Ex Parte Jolly et al

Patent Trial and Appeal BoardMay 17, 2013

11486423 (P.T.A.B. May. 17, 2013)

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. 11/486,423 07/14/2006 James F. Jolly 043738-0112 3186 22428 7590 05/17/2013 FOLEY AND LARDNER LLP SUITE 500 3000 K STREET NW WASHINGTON, DC 20007 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 05/17/2013 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 Amano Enzyme USA Co., LTD and Amano Enzyme, Inc. (Inventors: James F. Jolly and Sandra M. Ulbrich) ____________________ Appeal 2012-004912 Application 11/486,423 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, BEVERLY A. FRANKLIN and GRACE KRAFFA OBERMANN, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004912 Application 11/486,423 2 Amano Enzyme USA Co., LTD and Amano Enzyme, Inc. (Applicant) appeal from an Examiner’s decision rejecting claims 10-12, 28, 33, and 34. 35 U.S.C. §§ 6(b) and 134(a). An oral argument was held on May 7, 2013. We affirm. The Claimed Subject Matter The claimed invention relates to the enzymatic breakdown of components commonly found in plant derived material. Plant derived material, such as juices, include a wide and complex variety of components. These include glucosides, glycosides, proteins, fats (lipids), cellulose, starch, saccharides, polysaccharides and carbohydrates. Applicant’s invention uses a cocktail, i.e. a “profile,” of enzymes that act to breakdown various of the components (substrates) found in certain specified beverages in order to modify the flavor. The enzymes included are defined functionally by the classes of substrates which are broken down. Claims 10 and 33 are representative (some paragraphing added): 10. A method of modifying the flavor of a beverage comprising contacting a beverage selected from the group consisting of fruit juice, tea, alcoholic beverages and combinations thereof, with an enzyme composition having an enzyme activity profile that comprises glucosidase activity, β-glycosidase activity, protease activity, lipase activity, amylase activity, glucoamylase activity, xylanase activity, and pectinase activity, wherein the beverage is not soy or a soy product. 33. The method according to claim 10, wherein the enzyme activity profile comprises: a glucosidase activity of about 40 to about 70 u/g; a β-glycosidase activity of about 0.3 to about 0.9 u/g; a protease activity of about 4,000 to about 8,000 u/g; a lipase activity of about 300 to about 500 u/g; Appeal 2012-004912 Application 11/486,423 3 an amylase activity of about 160,000 to about 190,000 u/g; a glucoamylase activity of about 24,000 to about 28,000 u/g; a xylanase activity of about 11,000 to about 14,000 u/g; and a pectinase activity of about 40 to about 120 u/g. Brief (Claim Appendix) 18. Rejection In the Answer, the Examiner maintained the rejection of all pending claims (10-12, 28, and 33-34) under 35 U.S.C. § 103(a) over the combined teachings of Wu,1 Tajchakavit,2 and Obata.3 Answer 4-8. Analysis Applicant has limited their arguments for patentability to Claims 10 and 33. We do likewise and decide the appeal based on those claims. 37 C.F.R. § 41.37(c)(1)(vii). Claim 10 The concept of modifying the flavor of beverages such as juices by enzyme treatment is known to those working in the art. Wu 1: 14-18. Wu also teaches using a profile of multiple enzymes to breakdown or hydrolyze the various components to make juice. Wu 2:35-40. Thus, one having ordinary skill in the art would have expected that enzyme treatments of the type taught by Wu result in a change in the flavor of the materials treated. 1 U.S. Patent 5,738,887, patented Apr. 14, 1998 2 “Effect of processing on post-bottling haze formation in apple juice,” Food Research International, Vol. 34, pp. 415-424 (2001). 3 U.S. Patent Application Pub. 2001/0010930 A1, pub. Aug. 2, 2001. Appeal 2012-004912 Application 11/486,423 4 Applicant argues that Wu’s process starts with whole fruits and vegetables while Applicant begins with the juice and that the Examiner has overlooked the step of “contacting a beverage . . . with an enzyme composition.” Brief 13. Wu does not teach contacting “whole fruits and vegetables” with the enzyme cocktail. Rather, Wu teaches contacting a mash of fruits or vegetable with a combination of enzymes. Wu 2:42-45. Prior to enzyme treatment the vegetables are first formed into a mash by mechanical crushing or beating. Wu 2: 43-45. Water in an amount of 4-10 times the weight of the vegetable or fruit material may be added to the mash as a pre-soak. Wu 2:49-61. The pre-soaked material is subject to further grinding to reduce the size of the solid particulates to less than 50 μm and preferably less than 25 μm. Wu 2:65-67. The ground mash is then contacted with a cocktail of biological enzymes. Wu 3:1-2. One having ordinary skill in the art would expect those enzymes to be active against their respective substrates whether the substrate was present in the liquid or particulate portion of the mash. Thus, we see no patentable or practical distinction between contacting the enzyme mixture with Wu’s “mash” of liquid and very fine particulates, on the one hand, and contacting Applicant’s “beverage” on the other. The Examiner found that Wu (referred to as “R1”) teaches the use of the claimed combination of enzymes “with the exception of glucoamylase also known as amyloglucosidase.” Answer 5. Applicant has not challenged this finding. See Brief 13. The Examiner relied on Tajchakavit (referred to as R2) as suggesting the inclusion of the enzyme glucoamylase to the combination of the enzymes taught by Wu. Answer 6. Applicant argues that impermissible hindsight was used to combine the teachings of Tajchakavit and Obata with Wu’s teachings. Brief 13. Appeal 2012-004912 Application 11/486,423 5 Hindsight is impermissible only when the sole reason for combining the teachings of the references is the applicant’s disclosure. In re McLaughlin, 443F.2d 1392, 1395 (CCPA 1971). The references relied upon provide ample basis for using glucoamylase as taught by Tajchakavit. First, Wu teaches that the enzymes to be used depend upon the vegetables and fruits present in the materials to be processed: Depending on the raw materials to be processed, the multi- enzyme system may further comprise one or more supplementary enzymes, for example, 0 to 40% of lipases, 0 to 20% of glucose transferases; 0 to 40% glucase peptidases; and 0 to 20% of peptichainase. Wu 3:61-65 (emphasis added). Thus, one having ordinary skill in the art would have recognized that the particular combination of enzymes employed would depend on the fruit and vegetable components of the particular mixture to be treated. Secondly, glucoamylase is a known enzyme for hydrolyzing starch. Tajchakavit. p. 419, left column, first full paragraph. Starch is a typical component of fruits and vegetables. Wu’s teaching of adjusting the enzyme cocktail to the particular materials and Tajchakavit’s teachings related to hydrolyzing starch provide a sufficient reason to add glucoamylase to Wu’s enzyme mixture in order to hydrolyze any starches present. The suggestion to use glucoamylase, therefore, does not come solely from Applicant’s disclosure. Obata teaches the use of enzymes having β-glucosidase and protease activity to release isoflavone aglycones from isoflavone glycosides. Obata ¶ 8. One having ordinary skill in the art would have understood that the enzymes would affect their respective substrates regardless of the material in which the substrate was present. While Obata is directed specifically to treating soy protein materials, one having ordinary skill in the art would appreciate that the β-glucosidase and Appeal 2012-004912 Application 11/486,423 6 protease enzymes would be effective to breakdown isoflavone glycosides that are present in other fruits and vegetables as well as those found in soy protein. Wu’s teaching that the enzymes included in the cocktail depend on the materials to be treated and Obata’s teaching of using β-glucosidase and protease enzymes, provides ample reason for including β-glucosidase and protease in the cocktail to breakdown isoflavone glycosides present in the mixture to release and obtain the benefits of the isoflavones. The suggestion to use β-glucosidase and protease enzymes does not come solely from Applicant’s disclosure but is suggested by Obata. Impermissible hindsight was not used in rejecting the claimed subject matter. Applicants argue that Tajchakavit teaches “that too much amyloglucosidase can lead to haze formation—an undesirable effect.” Brief 14. According to Applicant, this statement teaches away from using amylglucosidase in the enzyme cocktail. Brief 14. Applicant misapprehends Tajchakavit’s teachings. Tajchakavit states that amyloglucosidase “if excessively used, could serve as sources of protein . . . to form haze.” Tajchakavit p. 419, left column (emphasis added). Tajchakavit studied the effect of amyloglucosidase on the development of haze in apple juice and concluded that the increase in haze (turbidity) due to the amyloglucosidase was “only marginal.” Tajchakavit, p. 419, second column. Thus, we see no disparagement as to the use of amyloglucosidase. Additionally, we fail to see why a warning that using “too much” might cause a problem would discourage one skilled in the art from using any amount as implied by Applicant’s argument. Appeal 2012-004912 Application 11/486,423 7 Applicant argues that the Examiner’s finding that one skilled in the art would know that the use amyloglucosidase would result in increased glucose concentration and a sweeter juice is not supported by the record: “neither [Tajchakavit] nor any other reference of record includes such teaching.” Brief 14. This argument fails to persuade us of error in the Examiner’s conclusion. Obviousness is determined from the perspective of the hypothetical person of ordinary skill in the art who is presumed to know all the relevant art. Thus, the knowledge possessed by that hypothetical person is not confined only to the express teachings of the references. Applicant’s above-quoted statement is directed only to the express teachings of the cited prior art and does not properly present a challenge to the correctness of the Examiner’s finding as to the level of ordinary skill. Applicant does not say that the Examiner’s finding is wrong or indicate that the Applicants do not know it to be correct. In any event, Tajchakavit teaches that amyloglucosidase breaks down starch into its smaller components. Tajchakavit, p. 419. One skilled in the art would understand those smaller components to include sugars. It is a reasonable inference that the released sugars would increase the sweetness and change the flavor of the juice. Applicant argues that the Obata reference (referred to by the Examiner and Applicant as R3), is non-analogous art. Brief 12. Applicant contends that Obata does not address any problem associated with the claimed method and that one skilled in the art would have had no reason to look to the Obata reference. Applicant particularly relies on the fact that the reference is directed to extracting aglycones from soy and soy products are specifically excluded from the claimed method. Brief 12. Appeal 2012-004912 Application 11/486,423 8 We conclude, as did the Examiner, that Obata is analogous art. Applicant’s invention and all the cited references are from the same field of technology -- the use of enzymes in treating food products. References from the same technological field as the claimed subject matter are within the presumed knowledge of the hypothetical person having ordinary skill in the art. In re Skoll, 523 F.2d 1392, 1396 (CCPA 1975) (The person having ordinary skill in the art is presumed to have knowledge of references from the same technological field as the claimed subject matter). Thus, Obata is reasonably within the knowledge possessed by the hypothetical person having ordinary skill in the art and is analogous art. We affirm the rejection of Claim 10 and its dependent Claims 11-12, 28, and 34. Claim 33 Applicant contends that Claim 33 is separately patentable. Brief 16-17. Claim 33 specifies the concentration of the enzymes in terms of their activity per gram. The Examiner found that the determination of the appropriate concentration of enzymes was “no more [than] an optimization procedure.” Answer 12. Applicant argues that, where the parameter to be optimized is not recognized in the prior art as one that would affect the results, the doctrine of routine optimization is not applicable. Brief 16. Wu demonstrates that those working in the art were aware that the concentration of the enzymes must be determined for the particular foods to be treated within the ranges taught: According to the present invention, the multi-enzyme system used in the process comprises, by weight, 5 to 50% of proteases, 5 to 75% of amylases, 5 to 50% of pectases, 5 to 75% of cellulases, 5 to 35% of hemicellulases and 1 to 20% of lysozymes. Depending on the raw materials to be processed, the Appeal 2012-004912 Application 11/486,423 9 multi-enzyme system may further comprise one or more supplementary enzymes, for example, 0 to 40% of lipases, 0 to 20% of glucose transferases; 0 to 40% glucase peptidases; and 0 to 20% of peptichainase. Wu 3:57-65. Wu goes on to teach guidelines for the concentration of enzymes for various types of foods. Wu 4:4 - 6:45. Thus, Wu demonstrates that the concentrations of the enzymes to be used is a result effective variable. Thus, the determination of the appropriate concentration is within the level of ordinary skill in the art. The claimed concentrations do not present a non-obvious distinction over the prior art. With respect to affecting flavor, Wu teaches that enzyme treatment is known to change flavor. Wu 1:14-18. Applicant has not directed us to evidence establishing that the claimed enzyme concentrations are critical or otherwise provided evidence of unexpected results with respect to flavor or any other property. DECISION The Examiner decision rejecting 10-12, 28, 33, and 34 under 35 U.S.C. § 103(a) 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). AFFIRMED cam