Ex Parte BOER

Patent Trial and Appeal BoardMay 30, 2017

13303650 (P.T.A.B. May. 30, 2017)

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. 13/303,650 11/23/2011 Lex DE BOER 2919208-054002 4175 84331 7590 06/01/2017 MMWV TP T T C EXAMINER 7900 Westpark Drive, Suite A100 McLean, VA 22102 BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): docketing @ mm w vlaw .com cgmoore @ mmwvlaw. com dwoodward @ mmwvlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEX DE BOER Appeal 2015-003153 Application 13/303,650 Technology Center 1700 Before ROMULO H. DELMENDO, GEORGE C. BEST, and JENNIFER R. GUPTA, Administrative Patent Judges. BEST, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1 and 4—11 of Application 13/303,650 under 35 U.S.C. § 103(a) as obvious. Final Act. (January 31, 2014). Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a). An hearing was held on May 25, 2017. We have jurisdiction under 35 U.S.C. § 6. For the reasons set forth below, we reverse. 1 DSM IP Assets B.V. is identified as the real party in interest. Appeal Br. 3. Appeal 2015-003153 Application 13/303,650 BACKGROUND The ’650 Application describes an enzymatic composition that can be used to reduce the acrylamide content in cooked food products, methods for use of the enzymatic composition, and food products produced by those methods. Spec. 1. Claim 5 is representative of the ’650 Application’s claims and is reproduced below from the Claims Appendix of the Appeal Brief: 5. A method for the production of a food product involving at least one heating step, comprising adding: a. asparaginase and b. at least one hydrolyzing enzyme to an intermediate form of said food product in said production process whereby the asparaginase and at least one hydrolyzing enzyme are added prior to said heating step in an amount that is effective in reducing the level of acrylamide of the food product in comparison to a food product whereto no asparaginase and hydrolyzing enzyme were added, wherein said at least one hydrolyzing enzyme is an a-Amylase. Appeal Br. 23. REJECTION On appeal, the Examiner maintains the following rejection: Claims 1 and 4—11 are rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Zyzak2 and Kraus.3 2 US 7,514,113 B2, issued April 7, 2009. 3 US 5,209,938, issued May 11, 1993. 2 Appeal 2015-003153 Application 13/303,650 DISCUSSION We reverse the rejection of claims 1 and 4—11 because the Examiner has not established a prima facie case of obviousness. In particular, the Examiner has not explained why a person of ordinary skill in the art at the time of the invention would have been motivated to modify Zyzak by incorporating the a-amylase described in Kraus. As described in Zyzak, since April 2002, it is been known that acrylamide—a potential carcinogen—is formed in many types of cooked foods. Zyzak col. 1,11. 36—39. Thus, at the time of the invention, a person having ordinary skill in the art would have known that it is desirable to reduce the amount of acrylamide formed during the cooking process. Zyzak also describes a potential mechanism for the formation of acrylamide via the reaction of the amino acid asparagine with a carbonyl source, such as a reducing sugar. Id. col. 2,11. 31—49; Fig. 1. Zyzak further describes the reduction of acrylamide formation by addition of the enzyme asparaginase to the food product before cooking. Id. Abstract. The asparaginase catalyzes the conversion of asparagine to aspartic acid. Id. Fig. 2. In view of Zyzak’s description, a person of ordinary skill in the art would have believed that the addition of a-amylase to a food product would increase the amount of acrylamide produced. This is because a-amylase breaks down starch to produce reducing sugars. A person having ordinary skill in the art, being familiar with the laws of chemistry, would understand that increasing the amount of reducing sugar present in a food product would increase the amount of acrylamide produced whether due to kinetic effects or mass-balance (i.e., thermodynamic) considerations. 3 Appeal 2015-003153 Application 13/303,650 In view of the foregoing, we agree with Appellant that the Examiner has not identified a plausible reason supported by sufficient facts to explain why a person having ordinary skill in the art, at the time of the invention, would have added a-amylase to an uncooked food product. Although Kraus teaches that a-amylase retards the staling of baked goods without causing gumminess or adversely affecting the organoleptic characteristics of baked goods (Abst.), the person having ordinary skill in the art would have believed that the addition of a-amylase would at least partially negate the benefit of treating the uncooked food product with asparaginase. In the absence of such a plausible reason, we cannot sustain the rejection. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). CONCFUSION For the reasons set forth above, we reverse the rejection of claims 1 and 4—11 of the ’650 Application. REVERSED 4