Ex Parte Barker et al

Patent Trial and Appeal Board

Sep 17, 2012

10137391 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LARRY D. BARKER,
RONALD W. MARTENS, and E. DONALD MURRAY
__________

Appeal 2011-005508
Application 10/137,391
Technology Center 1600
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-22, 28, 29, 31, and 32.1 We have
jurisdiction under 35 U.S.C. § 6(b).

1 Claims 23-27 and 35-37 are also pending, and have been indicated as being
free of the prior art (App. Br. 2; see also Ans. 2).
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STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows
(emphasis added):
1. A process of preparing a canola protein isolate, which comprises:
(a) extracting a canola oil seed meal at a temperature of at least about
5°C to cause solubilization of protein in said oil seed meal and to form an
aqueous canola protein solution having a protein content of about 5 to about
30 g/L and a pH of about 5 to about 6.8,
(b) separating the aqueous canola protein solution from residual
canola oil seed meal,
(c) increasing the protein concentration of said aqueous canola
protein solution to at least about 200 g/L while maintaining the ionic
strength substantially constant by using a selective membrane technique to
provide a concentrated canola protein solution,
(d) diluting said concentrated canola protein solution into chilled
water having a temperature below about 15°C to cause the formation of
canola protein micelles,
(e) settling the canola protein micelles to form an amorphous, sticky,
gelatinous, gluten-like canola protein micellar mass, and
(f) separating the canola protein micellar mass from supernatant said
canola protein micellar mass having a protein content of at least about 100
wt% as determined by Kjeldahl nitrogen x 6.25 on a dry weight basis.

The following ground of rejection is before us for review:
Claims 1-22, 28, 29, 31, and 32 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Murray ’0762 or
Murray ’0863 as combined with Jones4 (Ans. 3).
We affirm-in-part.

2 Murray, US Patent No. 6,005,076, issued December 21, 1999.
3 Murray, US Patent No. 5,844,086, issued December 1, 1998.
4 Jones et al., US Patent No. 4,158,656, issued June 19, 1979.
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ANALYSIS
As to independent claim 1, the Examiner finds that the Murray patents
(Murray ’076 and Murray ’086) teach the method of claim 1 (Ans. 5). As to
the limitation of step (c) of “increasing the protein concentration of said
aqueous canola protein solution to at least 200 g/L,” the Examiner finds that
the Murray references teach “increasing the protein concentration of the
aqueous protein solution by utilizing the same method steps as of the
claimed invention's method steps,” and thus would be “intrinsically” able to
increase the protein isolate to the claimed amount (id. at 7).
Appellants assert that “by increasing the canola protein concentration
in the aqueous protein solution to at least 200 g/L, a value much higher than
described in the Murray patents for the preparation of a canola protein
isolate, and preferably higher, increased yields of canola protein isolate, in
excess of about 40 wt %, are obtained and the canola protein isolate has a
much higher protein content of at least about 100 wt% (N x 6.25) than
contemplated in the Murray patents for a canola protein isolate” (App. Br.
4).
Appellants argue that “in Example 1 of the cited Murray patents, the
protein solution was concentrated to a protein concentration of
approximately 120 mg/ml (or 120 g/L), well below the at least about 200 g/L
required by applicants claim 1” (id. at 5). Appellants assert:
As is set forth in the disclosure on pages 1 and 2, the yields
obtained using the cited Murray patents were typically around
20 wt%. This information is not contained in the Murray
patents themselves but is the personal knowledge of the
inventor, E. Donald Murray, who is a common inventor with
respect to this application and the cited Murray patents. Yields
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in excess of 40 wt% of canola protein isolate can be obtained
using the process of the invention.

(Id. at 6.)
Appellants argue that “[w]hile the Murray references may refer to
concentration of aqueous protein solution to a concentration of 40 to 200 g/L
(col. 5, line 45 of Murray '076), it is clear from the Examples that, if canola
protein isolate is to be formed, much lower concentrations are used” (id. at
7-8). Appellants further assert that increasing the concentration would not
inherently lead to the claimed process, as “[t]he mere fact of concentration
does not necessarily lead to a protein concentration of at least about 200 g/L,
as required by applicants claims, but rather the protein content depends on
the degree of concentration which is effected” (id. at 7).
Appellants’ arguments as to claim 1 have been carefully considered,
but are not convincing. Example 1 of Murray ’076 illustrates the preparation
of a protein isolate from canola oil seed meal (Murray, ’076, col. 6).
Specifically, in Example 1, Murray ’076 teaches that the clarified solution
“was concentrated in a hollow fiber ultrafiltration system with a molecular
weight cut-off of 30,000 to a final volume of 50 liters with a protein
concentration of approximately 120 mg/ml” (id. at col. 7, ll. 12-15).
Murray ’076 teaches further, however, that
The concentrated protein solution resulting from the
concentration and defatting steps, generally having a protein
concentration of about 40 to about 200 g/l, depending on the
initial protein concentration and the volume reduction factor
used, is diluted to an ionic strength of less than about 0.2,
generally by adding the concentrated protein solution into a

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body of water having the volume required to achieve the
required ionic strength decrease.

(Id. at col. 5, ll. 46-53.)
Thus, we agree the Examiner that as Murray ’076 teaches that
ultrafiltration may be used to concentrate the protein, which is the same
method required by claim 1, that it would have been obvious to use
ultrafiltration to concentrate the aqueous canola protein solution in Example
1 of Murray ’076 to about 200 g/l as taught by Murray ’076. We recognize
that Example 1 of Murray ’076 is drawn to an embodiment where a
concentration of 120 mg/ml (120 g/l) was obtained, but there is nothing in
Murray ’076 that would suggest that a higher protein concentration could not
be achieved using an ultrafiltration system.
We thus, affirm the rejection as to claim 1. As Appellants do not
present separate arguments as to claims 2-11, 16-22, 29, 31, and 32,
therefore they fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue as to claims 12-14 that Jones “does not disclose or
suggest applicants specific pigment removal procedures, i.e. diafiltration of
the aqueous protein solution (claim 12) or mixing the aqueous protein
solution with a pigment absorbing agent (claim 13), which may be powdered
activated carbon (claim 14), and subsequently removing the pigment
absorbing agent” (App. Br. 10). According to Appellants, Jones only
describes “a procedure in which desolventized rapeseed flour is extracted
with an aqueous alcohol solution,” and does not describe a “procedure in
which pigment is removed by processing of aqueous protein solution, as in
applicant’s claims 12 to 14” (id.).
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Claims 12-14 specify different ways in which pigment may be
removed from the aqueous canola protein solution. The Examiner only
finds, however, that “[i]t would have been obvious to one of ordinary skill in
the art of creating a method of preparing a protein isolate and/or preparing a
canola protein isolate to modify both Murray’s method of preparation to
include the beneficial teaching of Jones’s pigment removal step within
Murray’s method of preparation because the above combined teachings
would create a protein isolate and/or a canola protein isolate of reduced
pigment” (Ans. 7).
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). In determining
obviousness, the Examiner must consider all of the claim limitations in
setting forth a rejection over the prior art. See, e.g., In re Geerdes, 491 F.2d
1260, 1262-63 (CCPA 1974) (in considering grounds of rejection, “every
limitation in the claim must be given effect rather than considering one in
isolation from the others.”). In order to facilitate review of the obviousness
determination, the “analysis should be made explicit.” KSR Int’l v. Teleflex
Inc., 550 U.S. 398, 418 (2007).
In this case, while we agree with the Examiner that it would have been
obvious to remove the pigment from the aqueous canola protein solution, the
Examiner has not addressed or made findings as to the specific steps
required by claims 12-14. We thus, reverse the rejection as to those claims.
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Appellants argue as to claim 15 that the Examiner does not rely on
specific evidence to render the claim obvious, but only asserts that it is
conventional in the art, and within the level of skill of the ordinary artisan
(App. Br. 10). Appellants assert that the salt extraction procedure disclosed
by Murray “is extraction of the oil seed meal using aqueous salt solution,”
and there is no suggestion “to effect extraction of the oil seed meal with
water and subsequently add food grade salt to the resulting aqueous canola
protein isolate to provide an aqueous canola protein solution having an ionic
strength of at least about 0.10” (id. at 11).
Claim 15 is drawn to the method of claim 1, wherein “said canola oil
seed meal is extracted by water and subsequent thereto food grade salt is
added to the resulting aqueous canola protein solution to provide an aqueous
canola protein solution having an ionic strength of at least about 0.10.”
The Examiner finds that Murray ’076 teaches that “the addition of
water has an affect on protein solution ionic strengths” (Ans. 8).
Specifically, in Example 1, Murray ’076 teaches an extraction step of adding
an aqueous solution of 0.5 M sodium chloride, i.e. salt, to canola meal
(Murray ’076, col. 6, ll. 62-64). The Examiner has not provided any
scientific reasoning or evidence, however, as to why it would have been
obvious to extract water and then add salt. We thus, reverse the rejection as
to claim 15.
As to claim 28, Appellants again argue that the Examiner does not
rely on specific evidence to render the claim obvious, but only asserts that it
is conventional in the art, and within the level of skill of the ordinary artisan
(App. Br. 11). Appellants argue that “the sole procedure described in the
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Murray references for processing the concentrated canola protein solution is
dilution of the solution to cause micelle formation, settling of the micelles
and recovering of the coalesced micelles,” and that the reference does not
suggest “that an alternative procedure may be used, such as those defined in
claim 28” (id.).
Claim 28 is drawn to the method of claim 1, “wherein, as an
alternative to said diluting, settling and recovering steps, the concentrated
canola protein solution is dialyzed to reduce the salt content thereof and to
cause the formation of canola protein micelles, and recovering a canola
protein isolate from the dialyzed concentrated canola protein solution having
a protein content of at least about 100 wt% as determined by Kjeldahl
nitrogen x 6.25 on a dry weight basis.”
Murray ’076 teaches that it is the decrease in ionic strength that causes
the formation of a cloud-like mass of highly aggregated protein molecules in
discrete protein droplets in micellar form (Murray, ’076, ll. 60-62). As
found by the Examiner, “the substitution of the purification steps of diluting
and settling the concentrated protein solution as disclosed in independent
claim 1 to obtain a desired purified canola protein isolate for the purification
step of … dialyzed the concentrated protein solution” would have been
within the level of skill of the ordinary artisan (Ans. 8). Stated differently,
the ordinary artisan would understand that dialysis would accomplish the
same effect as adding water to the canola protein solution, that is, diluting
the salt and thus reducing the ionic strength, allowing for the formation of
canola protein micelles. We thus, affirm the rejection as to claim 28.

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SUMMARY
We affirm the rejection of claims 1-22, 28, 29, 31, and 32 under 35
U.S.C. § 103(a) as being rendered obvious by the combination of Murray
’076 or Murray ’086 as combined with Jones as to claims 1-11, 16-22, 28,
29, 31, and 32, but reverse as to claims 12-15.

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

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