Ex Parte Ohkuma et al

Patent Trial and Appeal Board

Oct 6, 2016

11790766 (P.T.A.B. Oct. 6, 2016)

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
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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).
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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).
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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).
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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).
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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
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