Ex Parte Ohkuma et alDownload PDFPatent Trial and Appeal BoardOct 6, 201611790766 (P.T.A.B. Oct. 6, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111790,766 04/27/2007 23373 7590 10/11/2016 SUGHRUE MION, PLLC 2100 PENNSYLVANIA A VENUE, N.W. SUITE 800 WASHINGTON, DC 20037 FIRST NAMED INVENTOR Kazuhiro Ohkuma 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. Ql01340 2026 EXAMINER KING, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 10/11/2016 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): PPROCESSING@SUGHRUE.COM sughrue@sughrue.com USPTO@sughrue.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAZUHIRO OHKUMA, ISAO MATSUDA, TAKASHI ICHIHARA, and KOJI YAMADA Appeal2015-002366 Application 11/790,766 Technology Center 1700 Before BRADLEY R. GARRIS, TERRY J. OWENS, and AVEL YN M. ROSS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 11, 13, 18, 19, 24, and 25. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a method for producing an indigestible dextrin. Claim 11 is illustrative: 11. A method of producing an indigestible dextrin comprising a glucose-fructose liquid sugar syrup, which consists of the steps of hydrolyzing, in an aqueous solution, pyrodextrin comprising a digestion-resistant component with glucoamylase to form a solution comprising indigestible dextrin Appeal2015-002366 Application 11/790,766 and glucose, and the solution is then treated directly with glucose isomerase to convert the glucose into fructose, wherein the content of digestion-resistant components in the pyrodextrin is 50-65% by mass, wherein the pyrodextrin is prepared by roasting raw starch at a temperature of 13 0 to l 80°C for 0.5 to 5 hours in the presence of mineral acid; and wherein (a) the isomerization rate of fructose from glucose is 40.1 % when the solution comprising indigestible dextrin and glucose is passed through a column packed with immobilized glucose isomerase preparation at an SV (ml amount of liquid passed through/hr/ml column volume) of 1.75, or (b) the isomerization rate of fructose from glucose is 49.0% when the solution comprising indigestible dextrin and glucose is passed through a column packed with immobilized glucose isomerase preparation at an SV (ml amount of liquid passed through/hr/ml column volume) of 3. 5. Enokizono Maselli Ohkuma (Ohkuma '873) Shaw Ohkuma (Ohkuma '403) 1 The References us 4,144,127 us 4,857,339 us 5,620,873 US 2004/0161829 Al JP 11-209403 A The Rejections Mar. 13, 1979 Aug. 15, 1989 Apr. 15, 1997 Aug. 19, 2004 Aug. 3, 1999 Claims 11, 13, 18, 19, 24, and 25 stand rejected over 1) the combined disclosures of Ohkuma '873, Shaw and Enokizono, 2) Ohkuma '873 in view of Maselli and Enokizono and 3) Ohkuma '403 in view of Shaw and Enokizono. OPINION We affirm the rejections. 1 JP 11-209403 A is an abstract. That reference misspells "Ohkuma" as "Okuma". 2 Appeal2015-002366 Application 11/790,766 Ohkuma '873 prepares pyrodextrin by roasting an aqueous starch/mineral acid mixture at 150-220 °C for about 1 to about 5 hours, treats the pyrodextrin with glucoamylase to form glucose, uses a cation exchange resin to separate the mixture into an indigestible dextrin fraction and a glucose fraction, and concentrates and dries the indigestible dextrin fraction to provide indigestible dextrin having a high fiber content (col. 1, 11. 8-10, 45-49, 56-62; col. 2, 11. 11-26; col. 3, 11. 42--49; col. 4, 11. 19-28). Ohkuma '403 prepares pyrodextrin by roasting an aqueous potato starch/hydrochloric acid mixture at 150-200 °C for 10-120 minutes and separates the mixture into an indigestible dextrin fraction and a glucose fraction (Abstract). Shaw prepares a fructose-rich syrup by treating a starch-containing produce slurry with a first starch hydrolyzing enzyme to hydrolyze starch to oligosaccharide and with a second starch hydrolyzing enzyme (e.g., glucoamylase) to hydrolyze starch and oligosaccharide to form a glucose-rich syrup, and treating the glucose-rich syrup with glucose isomerase to obtain the fructose-rich syrup (iJiJ 6, 8, 14, 15). Enokizono prepares fructose by passing a glucose-containing solution at a space velocity of 1 to 10 through a column of colloidal silica having glucose isomerase immobilized thereon (col. 2, 11. 20-30; col. 3, 11. 4-7; col. 4, 11. 5-36). Maselli "provides a process for the production of breakfast cereals which are sweetened by the enzymatic conversion of starch to fructose" (col. 11, 11. 3-5). Maselli treats starch with alpha-amylase to convert it to dextrins, treats the dextrins with glucoamylase to form dextrose (i.e., glucose), and treats the dextrose with glucose isomerase to convert a portion 3 Appeal2015-002366 Application 11/790,766 of the dextrose to fructose (col. 11, 11. 34-36, 41--42). "The glucoamylase and glucose isomerase are added simultaneously or sequentially" (col. 11, 11. 36-38). The Appellants point out that the first Ohkuma Declaration (filed Aug. 29, 2011) states that "[i]ndigestible dextrin has an a-1,3 bond which is not included in ordinary dextrin obtained by the hydrolysis of the starch" (Deel. pp. 2-3) (Br. 19), and argue in reliance upon Tashiro2 that "[a]s a result of this a-1,3 bond, indigestible dextrins were known in the art at the time of the invention to be inhibitory to several glycolytic enzymes, such as sucrase and maltase" (Br. 19). Tashiro does not state that indigestible dextrins are inhibitory "to several glycolytic enzymes, such as sucrose and maltase" as asserted by the Appellants but, rather, merely states that "indigestible dextrin inhibited sucrase and maltase activities" (Abstract). The Appellants have not established that substances which inhibit sucrase and maltase activity also inhibit glucose isomerase activity or the activity of enzymes generally. Also, contrary to the Appellants' assertion, Tashiro does not state that the inhibition by indigestible dextrin of sucrase and maltase activities is due to the indigestible dextrin' s a-1,3 bond. The Appellants assert that "although Enokizono teaches that the 'flow rate can be readily adjusted to achieve any isomerization rate' (see column 4, lines 39-40 of Enokizono ), this is in the context of the flow rate of a glucose solution which contains a starch saccharizate of about DE 90-99 (in which 2 Misao Tashiro and Mizuho Kato, Effect of Administration of Indigestible Dextrin Prepared from Corn Starch on Glucose Tolerance in Streptozotocin-diabetic Rats, 52 J. Jpn. Soc. Nutr. Food Sci. 21-29 (1999). 4 Appeal2015-002366 Application 11/790,766 DE represents a dextrose equivalent percentage of reducing sugars indicated as dextrose against the total amount of solid) (see column 4, lines 5-16 of Enokizono )" (Br. 16). Enokizono' s glucose-containing solutions are not limited to the starch saccharizate relied upon by the Appellants but, rather, include a hydrol (col. 4, 1. 12) which, according to Newkirk3 relied upon by the Examiner (Ans. 27), "contains quite a large percentage of unconverted dextrines, protein substances and other impurities, the purity being in no case, so far as I am aware, greater than 95%" (p. 1, 11. 34-37). The Appellants assert that "the disclosure of Enokizono does not teach or suggest treating a solution as claimed with glucose isomerase and 40.1 % to 49% isomerization rate of fructose from glucose at an SV of 1.2 to 3 .5" (Br. 16). The Appellants' claims do not include a step of obtaining a 40.1 % to 49% isomerization rate of glucose to fructose at an SV of 1.2 to 3.5 but, rather, merely state that if the solution comprising indigestible dextrin and glucose were passed through a column packed with immobilized glucose isomerase at the recited space velocities, the recited isomerization rates would result. Hence, the Appellants' independent claim (1, 18) limitations (a) and (b) do not recite a method step but, rather, recite a characteristic of the indigestible dextrin/ glucose solution. The Appellants assert that "Enokizono et al. does not provided any isomerization rate when hydrol is used, and only describes isomerization rates for highly-purified glucose solutions" (Br. 27) and, therefore, "says 3 US 1,471,347 (issued Oct. 23, 1923). 5 Appeal2015-002366 Application 11/790,766 nothing, much less renders expected and predictable, the isomerization rates recited in Claims 11 and 18" (id.). The Appellants provide no evidence or reasoning which shows that in view of Enokizono' s disclosures that the glucose-containing solution can be a hydrol (col. 4, 1. 12) and that "[s]ince the glucose isomerase is fixed on granules, the glucose-containing solution can flow smoothly through the column, hence, the flow rate can be readily adjusted to achieve any given isomerization rate" (col. 4, 11. 37--40), there is reason to believe that the glucose in Enokizono' s hydrol is incapable of being isomerized at the Appellants' recited rates. The Appellants argue, in reliance upon the first Ohkuma Declaration (filed Aug. 29, 2011), second Ohkuma Declaration (filed Feb. 27, 2012), Huwa4 (partial translation) and Zittan5 (p. 238), that pyrodextrin solutions contain calcium ions which have an inhibitory effect on glucose isomerase and that, therefore, one of ordinary skill in the art would not have been motivated to treat an indigestible dextrin/glucose solution directly with glucose isomerase without first purifying the solution (excluded by the Appellants' claim term "consists of') (App. Br. 18-24). Zittan states that to improve glucose isomerase stability, "[t]he high DE [dextrose equivalent] syrup resulting from liquefaction and saccharification of starch should be purified by filtration, carbon treatment, cation- and anion-exchange before it is isomerized" (p. 238), and that if calcium ions are not removed from the syrup before isomerization, "the 4 Huwa et al., Dictionary of Starch Science 465 (2003). 5 L. Zittan et al., Sweetzyme -A New Immobilized Glucose Isomerase, 27 Die Starke 236, 238 (1975). 6 Appeal2015-002366 Application 11/790,766 inhibitory effect of calcium can be overcome by extra addition of magnesium" (id.), but "additional magnesium adds to the isomerization costs as well as to the purification costs" (id.). Huwa also indicates that added magnesium ions can stabilize glucose isomerase against the inhibitory effect of calcium ions (partial translation). Thus, Zittan and Huwa would have led one of ordinary skill in the art, through no more than ordinary creativity, to add magnesium ions to Ohkuma '873 and Ohkuma '403 's pyrodextrin/glucose solutions when doing so provides a desirable balance between the benefit of overcoming the inhibitory effect of calcium ions on glucose isomerase activity versus increased isomerization and purification costs. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (in making an obviousness determination one "can take account of the inferences and creative steps that a person of ordinary skill in the art would employ"). Moreover, the declarations, Zittan and Huwa do not indicate that using glucose isomerase to isomerize the glucose in a pyrodextrin/glucose solution is unfeasible such that one of ordinary skill in the art, through no more than ordinary creativity, would not have overcome any inhibitory effect of calcium ions on glucose isomerase activity by increasing the concentration of glucose isomerase immobilized on Enokizono's colloidal silica in the isomerization column (col. 3, 11. 4-7; col. 4, 11. 29-31). The Appellants assert that their Specification's Examples 2 and 3 show unexpected results (Br. 29). That assertion is unavailing to the Appellants because it is unsupported by any explanation as to why the results would have been unexpected by one of ordinary skill in the art. See In re Freeman, 4 7 4 F .2d 1318, 1324 (CCPA 1973); In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). 7 Appeal2015-002366 Application 11/790,766 Those examples appear to merely show that if a sufficient concentration of glucose isomerase is immobilized in an isomerization column, the degree of isomerization of glucose in a pyrodextrin/glucose solution can be the same as that of a pure glucose solution. Moreover, the Appellants have not established that the relied-upon evidence provides a comparison of the claimed method with the closest prior art, see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984), or is commensurate in scope with the claims. See In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). For the above reasons we are not persuaded of reversible error in the rejections. DECISION/ORDER The rejections of claims 11, 13, 18, 19, 24, and 25 over 1) the combined disclosures of Ohkuma '873, Shaw and Enokizono, 2) Ohkuma '873 in view of Maselli and Enokizono and 3) Ohkuma '403 in view of Shaw and Enokizono are affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). It is ordered that the Examiner's decision is affirmed. AFFIRMED 8 Copy with citationCopy as parenthetical citation