Ex Parte 8163315 et alDownload PDFPatent Trial and Appeal BoardAug 28, 201490020026 (P.T.A.B. Aug. 28, 2014) Copy Citation 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. Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 2 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 3 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 4 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. Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 5 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 6 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 7 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].” Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 8 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 9 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.) Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 10 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. Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 11 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. Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 12 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 13 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 14 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 15 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). Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 16 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 17 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 Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 18 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. Appeal 2014-005469 Patent 8,163,315 B2 Application 90/020,026 19 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 sl VEDDER PRICE P.C. 1633 BROADWAY, 47th FLOOR NEW YORK, NY 10019 TROUTMAN SANDERS LLP THE CHRYSLER BUILDING 405 LEXINGTON AVEUNE NEW YORK, NY 10174 Copy with citationCopy as parenthetical citation