Ex Parte Döring et al

Patent Trials and Appeals Board

Jan 4, 2019

15196748 - (D) (P.T.A.B. Jan. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
15/196,748 06/29/2016
28249 7590 01/07/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE405
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Sven-Rainer Doring
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1507-166 1022
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/07/2019 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 SVEN-RAINER DORING, JAN ASCHEMANN,
and THORBEN OEHICKERS
Appeal2018-002889
Application 15/196,748
Technology Center 1700
Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
JANEE. INGLESE, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
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Application 15/196, 7 48
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § I34(a) the final rejection of
claims 1-15, which constitute all the claims pending in this application. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
We AFFIRM.
Appellants' invention is directed to a process of producing lactose-
free dairy products having a largely identical mineral composition as
compared with an initial milk composition. (Claim 1; Spec. ,r 1 ).
Claims 1 and 3 are illustrative:
1. A process for producing lactose-free dairy products,
consisting essentially of the following steps:
(a) subjecting a starting milk to ultrafiltration for producing a
first permeate Pl and a first retentate RI;
(b) subjecting said first permeate Pl to nanofiltration for
producing a second permeate P2 and a second retentate R2;
( c) hydrolyzing said second retentate R2 while adding lactase;
and
( d) mixing said first retentate RI with an amount of the second
permeate P2 and the hydrolysis product of step ( c) each such that
a standardized dairy product is obtained, the content of proteins
and minerals of which corresponds to the one of the starting milk.
3. A process for producing lactose-free dairy products,
consisting essentially of:
(a) subjecting a starting milk to ultrafiltration for producing a
first permeate Pl and a first retentate RI;
(b) subjecting said first permeate P 1 to nanofiltration for
producing a second permeate P2 and a second retentate R2;
( c) hydrolyzing said second retentate R2 while adding lactase;
( d) mixing said first retentate Rl with an amount of the second
permeate P2 and the hydrolysis product of step ( c) each such that
a standardized dairy product is obtained, the content of proteins
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Application 15/196, 7 48
and minerals of which corresponds to the one of the starting milk:
and
( e) hydrolyzing the standardized dairy product of step ( d) while
adding an amount of lactase such that the residual amount of
lactose still contained in the product is completely broken down
into glucose and galactose.
Appellants appeal the following rejections:
1. Claims 1-6 and 11-15 are rejected under 35 U.S.C. § 103 as
unpatentable over Tossavainen et al. (US 2011/0059220 Al; Mar. 10,
2011) ("Tossavainen") in view of Ur-Rehman et al. (US
2011/0206806 Al; Aug. 25, 2011) ("Ur-Rehman").
2. Claims 7-9 are rejected under 35 U.S.C. § 103 as unpatentable over
Tossavainen in view of Ur-Rehman and Tikanmaki et al. (US
2010/0055286 Al; Mar. 4, 2010) ("Tikanmaki").
3. Claim 10 is rejected under 35 U.S.C. § 103 as unpatentable over
Tossavainen in view Ur-Rehman and Holst et al. (US 2009/0092731
Al; Apr. 9, 2009) ("Holst").
With regard to rejection (1 ), Appellants argue only claims 1 and 3
(App. Br. 8-13). With regard to rejections (2) and (3), Appellants only argue
that Tikamaki and Holst fail to cure the alleged deficiencies argued with
respect to the combination ofTikamaki and Holst (App. Br. 13-14).
Therefore, claims 7-10 will stand or fall with our analysis of the rejection of
claims 1 and 3.
FINDINGS OF FACT & ANALYSIS
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Application 15/196, 7 48
The Examiner's findings and conclusions with respect to claim 1 are
located on pages 3 to 4 of the Final Action. The Examiner finds that
Tossavainen discloses the subject matter of claim 1, except that Tossavainen
does not explicitly disclose hydrolyzing the NF (nanofiltered) retentate with
lactase or adding the hydrolysis product to the mixture of UF (ultra filtered)
retentate and NF permeate (Final Act. 3). The Examiner finds that Ur-
Rehman discloses a similar lactose removal process as Tossavainen wherein
the NF retentate is hydrolyzed with lactase and the hydrolyzed NF retentate
is used as an ingredient in the manufacture of lactose-free dairy products for
the standardization of sugar (Final Act. 3). The Examiner concludes that it
would have been obvious to incorporate Ur-Rehman's lactase treatment on
the NF retentate with Tossavainen's process of removing lactose from dairy
products (Final Act. 4). The Examiner reasons that Tossavainen teaches
hydrolyzing the combined NF permeate and UF retentate to remove any
residual lactose (Final Act. 4 ).
Appellants argue that there is no reason to combine Tossavainen and
Ur-Rehman because their objects are distinctly different (App. Br. 8).
Appellants contend that Tossavainen's NF retentate is a lactose rich fraction
and is removed as a by-product or waste (App. Br. 8). Appellants contend
that only the low lactose fraction (i.e., the NF permeate and UF retentate) is
hydrolyzed with lactase (App. Br. 8). Appellants argue that Ur-Rehman is
focused on the recovery of lactase enzyme from the treated milk (App. Br.
8). Appellants contend that using Ur-Rehman's teaching to hydrolyze all
milk fractions (i.e., those containing high and low contents of lactose) with
Tossavainen that targets removal of lactose would have been contrary to the
teachings Tossavainen (App. Br. 9). Appellants argue that Tossavainen's
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Application 15/196, 7 48
process may yield a milk that is too sweet as compared to untreated milk
(App. Br. 10).
Contary to Appellants' arguments, the Examiner correctly finds that
Tossavainen and Ur-Rehman are each directed to producing lactose-free
dairy products (Final Act. 3; Ans. 11-12). The Examiner further finds that
although Tossavainen teaches hydrolyzing the combined NF permeate and
UF retentate portions, a person of ordinary skill in the art would have
recognized the value in hydrolyzing the NF retentate portion as taught by
Ur-Rehman (Ans. 12). Appellants do not dispute this finding of the
Examiner. Ur-Rehman teaches that any fraction of the milk, including the
lactose-rich NF retentate portion may be treated with lactase and used to
standardize the sugar levels in the lactose-free milk (Ur-Rehman ,r,r 19, 20).
From an economic stand point it makes sense to reuse and recycle streams,
especially in view ofUr-Rehman's teaching to do so. We find that the
Examiner has established a prima facie case of obviousness.
Appellants argue that the Examiner has not given sufficient weight to
the data in the Specification which demonstrates the non-obviousness of the
subject matter in claim 1 (App. Br. 10). Appellants argue that Tossavainen's
process has the following drawbacks: (1) the NF permeate requires a reverse
osmosis concentration step before mixing with the other streams, (2) the NF
retentate rich in lactose is not used, and (3) the hydrolysis step is the final
step and thus does not permit further adjustments to the amounts of glucose
or galactose in the lactose-free milk (App. Br. 10-11). Appellants argue that
their invention permits the lactose-free milk to have the same flavor and
mineral content of lactose-containing milk (App. Br. 11 ). Appellants
contend that the Tossavainen's lactose-free milk does not have the same
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Application 15/196, 7 48
sweetness level as lactose-containing milk (App. Br. 11 ). Appellants argue
that Tossavainen's process requires a reverse osmosis step to achieve a
lactose-free milk having a similar sweetness to lactose-containing milk
(App. Br. 12). Appellants contend that the transitional phrase "consisting
essentially of' excludes process steps such as reverse osmosis (App. Br. 12).
The Examiner interprets the transitional claim phrase "consisting
essentially of' as being equivalent to "comprising" (Final Act. 3). The
Examiner finds that Appellants have not provided any statement as to what
are the basic and novel characteristics of the claimed method (Final Act. 3).
We agree. Appellant bears the burden of: (1) showing the basic and novel
characteristics of their claimed invention, and (2) establishing how those
characteristics would be materially changed by any allegedly excluded step
of an applied reference. See In re DeLajarte, 337 F.2d 870, 873-74 (CCPA
1964 ). Although Appellants contend that the reverse osmosis step in
Tossavainen is excluded by the transitional phrase in the claim, Appellants
provide no analysis as to how the reverse osmosis step would materially
affect the basic and novel characteristics of the claimed invention. In other
words, we do not find that Tossavainen's reverse osmosis step is excluded
by the consisting essentially of transitional phrase.
Nevertheless, the Examiner finds that Tossavainen teaches an
embodiment (i1i127-33) where the reverse osmosis step is not included (Ans.
16). The Examiner finds that Tossavainen teaches that the reverse osmosis
step does not affect the sugar content of the milk, but rather is only
concerned with treating the mineral content (Ans. 16). Appellants do not
specifically dispute this finding of the Examiner.
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Appellants' argument that Tossavainen's lactose-free milk does not
have a taste similar to lactose-containing milk is not persuasive. Although
Appellants contend that Tossavainen's process would not permit the
adjustment of the sweetness of the milk, Tossavainen teaches that the taste
of the lactose-free milk is similar to the taste of normal milk (i-f 18).
Appellants' attorney argument about the sweetness of Tossavainen's lactose-
free milk relative to that produced by the claimed process lacks sufficient
evidence. See Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595 (Fed.
Cir. 1997) ("Counsel's argument cannot take the place of evidence lacking
in the record."). Moreover, the sweetness of the milk is not a property of the
lactose-free milk recited in the process claims. Rather, claim 1 is only
focused on the protein and mineral content of the lactose-free milk being
similar to the values in normal, lactose-containing milk.
Regarding claim 3, Appellants rely on the same unpersuasive
arguments made regarding claim 1 (App. Br. 13). Appellants argue that
Tossavainen fails to teach an additional hydrolyzing step (i.e., step ( e))
recited in claim 3 (App. Br. 13). Step ( e) in claim 3 requires that the
standardized dairy product of step ( d) is hydrolyzed with an amount of
lactase such that the residual amount of lactose still contained in the product
is completely broken down into glucose and galactose.
The Examiner finds that the combined teachings of Tossavainen and
Ur-Rehman would have suggested hydrolyzing both the retentate of the
second nanofiltration step and the combined milk product of the first
retentate, second permeate and the hydrolyzed product of the second
retentate (Final Act. 4-6). The Examiner explains that lactase would have
been added to the retentate of the nanofiltration in order to recycle a portion
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Application 15/196, 7 48
of the milk while using that stream to adjust the sugar content of the lactose-
free milk (Final Act. 5). The Examiner finds that Tossavainen teaches to
hydrolyze the lactose in the combined milk (Final Act. 5). The Examiner
provides a reason for treating the nanofiltration (NF) retentate with lactase as
taught by Ur-Rehman and then using that treated NF retentate to standardize
the sugar content of Tossavainen's lactose-free milk (Final Act. 6; Ans. 12).
The Examiner finds that a person of ordinary skill in the art would recognize
that the NF retentate is a valuable by-product and would consult Ur-Rehman
for instruction regarding using such a product (Ans. 12).
We find that the Examiner has established by a preponderance of the
evidence that the subject matter of claim 3 would have been obvious over
the combined teachings of Tossavainen and Ur-Rehman. On this record, we
affirm the Examiner's §103 rejections of claims 1-15.
DECISION
The Examiner's decision is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).ORDER
AFFIRMED
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