YNSECT

Patent Trials and Appeals Board

Feb 17, 2022

2021003938 (P.T.A.B. Feb. 17, 2022)

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. 15/541,140 06/30/2017 Benjamin Armenjon 689501-5US 9293 570 7590 02/17/2022 PANITCH SCHWARZE BELISARIO & NADEL LLP TWO COMMERCE SQUARE 2001 MARKET STREET, SUITE 2800 PHILADELPHIA, PA 19103 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 02/17/2022 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): usptomail@panitchlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte BENJAMIN ARMENJON, NATHALIE BEREZINA, SOPHIE LAURENT, CECILIA SOCOLSKY, LORENA SANCHEZ, and ANTOINE HUBERT __________ Appeal 2021-003938 Application 15/541,140 Technology Center 1700 ___________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and N. WHITNEY WILSON, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s decision rejecting claims 1, 2, 4, 6, and 12-15. Claims 7-11 are also pending but have been withdrawn from consideration. A hearing was held on November 8, 2021. We have jurisdiction under 35 U.S.C. § 6(b). 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Ynsect. Appeal Brief dated December 22, 2020 (“Appeal Br.”), at 2. Appeal 2021-003938 Application 15/541,140 2 We REVERSE. Representative claim 1 is reproduced below from the Claims Appendix to the Appeal Brief. 1. Beetle powder comprising at least 67% by weight proteins, at least 5% by weight chitin, and a fat content between 5 and 20% by weight, the percentages by weight being given relative to the total weight of beetle powder, wherein the residual moisture content is between 2 and 15%. Appeal Br. 24. The Examiner maintains the following grounds of rejection on appeal: (1) claims 1, 2 and 4 under 35 U.S.C. § 101 as directed to a natural phenomenon; and (2) claims 1, 2, 4, 6, and 12-15 under 35 U.S.C. § 103 as unpatentable over Yang.2 B. DISCUSSION 1. Rejection (1) The Examiner concludes that the subject matter recited in claims 1, 2, and 4 is not patent eligible under 35 U.S.C. § 101 because the claims are directed to a natural phenomenon, i.e., a crushed dead beetle. Non-Final Act. 2.3 Section 101 of Title 35 of the United States Code provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a 2 Qingli Yang et al., “Nutritional Composition and Protein Quality of the Edible Beetle Holotrichia parallela,” 14 J. Insect Sci. 139 (2014) (“Yang”). In the rejections on appeal, the Examiner refers to a copy of the article available at https://www.ncbi.nlm.nih.gov/pmc/articles/PMC4684676 (last visited Aug. 5, 2019). In this Decision on Appeal, we refer to the page numbers of the copy of the article entered in the Official file of the instant Application on August 8, 2019. 3 Non-Final Office Action dated July 24, 2020. Appeal 2021-003938 Application 15/541,140 3 patent therefor, subject to the conditions and requirements of this title.” The Supreme Court has interpreted 35 U.S.C. § 101 to include the following implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks and citation omitted). That being said, the Court has also emphasized that an invention is not considered to be ineligible for patenting simply because it involves one of those judicial exceptions. Alice Corp., 573 U.S. at 217. The Supreme Court in Mayo Collaborative Services v. Prometheus Labs., Inc., 566 U.S. 66 (2012), “set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. That framework is referred to as the Mayo test. The first part of the Mayo test is determining whether a claim is directed to a law of nature, a natural phenomenon, or an abstract idea (i.e., a judicial exception). Alice Corp., 573 U.S. at 217. The second part of the Mayo test is determining whether the claim recites additional elements sufficient to ensure that significantly more than the judicial exception is being claimed. Alice Corp., 573 U.S. at 217-18. The Mayo test has been incorporated into the United States Patent and Trademark Office’s (USPTO) Revised Guidance on the application of 35 U.S.C. § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”).4 In Step 1 of the Revised Guidance, we 4 The USPTO’s current eligibility guidance is found in Sections 2103-2106.07(c) of the Ninth Edition, Revision 10.2019 (revised June 2020) of the Manual of Patent Examination Procedure (“MPEP”). In this Decision on Appeal, we refer to the relevant sections of the MPEP in addressing the rejection under 35 U.S.C. § 101 on appeal. Appeal 2021-003938 Application 15/541,140 4 consider whether the claimed subject matter falls within one of the four statutory categories of patentable subject matter identified in 35 U.S.C. § 101, i.e., process, machine, manufacture, or composition of matter. Revised Guidance, 84 Fed. Reg. 53-54. Step 2, which includes two prongs, is the Supreme Court’s Mayo test. In Step 2A, we determine whether the claim (1) recites a judicial exception, such as a natural phenomenon, (Step 2A, Prong 1) and (2) integrates the recited judicial exception into a practical application of the exception (Step 2A, Prong 2). Id. at 54. If a claim is determined to be directed to a judicial exception under Step 2A, the additional elements of the claim are evaluated both individually and in combination to determine whether they provide an inventive concept (Step 2B). Id. at 56. When a natural phenomenon is claimed as a physical product, as in this case, the courts often refer to the exception as a “product of nature.” MPEP § 2106.04(b)(II). Product of nature exceptions include both naturally occurring products and non-naturally occurring products that lack markedly different characteristics from any naturally occurring counterpart. Id. The “markedly different characteristics” analysis is used to evaluate a nature-based product limitation and determine the answer to Step 2A, Prong 1. Id.; Id. § 2106.04(c). The markedly different characteristics analysis compares the nature-based product limitation to its naturally occurring counterpart in its natural state. Id. § 2106.04(c)(II). The first step in the analysis is selecting the appropriate counterpart to the nature-based product. Id. § 2106.04(c)(II)(A). When the nature- based product is derived from a naturally occurring thing, the naturally occurring thing is the counterpart. Id. The second step in the analysis is identifying the appropriate characteristics to compare. Id. § 2106.04(c)(II)(B). Appropriate Appeal 2021-003938 Application 15/541,140 5 characteristics can be expressed as, for example, chemical or physical properties of the nature-based product and are evaluated on a case-by-case basis. Id. Finally, the third step in the analysis is comparing the characteristics of the claimed nature-based product to its naturally occurring counterpart in its natural state, in order to determine whether the characteristics of the claimed nature-based product are markedly different. MPEP § 2106.04(c)(II)(C). According to MPEP § 2106.04(c)(II)(C): If there is no change in any characteristic, the claimed product lacks markedly different characteristics, and is a product of nature exception. If there is a change in at least one characteristic as compared to the counterpart, and the change came about or was produced by applicant’s efforts or influences, then the change will generally be considered a markedly different characteristic such that the claimed product is not a product of nature exception. Applying Step 1 of the Revised Guidance to the claimed subject matter on appeal, we determine that claims 1, 2, and 4 recite a composition of matter. Next, we turn to Step 2A, Prong 1, and apply the “markedly different characteristics” analysis to the claimed subject matter. The Examiner selects the beetle powder disclosed in Yang as the counterpart to the claimed beetle powder. Non-Final 2-3. Yang discloses that the beetle powder was prepared as follows: Adult [Holotrichia parallela or] H. parallela [i.e., a species of beetle] were collected in July from peanut fields in the suburbs of Qingdao (Shandong Province, China). The beetles were starved for 48 h to empty their gut contents, washed with water, and killed by exposing them to freezing temperatures. The frozen samples were allowed to thaw at room temperature and were air-dried at 50°C for 2 d. After removing the wings and legs,[5] the dried samples were ground in a 5 The Appellant questions whether Yang’s beetle powder is properly characterized as a product of nature in view of the fact that the wings and legs of the beetles were removed prior to grinding. Reply Brief dated June 8, 2021 (“Reply Br.”), at 8. Appeal 2021-003938 Application 15/541,140 6 mill, passed through a 50-mesh screen, and stored at 4°C in air-tight containers. Yang 2. The Appellant’s beetle powder, on the other hand, is prepared by a method that includes a pressing step. First, the insects are killed by either scalding or blanching. Spec. 6, ll. 3-23. Second, the insects are placed in a press making it possible to press and separate a juice comprising both a fat fraction and a protein fraction and obtain a press cake having a dry matter content between 30% and 60%.6 Spec. 7, ll. 4-25. Third, the press cake is dried at a temperature between 60°C and 260°C for a duration of 15 minutes to 24 hours. Spec. 7, ll. 26-30. The Appellant discloses that “[t]he objective of this drying step is to obtain a press cake having a moisture content comprised between 2 and 15%.” Spec. 7, ll. 34-35. Fourth, the dried press cake is placed in a grinder, whereby the press cake is reduced to particles. Spec. 8, ll. 2-4. Example 1 of the Appellant’s Specification discloses a method for preparing a beetle powder according to the Appellant’s invention using larvae (i.e., immature beetles) from the Tenebrio molitor species. Spec. 11, ll. 1-3. During the pressing step, the Appellant discloses that the larvae are maintained at a temperature above 70°C in order to increase the de-oiling yields. Spec. 11, ll. 21-22. The resulting press cake is said to contain 35 to 40% dry matter, 67 to 75% proteins, and 13 to 17% fats.7 Spec. 12, ll. 1-3. 6 The Appellant discloses that a grinding step between the killing step and the pressing step is optional. Spec. 6, ll. 24-27. 7 The Appellant contends that the beetle powder disclosed in Ng (Attachment D in the Evidence Appendix to the Appeal Brief), not the beetle powder disclosed in Yang, is the counterpart to the claimed beetle powder. According to the Appellant, Ng discloses an untreated beetle powder from the Tenebrio molitor species having Appeal 2021-003938 Application 15/541,140 7 The Examiner identifies the amount of protein, the amount of chitin, fat content, and moisture content as the appropriate characteristics for comparison. Non-Final Act. 3. The Examiner finds Yang’s beetle composition comprises a fat content (i.e., 3.8% by weight8) that is outside the claimed range (i.e., between 5 and 20%). Non-Final 5. The Examiner also identifies “Other samples” in Table 1 of Yang (i.e., adult H. parallela from Zhucheng, Shandong, China) that have protein and fat contents within the claimed range. Non-Final Act. 9; Yang 4. However, the moisture content of those “Other samples” is not identified. Yang 4. Assuming that Yang discloses a product of nature (i.e., an untreated beetle powder), the Appellant argues that claims 1, 2, and 4 are eligible subject matter under 35 U.S.C. § 101 because attributes recited in claims 1, 2, and 4 (i.e., fat and moisture content) differ from the products disclosed in Yang. Appeal Br. 8; Reply Br. 11. The Appellant’s argument is persuasive of reversible error. On this record, the Examiner does not direct us to a single beetle species comprising amounts of protein and chitin, a fat content, and a residual moisture content within the ranges recited in claim 1. Rather, the Examiner directs us to beetle powders disclosed in Yang that differ in at least one characteristic (i.e., fat content or residual moisture content) compared to the claimed beetle powder.9 a fat content of 28.6% and a crude protein content of 57.6%, both of which are outside the claimed ranges. Appeal Br. 5-6. 8 Yang discloses that the crude lipid content of adult H. parallela is 3.76 ± 0.12. Yang 4, Table 1; Non-Final Act 3. 9 As discussed above, Yang discloses that adult H. parallela from Shandong Province, China has a fat content outside the range recited in claim 1 and adult H. parallela from Zhucheng, Shandong, China has a moisture content outside the range recited in claim 1. See Yang 4, Table 1. Appeal 2021-003938 Application 15/541,140 8 A preponderance of the evidence supports a finding that the differences in the claimed beetle powder compared to Yang’s beetle powder are the result of the Appellant’s preparation method and thus are “markedly different characteristics” under Step 2A, Prong 1 of the Mayo test. See Reply Br. 4 (contending that “Appellants’ powders do not have the same values as Yang and it is the treatment that results in the differences” (emphasis omitted)). That is, the pressing and separation steps followed by the drying step results in a beetle powder having the claimed characteristics. See Spec. 7, ll. 9-12 (disclosing that the pressing step makes it possible to obtain a press cake comprising a fat content less than or equal to 20%); Spec. 7, ll. 34-35 (disclosing that the objective of the drying step is to obtain a press cake having a moisture content between 2 and 15%); Spec. 8, ll. 9- 12 (disclosing that the succession of pressing, drying, and grinding makes it possible to obtain a beetle powder comprising a high content of crude proteins while maintaining the claimed chitin content). Therefore, the claimed beetle powder does not fall within the product of nature exception and is eligible subject matter under 35 U.S.C. § 101. The rejection of claims 1, 2, and 4 under 35 U.S.C. § 101 is not sustained. 2. Rejection (2) As discussed above, the Examiner finds Yang’s beetle composition comprises a fat content (i.e., 3.8% by weight) that is outside the claimed range (i.e., between 5 and 20%). Non-Final Act. 3, 5. Nonetheless, the Examiner finds “Yang teaches that the fat content is [sic, in] insects varies among species and can range from 7 to 77% . . . , thus overlapping the claimed range.” Non-Final Act. 5 (citing Yang 4, ¶ 2). The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to vary the fat content depending on the species of insect Appeal 2021-003938 Application 15/541,140 9 used from the composition as Yang teaches that the amount of fat and [sic, can] vary widely.” Non-Final Act. 5. The Appellant argues that the fat content referred to by the Examiner in Yang (i.e., 7 to 77%) is not limited to beetles, but rather is for all insects. Appeal Br. 11-12. The Appellant argues that “one of ordinary skill in the art would not look to a range for all insects when concerned with beetles.” Appeal Br. 12 (citing In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir. 1986)). The Appellant’s argument identifies a reversible error. The Yang disclosure is directed to a study that assesses the chemical composition, fatty acid profile, and amino acid composition of a specific species of adult beetle, i.e., Holotrichia parallela or H. parallela. Yang 2. Based on the study, Yang discloses that adult H. parallela, which was known to be edible, “has a high protein to fat ratio, comparable to that of lean beef.” Yang 2, 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to vary the fat content depending on the species of insect” based on Yang’s teaching that the fat content in insects, not beetles specifically, ranges from 7 to 77%. Non-Final Act. 5. That reason, however, does not explain why one of ordinary skill in the art would have been motivated to increase the fat content in the particular beetle species disclosed in Yang, i.e., H. parallela. Moreover, the Examiner does not explain in any detail why, when modifying the fat content of H. parallela as proposed, one of ordinary skill in the art would have selected a fat content within the claimed range (i.e., between 5 and 20%) rather than a fat content outside the claimed range (i.e., greater than 20%). See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015) (“obviousness concerns whether a skilled artisan not only could have made but would have been motivated to make the combinations or modifications of prior art to arrive at the claimed invention”). Appeal 2021-003938 Application 15/541,140 10 Finally, the Examiner does not direct us to any evidence establishing that a beetle powder from a different beetle species having a fat content within the claimed range necessarily has a protein content, a chitin content, and a residual moisture content within the ranges recited in claim 1. See Ans. 1110 (contending that “the variations in the amount of fat are obvious over the prior art depending on the exact species of beetle and the area where the beetle is from”); Reply Br. 13 (contending that “if a different type of beetle and/or area of beetle analyzed were used for the comparison to obtain a fat value that falls within Appellant’s claims, then the protein, chitin, and moisture values may very well fall outside of Appellants’ claims”). The Examiner also directs our attention to the “Other samples” in Yang Table 1 (i.e., adult H. parallela from Zhucheng, Shandong, China) that have protein, fat, and chitin contents within the claimed range. Non-Final Act. 9; Yang 4. The moisture content of those “Other samples,” however, is not identified. Yang 4; see also Reply Br. 11 (contending that the “Other samples” lack the Appellant’s claimed moisture content). On this record, the Examiner does not explain, in any detail, why one of ordinary skill in the art would have modified the “Other samples” disclosed in Yang to include a moisture content within the claimed range (i.e., between 2 and 15%) while maintaining protein, fat, and chitin contents within the claimed ranges. For the reasons discussed above, the obviousness rejection of claims 1, 2, 4, 6, and 12-15 is not sustained. C. CONCLUSION The Examiner’s decision is reversed. 10 Examiner’s Answer dated April 9, 2021. Appeal 2021-003938 Application 15/541,140 11 In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4 101 Eligibility 1, 2, 4 1, 2, 4, 6, 12- 15 103 Yang 1, 2, 4, 6, 12- 15 Overall Outcome 1, 2, 4, 6, 12- 15 REVERSED