 Jan. 2018) (“If Evidence (such as a
new prior art reference, but not including a newly relied upon dictionary
definition) is applied or cited for the first time in an examiner’s answer, then
37 [C.F.R. §] 41.39(a)(2) requires that the rejection be designated as a new
ground of rejection.” (emphasis added)). In any event, given the Appellant’s
admission that “‘relative humidity’ is dependent upon and related to
temperature” (Reply Br. 3), we do not rely upon the dictionary definitions
cited in the Answer.
We now turn to the Appellant’s argument that the Examiner reversibly
erred in finding that adjusting the relative humidity to achieve sufficient
asparaginase activity would have been a matter of routine optimization. See
Appeal Br. 5–6; Reply Br. 5–6.
“A recognition in the prior art that a property is affected by the
variable is sufficient to find the variable result-effective.” In re Applied
Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Zyzak discloses that
“the effective amount of enzyme required to achieve the desired level of
acrylamide reduction in the finished food product will depend upon the
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activity of the particular enzyme product used.” Zyzak ¶ 35; see Final 4.
Zyzak discloses that pH and temperature affect enzymatic activity. Zyzak
¶ 41; see Final 5. Zyzak discloses that the ordinary artisan should readily be
able to determine optimal conditions for pH and temperature, as well as
water content (i.e., humidity) (Zyzak ¶ 41; see Final 5). Given its own
admission that “‘relative humidity’ is dependent upon and related to
temperature” (Reply Br. 3), the Appellant has not convincingly explained
why the above disclosure in Zyzak is insufficient to support the Examiner’s
finding that asparaginase activity is affected by humidity and, therefore, is a
result-effective variable.
The Examiner found, and the Appellant does not dispute, that
temperature and time are also result-effective variables. Final 7, 9; see
generally Appeal Br. 3–7. “The mere fact that multiple result-effective
variables were combined does not necessarily render their combination
beyond the capability of a person having ordinary skill in the art. [However,
[e]vidence that the variables interacted in an unpredictable or unexpected
way could render the combination nonobvious.” Applied Materials, 692 F.3d
at 1298 (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421, (2007)).
The Appellant cites Specification page 20, lines 10–24, and Figure 3
as evidence that “the enzymatic action set forth in claim 1 that occurs in a
dynamic drying environment is unpredictable.” Reply Br. 6; see also Appeal
Br. 6 (“[C]ontrary to the applied references, the present [S]pecification
[(Spec. 20:10–24; Fig. 3)] documents the effect that varying the temperature
and humidity level in the dryer has on the residual acrylamide amount.”).
More specifically, the Appellant argues that Specification page 20, lines 10–
24, and Figure 3 “show the variability of residual acrylamide levels as
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temperature and humidity are independently controlled in the dryer.” Reply
Br. 5. The Appellant, however, does not explain, nor is it apparent to us,
how the relied-upon Specification disclosure and Figure 3 evidence that
temperature and humidity “interacted in an unpredictable or unexpected
way” (Applied Materials, 692 F.3d at 1298) that would render the claims
nonobvious. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[T]he
burden of showing unexpected results rests on he who asserts them.”). We
add that the Specification provides no indication of criticality or a new and
unexpected result in the claimed drying temperature and humidity ranges.
See, e.g., Spec. 3:25–26 (“The root vegetable product is optionally dried at a
temperature between 30°C–65°C, optionally, 30°C–50°C at a relative
humidity between 20%–80%.” (emphasis added)).
The Appellant presents arguments in support of claim 1 only. See
generally Appeal Br. 3–6. For the reasons stated above, in the Final Office
Action, and in the Answer, we are not convinced of reversible error in the
Examiner’s conclusion of obviousness as to claim 1. Accordingly, we
sustain the rejection of claim 1, as well as the rejections of dependent claims
2, 3, 6, 10, 14, 16, 17, 20–23, 28–39, and 42–44.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44
103(a) Zyzak, Lynglev 1–3, 6, 10, 16,
17, 20, 22, 28,
30–39, 42–44

14, 23, 29 103(a) Zyzak, Lynglev,
Plank
14, 23, 29
21 103(a) Zyzak, Lynglev,
Lindsay
21
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
Overall
Outcome:
1–3, 6, 10, 14,
16, 17, 20–23,
28–39, 42–44

TIME PERIOD FOR RESPONSE
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