Ex Parte Lange et al

Patent Trial and Appeal Board

Nov 3, 2014

12153158 (P.T.A.B. Nov. 3, 2014)

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.
12/153,158 05/14/2008 Stefan Lange 10819.0001-02000 4455
22852 7590 11/04/2014
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
WANG, SHENGJUN
ART UNIT PAPER NUMBER
1627
MAIL DATE DELIVERY MODE
11/04/2014 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 STEFAN LANGE, LEIF GORANSSON, and
IVAR LONNROTH
__________

Appeal 2012-004740
Application 12/153,158
Technology Center 1600
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a method
for regulating the flux of fluid and electrolytes in a human. The Examiner
rejected the claims as failing to comply with the written description
requirement. We have jurisdiction under 35 U.S.C. § 6(b). We reverse and
enter a New Ground of Rejection.

1 Appellants identify the Real Party in Interest as RURAL
PATENT SVENSKA AB (see App. Br. 3).
Appeal 2012-004740
Application 12/153,158

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Statement of the Case
Background
“The present invention relates to the use of products having enzymatic
activity for the preparation of a food inducing the formation of antisecretory
proteins (ASP), and to the food so prepared” (Spec. 1, ll. 1–3).
The Claims
Claims 10–47 are on appeal. Claim 10 is representative and reads as
follows:
10. A method for regulating the flux of fluid and
electrolytes in a human, comprising feeding a human in need
of such regulation a foodstuff comprising a malted product,
wherein the foodstuff is in the form of breakfast flakes,
bread, rolls, pasta products, meat products, or a powder, and
wherein the malted product has by itself sufficient
enzymatic activity to hydrolyze carbohydrates and proteins
in the intestinal canal to induce, when consumed, in the
human a level of at least 0.5 units of antisecretory proteins
(ASP) per 1 ml of blood.

The issue
The Examiner rejected claims 10–47 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
(Ans. 4–5).
The Examiner finds that the claims require “the presence of living
enzymes, or enzymatic activity of the food stuff, that is in the form of
breakfast flakes, bread, rolls, pasta products, meat products, or a powder,
that lead to the production of amino acid and sugar in intestinal canal, or to
the increase of ASP” (Ans. 5). The Examiner finds that the “application as
originally filed provides no written description for such subject matter”
(Ans. 5).
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Application 12/153,158

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The Examiner further finds that:
No written description indicates that these foods contain any
enzymatic activity. No one should believe that there is any
enzymatic activity left after the cooking (baking in
particular). Therefore, there is no reason to believe that the
induction of ASP in the examples is due to the enzymatic
activity, and is not due to the amino acid and sugar in the
malted oat or barley.

(Ans. 5.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that claims 10–47 fail to comply with the
written description requirement?
Findings of Fact
1. The Specification teaches “the use of products having
enzymatic activity for the preparation of a food inducing the formation of
antisecretory proteins (ASP)” (Spec. 1, ll. 1–3).
2. The Specification teaches that “the formation of ASP can be
controlled or governed by varying the amount and proportion of the product
having enzymatic activity” (Spec. 2, ll. 24–26).
3. The Specification teaches that
“Malted cereals” are healthy and fresh grain that has
been subjected to malting. The malting means that the grain
kernels are steeped and thereafter are allowed to germinate
at a carefully controlled water content and temperature until
its sprout germs have developed. The germination time is
adjusted to the respective lot and variety. The germinated
kernels are dried and desprouted. The drying can be driven
so that the enzyme activity is changed to a more or less
extent. The product then obtained is malt. The nutritive
substances of the kernel has then, to a restricted extent, been
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Application 12/153,158

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hydrolysed and the enzymes of the sprout have been
activated.

(Spec. 3, ll. 10–18.)
4. The Specification teaches that bread baked with 30% malted
barley-flour resulted in ASP levels of 1.0 units/ml and 0.5 units/ml in two
different human individuals (see Spec. 5, ll. 14–35).
Principles of Law
“[I]t is the specification itself that must demonstrate possession. And
while the description requirement does not demand any particular form of
disclosure . . . or that the specification recite the claimed invention in haec
verba, a description that merely renders the invention obvious does not
satisfy the requirement.” Ariad Pharms., Inc. v. Eli Lilly and Co., 598 F.3d
1336, 1352 (Fed. Cir. 2010).
Analysis
The description inquiry is not concerned with the operability of the
claimed invention, instead asking whether the Specification provides
descriptive support and possession for the claimed invention. Id. at 1352.
The Specification states that malted cereals contain enzymes (FF 3)
and that the amounts of these malted products in food may impact the levels
of antisecretory protein in blood (FF 1–2). The Specification provides an
example of feeding humans bread made with malted barley flour which
results in a level of at least 0.5 units of antisecretory protein per ml of blood
(FF 4).
Thus, the Specification provides literal descriptive support for the
claimed invention. We therefore are constrained to reverse this written
description rejection.
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Application 12/153,158

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We note that the Examiner’s reasoning, evidence, and arguments are
not drawn to a written description rejection, but rather appear more relevant
to a scope of enablement rejection. However, because no scope of
enablement rejection is before us, we take no position on the applicability of
any enablement rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that claims 10–47 fail to comply with the written description requirement.

New Ground of Rejection
Under the provisions of 37 C.F.R. § 41.50(b), we enter the following
new grounds of rejection.
Claims 10–13, 17, 21–25, 29, and 33 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Petrofsky.2
Findings of Fact
5. Petrofsky teaches
[A] typical procedure for manufacturing bakery bagels:
1. The following ingredients are put into a mixer containing
a dough hook and mixed for 8-10 minutes at room
temperature (60-95 degrees F.):
(a) 100 lbs. of high gluten bleached malted barley flour;
(b) 48 lbs. water;
(c) 6 lbs. sugar or 2 lbs. malt;
(d) 2 lbs. salt;
(e) 4½ lbs. vegetable oil (optional); and
(f) 4 oz. to 1 lb. yeast.

(Petrofsky, col. 1, ll. 50–61.)

2 Petrofsky et al., US 4,657,769, issued Apr. 14, 1987.
Appeal 2012-004740
Application 12/153,158

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6. Petrofsky teaches that the “dough pieces are next cooked in
water at 212 degrees F. for 30 seconds to 2 minutes until they float on the
surface of the water” (Petrofsky, col. 2, ll. 8–10).
7. Petrofsky teaches that the “bagels are dried and then baked for
20 minutes at 380 degrees F” (Petrofsky, col. 2, ll. 12–13).
8. Petrofsky teaches that “calcium peroxide which also contains
soya flour, diammonium phosphate, and tricalcium phosphate acts as a
dough conditioner” (Petrofsky, col. 3, ll. 43–45).
Principles of Law
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by
identical or substantially identical processes, the PTO can
require an applicant to prove that the prior art products do
not necessarily or inherently possess the characteristics of
his claimed product. . . . Whether the rejection is based on
“inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively,
the burden of proof is the same, and its fairness is evidenced
by the PTO’s inability to manufacture products or to obtain
and compare prior art products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
Analysis
Claims 10 and 22
Petrofsky teaches a method of making a foodstuff, bagels, for human
consumption which comprises a malted product, malted barley flour, with
the further addition of malt itself (FF 5). Because every human requires
proper regulation of fluid and electrolytes, as recited in the preamble of
claim 10, we broadly interpret the “human in need thereof” limitation as
encompassing all bagel consumers. See In re Zletz, 893 F.2d 319, 321 (Fed.
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Application 12/153,158

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Cir. 1989) (“[D]uring patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.”).
We find that Petrofsky, in producing bagels composed of 100%
malted barley flour for feeding to humans, inherently satisfies the claim 10
requirement “wherein the malted product has by itself sufficient enzymatic
activity to hydrolyze carbohydrates and proteins in the intestinal canal to
induce, when consumed, in the human a level of at least 0.5 units of
antisecretory proteins (ASP) per 1 ml of blood.”
This inherency position is directly supported by Appellants’ own
Specification, which teaches that bread baked with 30% malted barley flour
induced antisecretory protein levels of 0.5 units per 1 ml of blood or greater
(FF 4).
We have considered both the Nyrén Declaration3 and the Larsson
statement.4 The Nyrén Declaration teaches that “[e]xample 2 [of Johnston]
heats the malted barley mixture to 140°F for at least 30 minutes, which I
expect would terminate any enzymatic activity” (Nyrén Decl. 4 ¶ 12). In
contrast, the Larsson statement teaches that “enzyme activity often remains
in a biological sample after a moderate external impact in the form of
temperature or other unfavorable environmental parameters. In baked goods
there is a temperature gradient, perpendicular to the surface. Oven
conditions do not extend to the interior of the goods.”
This contradicting evidence is precisely the sort of situation in which
Best applies, reasonably placing an evidentiary burden upon Appellants to

3 Declaration of Dr. Pål Nyrén, filed June 25, 2009.
4 Larsson, M., Baking and Enzymatic activity, Feb. 14, 2011.
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demonstrate that the bagels of Petrofsky do not inherently satisfy the
functional requirements of claim 10, while simultaneously explaining why
the baked bread in Example 1 of the Specification functions to satisfy the
claim 10 requirements.
With regard to claims 11, 12, 23, and 24, Petrofsky teaches the use of
malted barley flour as well as malt (FF 5).
With regard to claims 13 and 25, Petrofsky teaches admixing soya
flour into the final mixture (FF 8).
With regard to claims 17 and 29, Petrofsky teaches a bread foodstuff,
specifically bagels (FF 5).
With regard to claims 21 and 33, the ASP levels represent an inherent
property as discussed above.

We have applied the new ground of rejection only to claims 10–13,
17, 21–25, 29, and 33. We leave it up to the Examiner, who has more
expertise in this area, to determine whether the anticipation rejection, an
enablement rejection, or obviousness rejections with additional references,
should be applied to any of the other pending claims.
SUMMARY
In summary, we reverse the rejection of claims 10–47 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the written description
requirement.
A new ground of rejection of claims 10–13, 17, 21–25, 29, and 33
under 35 U.S.C. § 102(b) as anticipated by Petrofsky is set forth.
This decision contains a new ground of rejection pursuant to
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37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the
claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the proceeding will be
remanded to the examiner . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record

REVERSED, 37 C.F.R. § 41.50(b)

cdc

Notice of References Cited

Application/Control No.

12/153,158
Applicant(s)/Patent Under
Reexamination
Stefan Lange et al.
Examiner

Shengjun Wang
Art Unit

1600

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U.S. PATENT DOCUMENTS

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A 4,657,769 4/14/87 Petrofsky et al.

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* DOCUMENT (Including Author, Title Date, Source, and Pertinent Pages)
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*A copy of this reference is not being furnished with this Office action. (See Manual of Patent Examining Procedure, Section 707.05(a).)
**APS encompasses any electronic search i.e. text, image, and Commercial Databases.
U.S. Patent and Trademark Office
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