Ex Parte Jonnala et al

Patent Trials and Appeals BoardApr 30, 2013

11022277 - (D) (P.T.A.B. Apr. 30, 2013)

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. 11/022,277 12/23/2004 Kotesh K. Jonnala 13899.0014FP01 3010 23552 7590 05/01/2013 MERCHANT & GOULD PC P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER BLAND, LAYLA D ART UNIT PAPER NUMBER 1623 MAIL DATE DELIVERY MODE 05/01/2013 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 KOTESH K. JONNALA, BABU GARIKAPATI D. KIRAN, VIJAY K. KAUL and PARAMVIR S. AHUJA ____________ Appeal 2011-008092 Application 11/022,277 Technology Center 1600 ____________ Before TONI R. SCHEINER, LORA M. GREEN and ANNETTE R. REIMERS, Administrative Patent Judges. REIMERS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008092 Application 11/022,277 2 STATEMENT OF THE CASE Kotesh K. Jonnala et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner’s decision to reject claims 1-19. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention “relates to a process for the production of steviosides from Stevia rebaudiana Bertoni.” Spec. 1, ll. 4-5. Claim 1, the sole independent claim, is illustrative of the claimed invention and reads as follows: 1. A process for the production of steviosides from Stevia rebaudiana Bertoni, which comprises drying plant material, followed by pulverization, extracting the pulverized plant material in a solvent consisting of demineralised water under heat, filtering the heated plant material to obtain an aqueous extract, treating the aqueous extract with a basic salt to form a clear precipitate, separating the precipitate, treating the separated clear filtrate with an ion exchange resin, followed by drying the treated filtrate to obtain a product containing 40 to 70% steviosides, wherein the step of extracting under heat comprises heating to a temperature ranging from 50°C to 120°C by injecting steam directly or indirectly for 0.25 to 4.0 hr. THE EVIDENCE The Examiner relies upon the following evidence: Daftary US 3,971,856 Jul. 27, 1976 Kumar US 4,599,403 Jul. 8, 1986 Giovanetto US 4,892,938 Jan. 9, 1990 Appeal 2011-008092 Application 11/022,277 3 Starmans and Nijhuis, Extraction of secondary metabolites from plant material: A review, Trends in Food Science & Technology, vol. 7, 191-197 (1996).1 Rovio et al., Extraction of clove using pressurized hot water, Flavour Frag. J., 14, 399-404 (1999).2 Dow, Liquid Seperations: Product Information - Strong Acid Cation Resins (2004), at http://web.archive.org/web/20040102185055/ http://www.dow.com/liquidseps/prod/sac.htm.3 THE REJECTIONS The following rejections are before us for review: I. Claims 1-17 are rejected under 35 U.S.C. § 103(a) as unpatentable over Giovanetto, Kumar, Daftary, Starmans and Rovio. II. Claims 18 and 19 are rejected under 35 U.S.C. § 103(a) as unpatentable over Giovanetto, Kumar, Daftary, Starmans, Rovio and Dow. ANALYSIS Rejection I Claims 1-17 Appellants do not present arguments for claims 2-7, 9-13 and 17 separate from those directed against the rejection of independent claim 1; and Appellants do not present arguments for claims 8 and 14-16 that differ 1 Hereafter “Starmans.” 2 Hereafter “Rovio.” 3 Hereafter “Dow.” Appeal 2011-008092 Application 11/022,277 4 from those presented for independent claim 1. App. Br. 9-18. Therefore, Appellants have argued claims 1-17 as a group for purposes of the rejection of those claims under § 103(a). Claim 1 is representative of the group and is selected for review. See 37 C.F.R. § 41.37(c)(1)(vii)(2011). Independent claim 1 recites a process for the production of steviosides from Stevia rebaudiana Bertoni, including the step of “extracting the pulverized plant material in a solvent consisting of demineralised water under heat,” “wherein the step of extracting under heat comprises heating to a temperature ranging from 50°C to 120°C by injecting steam directly or indirectly for 0.25 to 4.0 hr.” App. Br., Clms. App’x. The Examiner has cited Kumar for disclosing a method of extraction of steviosides from dried and milled (pulverized) plant material. See Ans. 5- 6. The Examiner is proposing to modify Giovanetto’s process of extracting steviosides from dried plant material to include the use of milled (pulverized) plant material, as taught in Kumar because “the skilled artisan would recognize that a milled product would have increased surface area for a more efficient extraction.” Ans. 6. Appellants argue that combining Giovanetto and Kumar would change the principle of operation of Kumar. App. Br. 13-14. In particular, Appellants argue that Giovanetto utilizes ion exchange procedures, whereas Kumar avoids the use of ion exchange procedures. Id. Appellants conclude that “[t]he Kumar patent cannot be used to teach a method that requires an ion exchange procedure when the Kumar patent teaches a method of extraction, specifically, without an ion exchange procedure.” Id. at 14. Appellants further argue that “there is no motivation to combine the Kumar patent with the Giovanetto patent.” App. Br. 14-15. Appeal 2011-008092 Application 11/022,277 5 To the extent Appellants’ arguments are individual attacks on the references rather than a challenge to the Examiner’s combination of the teachings of the two references, we are not persuaded. See In re Merck & Co., 800 F.2d 1091 (Fed. Cir. 1986); In re Keller, 642 F.2d 413 (CCPA 1981) (one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references). Moreover, obviousness does not require that all of the features of the secondary reference be bodily incorporated into the primary reference. In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, the Examiner’s proposed modification of Giovanetto with Kumar (more surface area for more efficient extraction) has rational underpinnings (see KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)), and Appellants have not persuasively identified error in the Examiner’s rationale for why it would have been obvious to an artisan of ordinary skill to combine the references’ teachings and suggestions. In addition, Appellants have not argued or shown that the proposed modification of Giovanetto with Kumar would have been beyond the level of skill of one of ordinary skill in the art. Nor have Appellants established that Kumar’s method of extracting steviosides from milled (pulverized) plant material (Kumar, col. 3, ll. 33-39) could not be used with Giovanetto’s stevioside extraction process. Based on the teaching in Kumar of extracting steviosides from milled (pulverized) plant material, we find that it would have been within the ability of one of ordinary skill in the art to modify Giovanetto’s stevioside extraction process to include the use of milled (pulverized) plant material. Appeal 2011-008092 Application 11/022,277 6 Appellants also argue that Daftary (1) “does not teach the use of steam for extraction - it teaches the use of steam for heating water - which in turn is then used for extraction;” and (2) “hot water extraction does not equate to extraction by direct or indirect injection of steam.” Reply Br. 7. Appellants conclude that “even if Daftary could be combined with Giovanetto and Kumar, the conclusion is that the steam is useful for heating the extraction medium and not for the extraction of plant material.” Id. We are not persuaded. Independent claim 1 recites, “wherein the step of extracting under heat comprises heating . . . by injecting steam directly or indirectly.” App. Br., Clms. App’x. Appellants’ Specification does not provide a definition or description of the term “indirectly injecting steam.” The Examiner interpreted the term “indirectly injecting steam” to mean that “the steam is not contacted with the plant material.” Ans. 5; see also Ans. 6. Appellants do not persuasively apprise us of error in the Examiner’s interpretation of the meaning of the term “indirectly injecting steam.” Based on the Examiner’s interpretation of the meaning of the term “indirectly injecting steam,” we agree with the Examiner’s finding that Daftary discloses “indirectly injecting steam” by “steam [being] used to heat water for extraction of plant material.” Ans. 6; Daftary, Example 4, col. 7, l. 65 - col. 8, l. 20. As such, under the broadest reasonable interpretation of the term “indirectly injecting steam” as would be understood by one of ordinary skill in the art in light of Appellants’ Specification, we find no error in the Examiner’s finding that Daftary discloses “indirectly injecting steam,” as called for in claim 1. Appellants argue for the first time in the Reply Brief that Starmans and Rovio cannot be used to establish that it would have been obvious to use Appeal 2011-008092 Application 11/022,277 7 direct steam injection in Giovanetto’s process because Starmans and Rovio each refer to extraction of volatile substances and stevioside is not a volatile substance. Reply Br. 7-8. Nevertheless, we agree with the Examiner’s reasoning that Rovio and Starmans both teach that extraction with steam (contact with plant material, which is the examiner’s interpretation of direct injection) is often superior to extraction with liquid water, because there is a larger effective contact area [Ans. 5, citing Starmans, p. 192, Steam extraction] and because the dielectric constant of steam is close to 1 [Ans. 6, citing Rovio, p. 400, first paragraph]. Thus, the skilled artisan would have a reasonable expectation that steam would be effective for the extraction of steviosides. Id. at 7. Thus, while we do not dispute Appellants’ contention that both Starmans and Rovio refer to extraction of volatile substances; nonetheless, Appellants do not persuasively apprise us of error in the Examiner’s interpretation of the disclosures of Starmans and Rovio or the Examiner’s stated reasoning regarding Starmans and Rovio. As such, we find no error in the Examiner’s conclusion that it would have been obvious to modify Giovanetto by “directly injecting steam” into the plant material, as called for in independent claim 1. Accordingly, for the foregoing reasons, the rejection of independent claim 1 and of claims 2-17, which fall with claim 1, as unpatentable over Giovanetto, Kumar, Daftary, Starmans and Rovio is sustained.4 4 The additional information (i.e., the Further Arguments Section and the HPLC graphs (see Reply Br. p. 8-12 and Evidence App’x, Attachment D, p. 13)) submitted by Appellants in the Reply Brief has not been considered, because the information is “new or non-admitted affidavit or other evidence” Appeal 2011-008092 Application 11/022,277 8 Rejection II Claims 18 and 19 Appellants do not present any arguments for dependent claims 18 and 19 that differ from those presented above for independent claim 1 over Giovanetto, Kumar, Daftary, Starmans and Rovio. See App. Br. 17-18. Accordingly, the rejection of claims 18 and 19 over Giovanetto, Kumar, Daftary, Starmans, Rovio and Dow is sustained for the reasons given above with respect to claim 1. DECISION We AFFIRM the decision of the Examiner to reject claims 1-19 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED mls and “is not in compliance with 37 C.F.R. 41.41(a).” See Notice of Non- Entry of Reply Brief, mailed Apr. 26, 2011.