The Quaker Oats CompanyDownload PDFPatent Trials and Appeals BoardNov 2, 202014959941 - (D) (P.T.A.B. Nov. 2, 2020) Copy Citation 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. 14/959,941 12/04/2015 Robert E. CHATEL 2189.292454 5282 23644 7590 11/02/2020 Barnes & Thornburg LLP (CH) P.O. Box 2786 Chicago, IL 60690-2786 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 11/02/2020 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): Patent-ch@btlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD _______________ Ex parte ROBERT E. CHATEL, YONGSOO CHUNG, and JUSTIN A. FRENCH _______________ Appeal 2019–006167 Application 14/959,941 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, 3–6, 11–21, and 23–30 of 1 In our Decision, we refer to the Specification filed Dec. 4, 2015 (“Spec.”) of Application 14/959,941 (“the ’941 Application”); the Final Office Action dated Nov. 5, 2018 (“Final Act.”); the Amendment After Final Action filed Jan. 4, 2019 (“Amend.”), the Advisory Action dated Feb. 4, 2019 (“Advisory Act.”); the Appeal Brief filed Mar. 25, 2019 (“Appeal Br.”); the Examiner’s Answer dated June 26, 2019 (“Ans.”); and the Reply Brief filed Aug. 20, 2019 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Quaker Oats Co. as the real party in interest. Appeal Br. 2. Appeal 2019–006167 Application 14/959,941 2 Application 14/959,941, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we REVERSE. BACKGROUND The ’941 Application relates to food grade compositions comprising a hydrolyzed starch or at least a portion of a grain with hydrolyzed starch. Spec. ¶ 2. The ’941 Application describes products comprising at least a portion of a grain, which are desirable for nutritive and/or fiber content, but can also have undesirable mouthfeel characteristics. Id. ¶ 3. The ’941 Application teaches that such products can be too viscous, gritty, or result in a thick coating on the mouth upon consumption. Id. According to the Specification, products comprising grain that have better mouthfeel can be modified to lack certain nutritive or fiber-related components or benefits. Id. Claim 1 is representative of the ’941 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief. 1. A composition comprising: a whole grain; wherein the starch in the whole grain is hydrolyzed gelatinized starch; wherein the hydrolyzed gelatinized starch is enzymatically hydrolyzed; and wherein substantially only α-amylase is used to catalyze the enzymatic hydrolysis, and wherein the parameters used to conduct the enzymatic hydrolysis, including the use of substantially only α-amylase, are effective to maintain the whole grain status of the whole grain after the enzymatic hydrolysis. Appeal Br. 36 (Claims Appendix). Appeal 2019–006167 Application 14/959,941 3 REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Name Reference Date Karwowski et al. (“Karwowski”) US 4,834,988 May 30, 1989 Rubio et al. (“Rubio”) US 2007/0184175 A1 Aug. 9, 2007 Wuersch et al. (“Wuersch”) US 7,754,270 B2 July 13, 2010 REJECTIONS The Examiner maintains the following rejections:3, 4 1. Claims 1, 3–6, 11–21, and 23–30 under 35 U.S.C. § 112, second paragraph, as indefinite.5 Ans. 3. 2. Claims 1, 3–6, 11–21, and 23–30 under 35 U.S.C. § 103(a) as unpatentable over Rubio. Ans. 4. 3. Claims 1, 3–6, 11–21, and 23–25 under 35 U.S.C. § 103(a) as unpatentable over Karwowski. Ans. 5. 3 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. 4 Although the Examiner’s statements of the rejections include claims 9 and 10, we view the inclusion of these canceled claims as a clerical error. Ans. 3, 4, 5; see Amend. 2, 6. 5 In the Advisory Action, the Examiner withdrew the rejection of claim 27 under 35 U.S.C. § 112, second paragraph, as indefinite after entering Appellant’s amendments to this claim. Advisory Act. 3; see also Final Act. 3; Amend. 4, 6. Appeal 2019–006167 Application 14/959,941 4 4. Claims 26–30 under 35 U.S.C. § 103(a) as unpatentable over Rubio in view of Wuersch. Ans. 5. DISCUSSION Ground 1: Rejection claims 1, 3–6, 11–21, and 23–30 as indefinite The Examiner concludes that claims 1, 3–6, 11–21, and 23–30 are indefinite. Ans. 3–4. Because we consider the evidence insufficient to establish a prima facie case of indefiniteness with regard to recitations found in independent claim 1, we need only address claim 1. The Examiner determines that claim 1 is indefinite for reciting, “the parameters used to conduct the enzymatic hydrolysis, including the use of substantially only α-amylase, are effective to maintain the whole grain status of the whole grain after the enzymatic hydrolysis.” Ans. 3. According to the Examiner, it is unclear how the recited “whole grain status” is maintained after starch in the whole grain has been enzymatically hydrolyzed. Id. The Examiner concludes that the requisite extent of enzymatic hydrolysis is ambiguous because “the originality of [the whole grain’s] starch molecules . . . is lost” once α-amylase breaks “[α]-1,4 bonds between glucose units.” Id. at 7. Appellant argues, inter alia, “when viewed in light of the specification and prosecution history, claim 1 informs those skilled in the art about the scope of the claimed invention with a reasonable certainty.” Appeal Br. 10. Relying on paragraph 21 of the Specification, Appellant argues that claim 1 does not require that “the starch molecules in the hydrolyzed and gelatinized whole grain remain unchanged” post-enzymatic hydrolysis. Reply Br. 2 (citing Spec. ¶ 21). Paragraph 21 of the Specification describes: Appeal 2019–006167 Application 14/959,941 5 “Whole grain” or “standard of identity as whole grain” shall mean that the cereal grain, for example, oat, “consists of the intact, ground cracked or flaked caryopsis, whose principal anatomical components - the starchy endosperm, germ and bran - are present in approximately the same relative proportions as they exist in the intact caryopsis.” Further, if the principal nutrients (i.e., starch, fat, protein, dietary fiber, beta- glucan, and sugar) are present in approximately the same relative proportions for a partially hydrolyzed grain and the original grain, it can be assumed that the processed grain (e.g., the partially hydrolyzed grain) maintains its whole grain status. However, since the average molecular weight of starch (e.g., amylopectin) in whole grains varies widely across the various types of whole grains (1–6M Dalton) and even among whole grain oat products, a shift in starch moieties from higher molecular weight to lower molecular weight does not alter whole grain status if the total starch content remains the same. Spec. ¶ 21 (emphasis added). The Examiner improperly rejects a claim as failing to meet the statutory requirements of 35 U.S.C. § 112, second paragraph, when Appellant has provided a satisfactory response in “the form of . . . a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.” In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). We are persuaded by Appellant’s arguments that the Specification’s definition of “whole grain” reasonably apprises the skilled artisan of the scope of the invention. Appellant’s relied-upon passage adequately describes to one of skill in the art that the limitations directed to enzymatically hydrolyzed starch do not require that the processed starch molecules in the whole grain remain unchanged. See Spec. ¶ 21. Rather, claim 1 encompasses instances in which “the starch content” in a partially hydrolyzed grain “remains substantially unchanged from the starting whole Appeal 2019–006167 Application 14/959,941 6 grain.” Reply Br. 3. Appellant, therefore, shows that the Examiner reversibly errs in finding that claim 1 is unclear as to what extent of the starch’s enzymatic hydrolysis is permissible. We do not sustain the rejection of claims 1, 3–6, 11–21, and 23–30 under 35 U.S.C. § 112, second paragraph, as indefinite. See 37 C.F.R. § 41.37(c)(1)(iv). Ground 2: Rejection of claims 1, 3–6, 11–21, and 23–30 as obvious over Rubio The Examiner determines that claims 1, 3–6, 11–21, and 23–30 would have been rendered obvious over Rubio. Ans. 4–5. The Examiner finds that Rubio discloses a hydrolyzed “whole-corn flour (novel grain flour) comprising e[n]dosperm, germ, pericarp bran and aleurone-bran fractions.” Ans. 4 (citing Rubio ¶¶ 61, 62; Table 1). Appellant contends, inter alia, that “Rubio’s product does not retain the original proportion of starch to other principal nutrients” because the end product contains non-starch olidgodextrin components. Appeal Br. 21. In response, the Examiner argues that Rubio’s Table 1 describes a “whole corn” product, which comprises the same components as Rubio’s “raw corn.” Ans. 9; see Rubio Table 1. The Examiner finds that Rubio “Whole corn” product renders obvious the claimed composition’s “whole grain” feature. Ans. 8 (citing Rubio ¶ 88). “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 Appeal 2019–006167 Application 14/959,941 7 been obvious cannot be determined without considering evidence attempting to rebut the prima facie case.”; In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976) (“When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over.”). We agree with Appellant that Rubio contradicts the Examiner’s position regarding the requisite “whole grain” feature of the claimed composition. Appellant persuasively argues that “the term ‘Whole-corn’ in Table 1 is denoted with an asterisk[,] which is later identified as Novel Grain flours.” Reply Br. 4 (citing Rubio Table 1). As Appellant argues, one of ordinary skill in the art would have understood that Table 1’s “Whole-corn” is produced by the process described in Rubio’s preceding paragraphs. Reply Br. 5. Appellant correctly points out that Rubio discloses the addition of enzyme to a finely ground corn, which “has a light-bran fraction removed [for animal feed] and component proportions changed relative to the starting corn material.” Appeal Br. 24 (citing Rubio ¶¶ 46, 50, 51); see also Rubio claim 1 (drawn to combining endoamylase with a corn kernel fraction); Fig. 1 (depicting the addition of “ENZYME” to a ground corn grain and water mixture after “CORN BRAN” has been removed from the ground mixture). We, therefore, find that there is no evidence that Rubio’s “Whole-corn” includes the principal anatomical bran component in the same relative proportion as that bran component exists in raw corn grain, as required by claim 1. See Spec. ¶ 21. We are persuaded that the Examiner’s cited reference fails to establish a prima facie case of obviousness of claim 1. We do not sustain the Examiner’s rejection of claim 1 as obvious over Rubio. Therefore, we also Appeal 2019–006167 Application 14/959,941 8 do not sustain the rejection of claims 3–6, 11–21, and 23–30 that depend from claim 1. Ground 3: Rejection of claims 1, 3–6, 11–21, and 23–25 as obvious over Karwowski The Examiner determines that claims 1, 3–6, 11–21, and 23–25 would have been rendered obvious over Karwowski. Ans. 5. Because we consider the evidence insufficient to establish a prima facie case of obviousness with regard to limitations found in independent claim 1, we need only address claim 1. Claims 3–6, 11–21, and 23–25 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). There is no dispute that Karwowski’s Example 1 teaches a composition that contains hydrolyzed starch derived from the treatment of whole grains in an enzyme slurry. Ans. 5; Reply Br. 6; see also Karwowski 3:18–21; 6:39–56. Appellant argues that a prima facie case of obviousness has not been established because Karwowski’s Example 2 “does not teach a composition comprising a whole grain where the starch in the whole grain is hydrolyzed gelatinized starch and where the hydrolysis is such that the whole grain maintains its whole grain status after hydrolysis.” Reply Br. 9; see also Appeal Br. 28. The Examiner acknowledges that although Karwowski’s “starch in the primary slurry [of Example 1] may be hydrolyzed to a higher degree, []that slurry is then added to a whole grain [in Example 2] which is cooked.” Ans. 14. The Examiner concludes that Karwowski’s process results in a composition comprising hydrolyzed gelatinized starch and whole grain. Id. (citing Karwowski Example 2; claim 1). Appeal 2019–006167 Application 14/959,941 9 However, we note that Karwowski’s Examples 1 and 2 explicitly disclose that an enzyme slurry comprising α-amylase, glucoamylase, and glucose isomerase is added to steel-cut oats and cooked. Karwowski 6:39– 7:10. Appellant argues persuasively that “the wheat used in Example 1 is hydrolyzed to such a degree that about 11 % by weight of the slurry is fructose” and that “Karwowski is completely silent with respect to whether the oats in Example 2 maintained its whole grain status.” Reply Br. 6. We find that Karwowski’s Example 2 provides no indication that the α-amylase, glucoamylase, and glucose isomerase enzymes would have been inactivated. Karwowski 6:57–7:10. Karwowski’s silence supports Appellant’s position that the prior art process results in the conversion of starch in the steel-cut oats to dextrins and sugars, thereby changing the relative proportions of the principal whole grain nutrients. Appeal Br. 29. Moreover, the Examiner reversibly errs because claim 1 requires that the whole grain status is effectively maintained by “the use of substantially only α-amylase.” See Appeal Br. 36 (Claims App.) (emphasis added). We construe this language as excluding Karwowski’s use of glucoamylase and glucose isomerase enzymes from within the scope of claim 1. We are persuaded that the Examiner’s cited reference fails to establish a prima facie case of obviousness of claim 1. We do not sustain the Examiner’s rejection of claim 1 as obvious over Karwowski. Ground 4: Rejection of claims 26–30 as obvious over Rubio in view of Wuersch Appellant contends that claim 26 is nonobvious because “Rubio is deficient with respect to teaching the requisite “complete whole grain” starting material. Appeal Br. 30. Appellant argues that claims 27–30 (each Appeal 2019–006167 Application 14/959,941 10 depending or ultimately depending from claim 1), are patentable for the same reasons as claim 1. Id. The additional Wuersch reference relied on by the Examiner in rejecting claims 26–30 does not cure the deficiencies in Rubio. Therefore, we do not sustain the rejection of claims 26–30 under 35 U.S.C. § 103(a) over the cited references. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3–6, 11–21, 23–30 112 2nd paragraph, indefiniteness 1, 3–6, 11– 21, 23–30 1, 3–6, 11–21, 23–30 103(a) Rubio 1, 3–6, 11– 21, 23–30 1, 3–6, 11–21, 23–25 103(a) Karwowski 1, 3–6, 11– 21, 23–25 26–30 103(a) Rubio, Wuersch 26–30 Overall Outcome 1, 3–6, 11– 21, 23–30 REVERSED Copy with citationCopy as parenthetical citation