Ex Parte 8163315 et al

Patent Trial and Appeal Board

Aug 28, 2014

90020026 (P.T.A.B. Aug. 28, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
90/020,026 09/13/2012 8163315 241959-000003 6826
99562 7590 08/29/2014
Vedder Price P.C.
1633 Broadway, 47th Floor
New York, NY 10019
EXAMINER
DIAMOND, ALAN D
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
08/29/2014 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DuPont Nutrition BioSciences ApS
Appellant
____________________

Appeal 2014-005469
Reexamination Control 90/020,026
Patent 8,163,315 B2
Technology Center 3900
____________________

Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
DuPont Nutrition BioSciences ApS (Appellant) seeks review of the
Examiner’s decision to reject claims 9-20 of the Reexamination Application
90/020,026. We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
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For the reasons presented in the Examiner’s Final Office Action
mailed August 23, 2013 (Final Action) and the Answer mailed January 17,
2014 (Answer), we AFFIRM. We add the following for emphasis.
Appellant’s claims are directed to a process for preparing a baked
good from a food material including steps of contacting the food material
with a Thermomyces enzyme and inactivating or denaturing the
Thermomyces enzyme (claim 9). The food material contains as ingredients a
first constituent and a second constituent (claim 9). The first constituent
comprises a liquid fatty acid ester. The second constituent is selected from
the group consisting of a polyvalent alcohol, dextrin, glycerol, ethanol, citric
acid, tartaric acid, lactic acid, ascorbic acid, and mixtures thereof.
Contacting the food material with the Thermomyces enzyme generates an
emulsifier by reaction of the fatty acid ester and generates a second
functional ingredient by reaction of the second constituent. The
Specification defines a functional ingredient as “a constituent of the
foodstuff which performs a specific function in the foodstuff.” (U.S Patent
8,163,315 Specification (Spec.), col. 3, ll. 13-15.) The Specification
exemplifies ingredients such as emulsifiers, preservatives, and anti-oxidants
as functional ingredients (Spec., col. 3, ll. 15-22).
Because the functional ingredients are generated in-situ during the
process of preparing the foodstuff, the process overcomes the disadvantages
of adding separately synthesized functional ingredients (e.g., emulsifiers,
preservatives, and antioxidants, etc.). For instance, the in-situ generation
process overcomes the disadvantage of having to list functional ingredients
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as additives on the food label (Spec. col. 3, ll. 28-56). Claim 9 is illustrative
of the process on appeal:
9. A process for preparing a baked good suitable for
human consumption and a first functional ingredient thereof
comprising an emulsifier and a second functional ingredient
thereof in situ,
wherein the baked good and first and second functional
ingredients are prepared from a food material,
wherein the food material contains as an ingredient a first
constituent comprising liquid fatty acid ester,
wherein the food material contains as an ingredient a
second constituent,
wherein the second constituent is selected from the group
consisting of a polyvalent alcohol, dextrin, glycerol, ethanol,
citric acid, tartaric acid, lactic acid ascorbic acid, and mixtures
thereof,
wherein the method comprises:
(i) contacting the food material with a Thermomyces
enzyme,
wherein the emulsifier is generated by the Thermomyces
enzyme by reaction of the fatty acid ester,
wherein the second functional ingredient is generated by
the Thermomyces enzyme by reaction of the second constituent,
and thus by the Thermomyces enzyme acting as to both
the first constituent and the second constituent; and
(ii) inactivating or denaturing the Thermomyces enzyme,
wherein the baked good comprising the in situ prepared
emulsifier and the in situ prepared second functional ingredient
from the Thermomyces enzyme acting as to both the first
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constituent and the second constituent, the fatty acid ester, and
the Thermomyces enzyme in an inactive or denatured form, is
prepared.
(Claims App’x at Appeal Br. 59.)
The Examiner rejects the claims as follows:
A. Claims 9-13 and 17-20 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under § 103(a) as obvious over
Olesen; 1
B. Claims 14 and 15 are rejected under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under § 103(a) as obvious over
Olesen as evidenced by Belitz; 2 and
C. Claim 16 is rejected under 35 U.S.C. § 103(a) as obvious over
Olesen.
Appellant states that the claims do not stand or fall together and that
“Appellant contests each, every[,] and all findings underlying the Examiner's
rejections for each of claims 9-13 and 17-20 under a separate heading.”
(Appeal Br. 12.)

OPINION
A. REJECTION A
As stated above, the Examiner rejects claims 9-13 and 17-20 under 35
U.S.C. § 102(b) as anticipated by or, in the alternative, under § 103(a) as
obvious over Olesen. We have reviewed the rejection in light of Appellant’s
arguments and have considered the rejection of each of the claims in light of

1 Olesen, WO 94/04035 published March 3, 1994.
2 Belitz, Food Chemistry, Translated from the second German Edition by D.
Hadziyev.
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those arguments. Where the issues arising from the arguments can be
discussed together, we do so.
1. CLAIM 9
There is no dispute that Olesen describes a process for preparing a
baked good from a food material (dough) by contacting the food material
with a Thermomyces enzyme (compare Final Action 5 with Appeal Br. 12-
18; Appeal Br. 28-35; Reply Br. 9-29); see also Ex Parte Reexam. Request
15 (“Thermomyces is a more recent name for Humicola, and the two terms
are synonymous” and Olesen, p. 14 and p. 20 (specifying the use of Lipase
A: Humicola langinosa lipase)).
Claim 9 includes several clauses specifying what the food material
contains. The food material must contain “as an ingredient a first constituent
comprising a liquid fatty acid ester.” The food material must also contain
“as an ingredient a second constituent” and the second constituent must be
“selected from the group consisting of a polyvalent alcohol, dextrin,
glycerol, ethanol, citric acid, tartaric acid, lactic acid ascorbic acid, and
mixtures thereof.”
Claim 9 also requires that the Thermomyces enzyme act so that the
liquid fatty ester reacts to form an emulsifier and the second constituent
reacts to form a second functional ingredient.
As acknowledged by Jorn Borch Soe, the listed inventor of the
process described in the patent subject to the reexamination, in Olesen’s
process, the lipase enzyme (Thermomyces enzyme) acts on triglycerides in
the dough to form an emulsifier comprising mono- and diglycerides (Soe
Decl. ¶¶ 8-9; see also Olesen, p. 5, l. 14 to p. 6, l. 7). There is no real
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question that triglycerides are fatty acid esters and that Olesen’s emulsifier is
generated by the Thermomyces enzyme by reaction of the fatty acid ester
(id.; see also Spec. col. 5, ll. 65-66; Soe Decl. ¶ 8).
Appellant contends that Olesen’s lipase enzyme “acts on triglycerides
endogenously present in flour” and “Olesen does not enable an enzyme
acting upon exogenously added liquid fatty acid ester as instantly claimed.”
In other words, the food material (dough) of Olesen does not “contact as an
ingredient a first constituent comprising liquid fatty acid ester.” (see, e.g.,
Appeal Br. 12-13).
Therefore, the first issue is: Has Appellant identified a reversible
error in the Examiner’s finding that Olesen’s food material (dough)
“contains as an ingredient a first constituent comprising liquid fatty acid
ester” as required by claim 9? (Compare Final Action 5 and Ans. 3 with
Appeal Br. 12-18.)
There is no question that Olesen discloses that the triglycerides within
the flour are acted on by the lipase enzyme (Olesen, p. 5, ll. 14-20). As
found by the Examiner, “Olesen’s dough can further contain conventional
added fat such as oil of animal or vegetable origin” (Final Action 5). It is
this added oil that the Examiner finds contains liquid fatty acid ester as
required by claim 9 (id.).
A preponderance of the evidence supports the finding of the
Examiner.
As a first matter, claim 11, which depends from claim 9, further limits
the fatty acid ester to a triglyceride. Claim 16 further limits the first
constituent of claim 9 to a group including vegetable oil. There can be no
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dispute that “constituents comprising liquid fatty acid ester” as recited in
claim 9 include triglycerides found in vegetable oil. In fact, such is not
disputed (see Appeal Br. and Reply Br., in their entirety).
Olesen states that “[l]ipase (EC 3.1.1.3) is an enzyme belonging to the
glycerol ester hydrolases, which catalyzes hydrolysis of ester bonds in
triglycerides.” (Olesen, p. 1, ll. 26-28.)
Olesen explains that there was a prior expectation in the art that “the
use of lipase would only be suited for the preparation of dough and/or baked
products containing a certain minimum amount of added fat or lipids (the
substrate for lipase),” but that “it has surprisingly been found that lipase also
exerts an advantageous effect in dough without any added fat or dough
containing only low amounts of added fat.” (Olesen, p. 3, ll. 14-19.)
Olesen expressly states that the dough may contain added fat such as
oil of animal or vegetable origin in amounts of at most 3.5% by weight of
the flour components (Olesen, p. 3, l. 27 to p. 4, l. 11).
Olesen describes contacting the food material (dough) with a lipase
enzyme that may be a Thermomyces lipase enzyme such that the fatty acid
esters (triglycerides) react to form an emulsifier (Olesen, p. 5, ll. 14-20 and
p. 6, ll. 4-7).
Appellant has not identified a reversible error in the Examiner’s
finding that Olesen describes within the meaning of § 102 or, in the
alternative, suggests within the meaning of § 103, contacting a food material
(Olesen’s dough) with a Thermomyces enzyme “wherein the food material
contains as an ingredient a first constituent [e.g., vegetable oil] comprising a
liquid fatty acid ester [liquid triglycerides].”
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With regard to the obviousness aspect of the rejection, Appellant
further argues that Olesen teaches away from adding liquid fatty acid ester
(Appeal Br. 28-31). On the contrary, Olesen provides evidence that it was
known in the art to prepare dough and baked products containing added fat
or lipids, the substrate for lipase (Olesen, p. 3, ll. 14-17), and Olesen
expressly discloses adding fat (lipid) in the form of, for instance, vegetable
oil, in amounts of at most 3.5% by weight of flour (Olesen, p. 3. l. 27 to p. 4,
l. 11 and p. 14, ll. 9-16). Olesen does not teach away, as that phrase is used
in the context of obviousness, from adding liquid fatty acid ester in, for
instance, vegetable oil, to the dough.
The next issue concerns the second constituent and the formation of
the second functional ingredient. Appellant’s claim 9 requires the food
material contain “as an ingredient a second constituent selected from the
group consisting of a polyvalent alcohol, dextrin, glycerol, ethanol, citric
acid, tartaric acid, lactic acid ascorbic acid, and mixtures thereof.” In the
step of contacting the food material with the Thermomyces enzyme, a
“second functional ingredient is generated by the Thermomyces enzyme by
reaction of the second constituent.”
There is no dispute that Olesen is silent with respect to a second
constituent being acted on by the lipase enzyme to generate a second
functional ingredient, rather the Examiner’s rejection rests on findings of
inherency (compare Final Action 7-8 with Appeal Br. 12-16).
The Examiner finds Olesen teaches the dough can include a number
of the components Appellant lists as second constituents in claim 9 including
ascorbic acid and polyvalent alcohols (sugar alcohol, polyol, glycerol), and
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that it would have been obvious to have added a number of other well-
known bread improving agents and other additives including maltodextrin,
citric acid, tartartic acid, ethanol, glycerol, and lactic acid to the dough
(Final Action 7-9). According to the Examiner, it was well-known to add
maltodextrin as a sweetener, thickening agent and bulking agent; citric acid
as a natural preservative and dough conditioner; tartartic acid as an
antioxidant; ethanol to improve shelf life; glycerol as a moisture retainer,
texture and sheen improver and promoter of better flavor and color retention;
and to add lactic acid as an oxidant and acidulant (Final Action 8-9).
Appellant does not dispute the Examiner’s finding that Olesen teaches
adding ascorbic acid and polyvalent alcohols to the dough or it was known
in the art to add the various other constituents to dough (Appeal Br. 12- 18).
Appellant, instead, takes issue with the Examiner’s finding that once added
these compounds would inherently be acted on by the Thermomyces enzyme
and would generate a second functional ingredient as required by claim 9.
The Examiner’s finding of inherency is “based on the fact that Olesen
performs essentially the same process steps as described by Appellant using
the same lipase enzyme, and, as noted above, forms the claimed first
functional ingredient, i.e., emulsifier.” (Final Action 7.)
Soe declares that “Olesen leads the reader to believe that the lipase
enzyme only reacts on the lipid of the lipid-gluten aggregate and forms an
emulsifier comprising mono- and diglycerides” (Soe Decl. ¶ 8) and “Olesen
does not contemplate that lipase or, indeed, any enzyme, could or should
catalyze two reactions in the same bread making process.” (Soe Decl. ¶ 9.)
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But the fact that Olesen does not expressly state that any reaction
between the second constituent occurs does not defeat the Examiner’s
finding of inherency. “[A] prior art reference without express reference to a
claim limitation may nonetheless anticipate by inherency.” In re
Omeprazole Patent Litigation, 483 F.3d 1364, 1373 (Fed. Cir. 2007). Past
recognition of the inherent feature is not required. Schering Corp. v. Geneva
Pharm., 339 F.3d 1373, 1377 (Fed. Cir. 2003); see also, e.g., Gen. Elec. Co.
v. Jewel Incandescent Lamp Co., 326 U.S. 242, 249 (1945) (“It is not
invention to perceive that the product which others had discovered had
qualities they failed to detect.”). What is required is that the inherent feature
inevitably results from the disclosed steps; “[i]nherency ... may not be
established by probabilities or possibilities.” In re Montgomery, 677 F.3d
1375, 1380 (Fed. Cir. 2012).
Appellant contends that this is a case of “probabilities and
possibilities,” but we are not persuaded. As found by the Examiner and not
disputed by Appellant, following the suggestions of Olesen leads to adding
polyvalent alcohols such as glycerol as part of the added fat, adding ascorbic
acid as an oxidant to strengthen the gluten structure (Olesen, p. 11, ll. 34-
35), and also adding other polyvalent alcohols (“sugar alcohol or another
polyol”) as part of the enzyme preparation (Olesen, p. 10, ll. 23-28). The
presence of these components along with the enzyme in the same type of
composition as Appellant (food product dough), and contacting them in the
same or substantially the same way as taught by Appellant reasonably
indicates that the same reactions would inevitably or necessarily occur.
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Where an examiner has reason to believe that a characteristic in a
claim may, in fact, be an inherent characteristic of the prior art, the examiner
possesses the authority to require the applicant to prove that the subject
matter shown to be in the prior art does not possess the characteristic the
applicant is relying on for patentability. In re Best, 562 F.2d 1252, 1254-55
(CCPA 1977) (quoting In re Swinehart, 439 F.2d 210 (CCPA 1971). An
examiner’s belief is reasonable where starting materials and processing of
the prior art are so similar to those disclosed by the applicant that it appears
that the claimed characteristic would naturally result when conducting the
process as taught in the prior art. See In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990); Best, at 1255.
The Examiner has provided the necessary evidence and analysis to
shift the burden to Appellant to show that the reaction would not inherently
occur in the process of Olesen. Appellant has not met that burden.
Nor, contrary to the arguments of Appellant (Appeal Br. 17), is this a
case of accidental, unwitting, and unappreciated anticipation as was the case
in Tilghman v. Proctor, 102 U.S. 707, 711-12 (1880) or Eibel Process Co. v.
Minnesota & Ontario Paper Co., 261 U.S. 45, 66 (1923). Here we have a
prior art reference that teaches the same or similar starting materials and the
same or similar process as taught by Appellant in their Specification. We do
not have a process that may have occurred, but was not shown to actually
occur (Tilghman) or a process in which some unusual condition is required
to bring about the result (Eibel).
A preponderance of the evidence supports the Examiner’s finding of
inherency with regard to the reaction of the second constituents.
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Claim 9 also requires a step of inactivating or denaturing the
Thermomyces enzyme.
Olesen is silent as to any inactivating or denaturing of the lipase.
However, Olesen bakes the dough to form a baked product such as bread
(Olesen, p. 12, ll. 11-19, p. 13, ll. 1-6). In Example 1, baking was performed
at 225 °C for 30 minutes (Olesen, p. 17, l. 8). In Examples 2-7, Olesen
bakes the dough at 225°C for 20 minutes for rolls or 30 minutes for a bread
loaf (Olesen, p. 17, l. 34).
The Examiner finds that baking the dough at 225°C for 20 minutes for
rolls or 30 minutes for a bread loaf inactivates/denatures the lipase enzyme
(Final Action 6).
Appellant’s own Specification discloses heating inactivates the
conversion agent (enzyme) such that the enzyme is denatured and may then
constitute protein (Spec., col. 4, ll. 48-51; col. 9, ll. 25-26). Appellant’s
Examples inactivate the enzyme by heating for a short time at 100 °C (see,
e.g., Example 14 at col. 15, ll. 7-8 (example of forming sponge cake)).
That heating at 225 °C for 20 or 30 minutes would inactivate and
denature Olesen’s enzyme is well supported by the evidence.
There is no argument that baking would not inherently
inactivate/denature the enzyme, rather Appellant contends that to meet the
claimed process Olesen must inactivate or denature the enzyme in order to
intentionally control the amount of functional ingredients generated (Appeal
Br. 16-17; Reply Br. 8 and 27-28). But claim 9 does not require any
particular amount of functional ingredient be generated, any miniscule
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amount meets the requirements of the claim. Nor does the claim require the
amount of functional ingredient be controlled.
Appellant has not identified a reversible error in the Examiner’s
finding that Olesen’s baking step would inactivate/denature the enzyme as
required by claim 9.
Claim 9 also includes a last “wherein clause” stating “wherein the
baked good comprising the in situ prepared emulsifier and the in situ
prepared second functional ingredient from the Thermomyces enzyme acting
as to both the first constituent and the second constituent, the fatty acid ester,
and the Thermomyces enzyme in an inactive or denatured form, is prepared.”
With regard to the last wherein clause of claim 9, Appellant in the
Reply Brief argues that the Examiner failed to consider the limitations of
that clause (Reply Br. 8) and further argue that Olesen teaches away from
the baked good containing fatty acid ester (Reply Br. 28). These arguments
appear for the first time in the Reply Brief, and we will not consider them
here. Appellant has not convinced us of a reversible error in the Examiner’s
rejection of claim 9.
2. CLAIMS 10 and 11
Claim 10 requires that the fatty acid ester comprise at least two ester
groups and claim 11 requires that the fatty acid ester be a triglyceride.
There is no dispute that triglyceride meets the requirements of claims
10 and 11. Appellant’s arguments are directed to limitations within claim 9
already discussed above. Appellant has not identified a reversible error in
the Examiner’s rejection of claims 10 and 11.
3. CLAIMS 12 and 13
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Claim 12 requires that the emulsifier be “selected from the group
consisting of mono glycerides, diglycerides and mixtures thereof” and claim
13 requires that the enzyme be an enzyme having lipase activity. There is no
dispute that Olesen discloses the required emulsifier and enzyme.
4. CLAIMS 17 and 18
Claim 17 requires the second constituent of claim 9 be ascorbic acid.
Claim 18 is broader and requires the second constituent of claim 9 be
selected from the group consisting of citric acid, tartaric acid, lactic acid and
ascorbic acid.
The Examiner finds that Olesen teaches adding ascorbic acid (Final
7).
Appellant contends that listing ascorbic acid in a list does not by
necessity mean that it is a second constituent upon which lipase can react
and further contends that such a mere listing is not an enabling disclosure
(Appeal Br. 22). Appellant again takes issue with the Examiner’s finding of
inherency (Appeal Br. 22-23).
For the reasons presented above, we do not find these arguments
convincing of reversible error in the Examiner’s rejection of claim 17 and
18.
5. CLAIM 19
Claim 19 requires the second constituent be a polyvalent alcohol.
The Examiner finds that Olesen teaches including glycerol, sugar
alcohol or polyol, which are polyvalent alcohols (Final Action 7).
Appellant contends there are no working examples in which a
polyvalent alcohol is used as a second constituent, no disclosure of lipase
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reacting with polyvalent alcohol, and Olesen only discloses one enzymatic
reaction (Appeal Br. 25).
But the fact that Olesen is silent with respect to a reaction is not
evidence that a reaction does not occur. There is no dispute here that Olesen
discloses that the enzyme preparation may contain a sugar alcohol or another
polyol as found by the Examiner (Final Action 7; Appeal Br. 24-25; see also
Olsen, p. 10, ll. 17-28). Nor is there any convincing dispute that glycerol is
inherently present in vegetable oils conventionally used in baking (compare
Final Action 7 with Appeal Br. 24-25). Appellant’s own Specification
provides evidence that sugar alcohols and polyols will react in the presence
of lipase enzyme (Spec., col. 5, ll. 41-62 (polyvalent alcohols including
glycerol mentioned at line 56)).
Appellant has not identified a reversible error in the Examiner’s
finding that Olesen teaches adding polyvalent alcohol and that the
polyvalent alcohol would inherently react in the process of Olesen to form a
second functional ingredient.
6. CLAIM 20
Claim 20 requires that the baked good of claim 9 be “selected from
bread, cakes, sweet dough products, laminated doughs, liquid batters,
muffins, doughnuts, biscuits, crackers and cookies.”
The Examiner finds that Olesen teaches the baked product produced
can be any product prepared from dough, such as bread in the form of loaves
and rolls, French baguette-type bread, pita bread, tacos, cakes, pancakes,
biscuits, crisp bread and the like (Final Action 6-7 and Ans. 17, both citing
Olesen, p. 12, lines 11-19).
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Appellant has not identified a reversible error in the Examiner’s
finding (Appeal Br. 25-26).
REJECTION B
The Examiner rejects claims 14 and 15 under 35 U.S.C. § 102(b) as
anticipated by or, in the alternative, under 103(a) as obvious over Olesen as
evidenced by Belitz.
Claim 14 requires that the second functional ingredient be a galactose
derivative. Claim 15 requires the second functional ingredient be a
diglyceride derivative.
As a first matter, it is not entirely clear what compounds are embraced
by the terms “galactose derivative” and “diglyceride derivative.” The
Specification does not define these terms or provide examples of compounds
considered to be such derivatives (Final Action 9). We define a galactose
derivative as any compound that may be derived from any reaction involving
galactose, and a diglyceride derivative as any compound that may be derived
from any reaction involving diglyceride.
The Examiner finds that in the process of Olesen, “[a] ‘diglyceride
derivative’ and a ‘galactose derivative’ are inherently generated by Olesen’s
Humicola Lanuginosa lipase enzyme by reaction of anyone or more of said
ascorbic acid, glycerol, sugar alcohol, polyol, maltodextrin, citric acid,
tartaric acid, ethanol and/or lactic acid.” (Final Action 9-10.)
To support this finding the Examiner cites to Table 15.18 on page 509
of Belitz (Final Action 10). Table 15.18 lists nonstarch lipids present in
wheat flour including a number of glycerols. The Examiner finds, and
Appellant does not dispute, that these nonstarch lipids would also be present
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in vegetable and animal oils (Final Action 10; Appeal Br. 44-48). Moreover,
the Examiner finds that milk powder contains lactose, which is a galactose-
glucose disaccharide (id.). Olesen discloses the addition of milk powder
(Olesen, p. 11, l. 22).
Appellant’s Specification discloses that sugars such as galactose may
react with polyvalent alcohols (second constituent) such as glycerol (Spec.,
col. 8, ll. 52-63).
We note that Belitz also discloses that tartaric acid, lactic acid, and
ascorbic acid were known to react with mono- and diacylglycerides or their
derivatives, which were conventionally added as emulsifiers, to produce
esters (Belitz, § 15.4.1.4.7).
As acknowledged by Appellant, the Examiner also finds that “DGDG
(digalactosyl diacylglycerols) among others are inherent and natural
constituents of wheat-based dough; and that the possible addition of ascorbic
acid, glycerol, sugar, milk powder, etc., inevitably leads to a galactose
derivative upon action with lipase.” (Appeal Br. 44; see also Final Action
10.)
Appellant contends that “the Examiner fails to provide evidence that a
second constituent is necessarily present in Olesen and that a second
functional ingredient, specifically a galactose derivative, is necessarily
produced therefrom.” (Appeal Br. 44.) But as we explained above, the
presence of same or similar ingredients processed in the same or similar
manner provides a basis supporting the Examiner’s finding of inherency.
Appellant also notes that Olesen fails to disclose such reactions
(Appeal Br. 45-46). But, again, Olesen’s silence is not evidence that the
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reaction fails to occur. Knowledge of the reaction is not required to support
a finding of inherency.
Appellant has not identified a reversible error in the Examiner’s
finding of inherency.
REJECTION C
Claim 16 is rejected under 35 U.S.C. § 103(a) as obvious over Olesen.
Claim 16 requires the first constituent be “a vegetable oil, vegetable
oil extract or vegetable oil derivative from palm oil, sunflower oil, soya bean
oil, safflower oil, cotton seed oil, ground nut oil, corn oil, olive oil, peanut
oil, coconut oil and rape seed oil or mixtures thereof.”
Appellant contends that Olesen does not teach or suggest that the
enzyme acts on exogenously added vegetable oil, but as we explained above
Olesen describes adding small amounts of vegetable oil and teaches the
lipase enzyme acts on the triglycerides, which are present in the oil as well
as in the flour, to produce the emulsifier.
Appellant further contends that Olesen does not teach or suggest
adding liquid fatty acid ester (Appeal Br. 56). But vegetable oil is a liquid.
Therefore, we are not convinced.
Appellant has not identified a reversible error in the Examiner’s
rejection of claim 16.
CONCLUSION
We sustain the Examiner’s rejections.

DECISION
The Examiner’s decision is affirmed.
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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)(1).

AFFIRMED

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