Ex Parte Else et al

Patent Trials and Appeals Board

Feb 26, 2019

13593317 - (D) (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/593,317 08/23/2012 Anthony James Else
22428 7590 02/28/2019
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
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.
069818-6775 7050
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
ipdocketing@foley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY JAMES ELSE, KARI MARGRETE TRONSMO,
LUDGER-ANDREAS NIEMANN, and
JOHANNES HUBERTUS ELISE MOONEN
Appeal2017-004280
Application 13/593,317
Technology Center 1700
Before N. WHITNEY WILSON, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
September 22, 2015 decision finally rejecting claims 1-15, which constitute
all the claims pending in this application ("Final Act."). Claim 16 has been
cancelled. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An
oral hearing was held on January 29, 2019. A transcript of that hearing will
be made part of the record.
We reverse.
1 Appellants identify CSM Nederland B.V. as the real party in interest
(Appeal Br. 3).
Appeal2017-004280
Application 13/593,317
CLAIMED SUBJECT MATTER
Appellants' disclosure relates to a process of preparing baked bread.
A combination of two enzymes is mixed into the dough used to bake the
bread: (1) maltogenic amylase in an amount of750-75,000 maltogenic
amylase units (MAU) per kg of flour, and (2) amyloglucosidase in an
amount of 0.01-3.0 amyloglucosidase units (AGU) per unit of MAU activity
(Abstract). This particular combination of enzymes is said to be a very
effective anti-staling agent (id.). Claim 1, the only independent claim on
appeal, is representative of the claimed invention, and is reproduced below
from the Claims Appendix to the Appeal Brief:
1. A process of preparing baked bread, comprising:
(a) incorporating into farinaceous dough a combination
of two or more enzymes comprising:
(i) maltogenic amylase in an amount of750-75,000
maltogenic amylase units (MAU) per kg of flour, said
maltogenic amylase having an optimum temperature above
50°C· and
'
(ii) amyloglucosidase in an amount of 0.01-3.0
amyloglucosidase units (AGU) per unit of MAU activity; and,
(b) baking the dough.
REJECTIONS
I. Claims 1-10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gerrard2 as evidenced by Christophersen. 3
2 Gerrard et al., "The Role of Maltodextrins in the Staling of Bread," J.
Cereal Science, Vol. 26, pp. 201---09 (1997).
3 Christophersen et al., "Enzymatic Characterisation of Novamyl®, a
Thermostable a-Amylase," Starch, Vol. 50, No. 1, pp. 39-45 (1998).
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Appeal2017-004280
Application 13/593,317
II. Claims 11-15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gerrard in view of Olesen. 4
DISCUSSION
Because we decide this appeal based on the rejection of independent
claim 1, we limit our discussion to the rejection of claim 1 under §103(a)
over Gerrard as evidenced by Christophersen. 5
The Examiner finds that Gerrard discloses the use of a combination of
maltogenic a-amylase and glucoamylase (amyloglucosidase) to retard the
staling of bread (Final Act. 3, citing Gerrard, Abstract). The Examiner
further finds that Gerrard discloses that loaves treated with both
glucoamylase and a-amylase staled at nearly identical rates to those treated
with a-amylase alone, although the dextrin profile of the bread treated with
the two enzymes is different than the dextrin profile of the bread treated with
a-amylase alone (Final Act. 3). The Examiner further finds that (1) Gerrard
teaches a person of ordinary skill in the art to consider a mixture of
maltogenic amylase and amyloglucosidase (glucoamylase ), (2) the
concentrations disclosed by Gerrard did not result in a different staling rate
when the combination was used versus only maltogenic amylase, and (3) the
distribution of dextrins in the final bread product (which affects staling)
differs depending on whether the combination of enzymes is used or only
maltogenic amylase is used (Ans. 6).
4 Olesen, WO 91/04669, published April 18, 1991.
5 We note that in the Final Action, the Examiner does not explicitly
reference Christophersen in Rejection II (Final Act. 5---6), but given that
claims 11-15 depend from claim 1, we assume that reliance on
Christophersen as an evidentiary reference in Rejection II was implicit.
3
Appeal2017-004280
Application 13/593,317
The Examiner does not dispute Appellants' calculation that the ratio
of glucoamylase to a-amylase disclosed by Gerrard is over 2500 times
greater than the ratio set forth in claim 1 (id.). 6 However, the Examiner
determines that it would have been obvious to optimize the ratio of the
enzymes to maximize the anti-staling properties of the bread (Final Act. 4--
5).
We agree with Appellants (Appeal Br. 4--5) that Gerrard explicitly
discloses that the claimed enzyme combination shows no improvement in
staling properties over the use of a-amylase alone. Moreover, there is no
dispute that the ratio of enzymes disclosed by Gerrard is far from the
claimed ratio. The rejection turns on the Examiner's determination that
altering this ratio to arrive at the claimed ratio would be a matter of routine
optimization.
The discovery of an optimum value of a result effective variable is
ordinarily within the skill of the art. See In re Boesch, 617 F.2d 272, 276
(CCPA 1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955). However, the
Examiner has not adequately established that the ratio of amyloglucosidase
to maltogenic amylase is a result effective variable. The only findings made
by the Examiner in this regard are (a) "the investigation by Gerrard et al.,
regarding the combination of maltogenic amylase and glucoamylase, the
very combination being claimed for the same purpose of retarding staling in
bread, is motivating enough for an optimization process," and (b) "the
statements made by Gerrard et al. regarding bread staling are concentration
dependent; i.e., the concentrations of the two enzymes used in those
6 In their Brief, Appellants argue that the ratio disclosed in Gerrard is about
300 times lower than the ratio set forth in claim 1 (Appeal Br. 5).
4
Appeal2017-004280
Application 13/593,317
experiments" (Ans. 8). Neither of these findings are sufficient to establish
that the ratio of the enzymes was a result effective variable for the staling of
bread ( or anything else).
Accordingly, we conclude that Appellants have shown reversible error
in the Examiner's determination that it would have been obvious in view of
Gerrard to use the two enzymes in the ratio set forth in claim 1.
CONCLUSION
We REVERSE the rejection of claims 1-10 under 35 U.S.C. § 103(a)
as unpatentable over Gerrard as evidenced by Christophersen.
We REVERSE the rejection of claims 11-15 under 35 U.S.C. § 103(a)
as being unpatentable over Gerrard in view of Olesen.
REVERSED
5