Ex Parte Roger et alDownload PDFPatent Trial and Appeal BoardApr 19, 201813514518 (P.T.A.B. Apr. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/514,518 06/07/2012 29157 7590 K&L Gates LLP-Chicago P.O. Box 1135 CHICAGO, IL 60690 04/23/2018 FIRST NAMED INVENTOR Olivier Yves Roger 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. 3712036-01611 7732 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/23/2018 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte OLIVIER YVES ROGER, CHRISTELLE SCHAFFER-LEQUART, and ANNE-SOPHIE WA VREILLE Appeal2017-006614 Application 13/514,518 Technology Center 1700 Before JEFFREY T. SMITH, JULIA HEANEY, and JENNIFER R. GUPTA, Administrative Patent Judges. GUPTA, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's final decision rejecting claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18, and 20- 23.3 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 In this Decision, we refer to Appellants' Specification filed June 7, 2012 ("Spec."), the Final Office Action dated April 6, 2016 ("Final Act."), the Advisory Action dated October 3, 2016 ("Adv. Act."), the Appeal Brief filed December 2, 2016 ("Appeal Br."), the Examiner's Answer dated February 9, 2017 ("Ans."), and the Reply Brief filed March 14, 2017 ("Reply Br."). 2 Appellants identify the real party in interest as Nestec S.A. Appeal Br. 2. 3 The Examiner incorrectly includes claims 5, 8, and 19 in the listing of pending and rejected claims in the appealed application. Final Act. 1 Appeal2017-006614 Application 13/514,518 The subject matter of the claims on appeal relates to a hydrolyzed whole grain composition, and a food product that includes the hydrolyzed whole grain composition. Spec. 1, 11. 4--7, 3, 1. 15 - 4, 1. 7, 4:20-21. Claim 1, reproduced below from the Claims Appendix of the Appeal Brief, is illustrative of the claims on appeal. 1. A hydrolyzed whole grain composition comprising: an alpha-amylase or fragments thereof showing no hydrolytic activity towards dietary fibers when in an active state, the hydrolyzed whole grin composition has a substantially intact beta-glucan structure relative to a starting material and at least one characteristic selected from the group consisting of: a content of glucose of at least 0.25% by weight of the hydrolysed whole grain composition on a dry matter basis, a maltose to glucose ratio below 144: 1 by weight of the composition, a maltose to fructose ratio below 230: 1 by weight of the composition, and a maltose to glucose+fructose ratio below 144: 1 by weight of the composition; a protease or fragment thereof, at a concentration of 0.001-5% by weight of the total whole grain content, the protease or fragment thereof showing no hydrolytic activity toward dietary fibers when in an active state; and 0.1-20% dietary fibers by weight of the hydrolyzed whole grain composition, the dietary fibers comprising soluble fibers and insoluble fibers. Appeal Br. 17 (Claims App.). ("Office Action Summary"). Claims 5, 8, and 19 were canceled in a Response to Final Office Action filed September 1, 2016. 2 Appeal2017-006614 Application 13/514,518 DISCUSSION The Examiner maintains the rejection of claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18, and 20-23 4 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Mitchell et al. (US 2007 /0014892 Al, published January 18, 2007) ("Mitchell") in view of Conrad (US 4,282,319, issued August 4, 1981 ), and Bunzel et al., "Diferulates as structural components in soluble and insoluble cereal dietary fibre," 81 J. Sci. Food Agric. 653---660 (2001) ("Bunzel"). 5 Final Act. 2; Ans. 2. Appellants' arguments focus on limitations that appear in claim 1. Appeal Br. 7-14. Although the group of claims 12, 14, and 22, and claims 15, 17, 18, 20, and 23 are presented in the Appeal Brief under separate headings, Appellants do not provide any substantively separate arguments regarding those dependent claims, and instead rely on the arguments presented regarding claim 1. Id. at 14--15. Thus, we select claim 1 as representative of the rejected claims, and the remaining claims will stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). 4 The Examiner incorrectly includes claims 5, 8, and 19 in the statement of the rejection. Ans. 2. Claims 5, 8, and 19 were canceled in the Response to Final Office Action filed September 1, 2016, that was entered into the record by the Examiner in the Advisory Action dated October 3, 2016. Adv. Act. 2. 5 The Examiner failed to include the Pagan et al. "Effect of drying method and assay methodology on detergent fiber analysis in plants containing condensed tannins," 154 Animal Feed Sci. Tech. 119-124 (2009) ("Pagan") in the statement of the rejection. On this record, we deem this omission as a harmless error. The Examiner has provided a discussion of this reference in each of the Final Action, Advisory Action, and the Answer. Appellants have provided a substantive discussion of this reference in the principal brief. App. Br. 7-9. 3 Appeal2017-006614 Application 13/514,518 Upon consideration of the evidence on this record and each of Appellants' contentions, we find that the preponderance of evidence supports the Examiner's conclusion that the subject matter of Appellants' claims is unpatentable over the applied prior art. We sustain the Examiner's § 103(a) rejection essentially for the reasons set out by the Examiner in the Final Office Action and the Answer. We add the following. The Examiner finds that Mitchell discloses making an aqueous slurry and milling a whole grain rice or com product, and then subjecting the resulting slurry to enzymatic hydrolysis via liquefaction and optionally saccharification. Final Act. 2; Mitchell, Abstract. Liquefaction is carried out using an alpha-amylase enzyme, for example, HT-340L from Valley Research of South Bend, Indiana. Mitchell i-fi-144, 69 (Example 3). The Examiner relies on Pagan, as evidence that HT-340L is used for cleaning, and thus, is not reactive towards dietary fibers. Pagan 120, 123. After enzymatic hydrolysis, Mitchell teaches that the resulting composition can have a glucose content of from about 0% by weight to 70% by weight. Mitchell i-fi-136-40. Mitchell also teaches that its composition has a fiber content from 1 % by weight to 7% by weight of the hydrolyzed whole grain composition. Id. i135. The Examiner finds that Conrad teaches preparing a hydrolyzed whole grain composition by treating the whole grain with a proteolytic enzyme, for example 0.03 % by weight ofNeutrase, to transform water insoluble proteins into water-soluble products, and further to treat the whole grain with an amylase, for example an alpha-amylase, free from other carbohydrate hydrolyzing enzymes, to form water-soluble starch products. Final Act. 4; Conrad, Abstract, 3:5-8, 6:1-5. The Examiner finds that 4 Appeal2017-006614 Application 13/514,518 Neutrase is "known to be inactive towards certain dietary fibers." Final Act. 4. In addition, the Examiner finds that Bunzel teaches using Alcalase 2.4L, a protease, to prepare soluble and insoluble dietary fibers from cereal grains. Final Act. 4 (citing Bunzel 654 ); see also Spec. 26, 11. 19-23 (Example 3) (disclosing that Alcalase 2.4L showed no hydrolytic activity on either beta-glucan or arabinoxylan). The Examiner finds that one of ordinary skill in the art would have been led, based on Conrad and Bunzel, to modify Mitchell's process to include a protease that is inactive towards dietary fibers to control the viscosity of the slurry as well as improve the nutritional quality of the product, while leaving the beta-glucan structure intact in the whole grain hydrolysate. Final Act. 5. Appellants argue that Mitchell does not disclose or suggest an alpha- amylase "showing no hydrolytic activity towards dietary fibers when in an active state,"6 such that the hydrolyzed whole grain composition "has a substantially intact beta-glucan structure relative to the starting material," as required by independent Claim 1. Appeal Br. 7-10. Specifically, Appellants argue that the Examiner has not provided sufficient evidence to establish that alpha-amylase HT-340L, as disclosed in Mitchell, shows "no hydrolytic activity towards dietary fibers when in an active state," such that Mitchell's hydrolyzed whole grain composition "has a substantially intact beta-glucan structure relative to a starting material." Id. at 7-9; Reply Br. 2- 4. 6 "No hydrolytic activity" is defined in Appellants' Specification as encompassing "up to 5% degradation of dietary fibers." Spec. 9, 11. 22-23. 5 Appeal2017-006614 Application 13/514,518 Appellants' argument is not persuasive of reversible error. The Examiner has provided sufficient evidentiary support and technical reasoning to establish that alpha-amylase HT 340-L would not hydrolyze dietary fibers and would not hydrolyze beta glucan. The Examiner finds that Mitchell teaches a whole grain milk product containing substantially all the nutritional components of a whole grain, e.g., fiber, protein, and fat, without the bitterness associated with the whole grain. Ans. 7 (citing Mitchell, Abstract, i-fi-f 19, 3 5 (Table 1) (disclosing a whole grain milk product having a fiber content from about 1 %----7% by weight of the hydrolyzed composition), 57 (disclosing a whole grain powder having substantially all the nutrition of the whole grain (including the bran layer))). Based on this disclosure in Mitchell, the Examiner determines that one of ordinary skill in the art would understand that the alpha-amylase used in Mitchell's method does not hydrolyze dietary fibers, including beta-glucan. Ans. 7. In addition, the Examiner relies on Pagan as evidence that alpha- amylase HT-340L, as disclosed in Mitchell, does not affect dietary fibers. Ans. 6. Pagan discloses a method for evaluating fiber concentration of plants using a detergent fiber analysis. Pagan 119----120. Pagan includes Validase HT 340-L in its detergent to remove starch contamination. Id. at 123. Based on Pagan's disclosure, the Examiner reasons, and Appellants do not dispute, that one of ordinary skill in the art would understand that HT 340-L is unreactive to fibers because otherwise it would not have been used in Pagan's quantification experiments. Compare Ans. 6-7, with Reply Br. 3. The Examiner also finds that the alpha-amylase HT 340-L is known as an enzyme capable of randomly hydrolyzing the interior of alpha-1-4- glycosidic linkages in starch. Ans. 7----8 (citing information from Valley 6 Appeal2017-006614 Application 13/514,518 Research, Inc., the manufacturer of HT 340-L). The Examiner explains, and Appellants do not dispute, that the beta-glucan structures are very different structures in which the bonds between the monomers in the polymer are in beta-configuration, and thus, there is a reasonable basis for believing that alpha-amylase HT 340-L would not hydrolyze a beta-glucan structure. Compare Ans. 7, with Reply Br. 3. Thus, on this record, the Examiner has provided sufficient evidentiary support and technical reasoning to shift the burden to Appellants to show that alpha-amylase HT 340-L would hydrolyze dietary fibers and would hydrolyze beta glucan. Appellants, however, do not direct us to such a showing. Appellants argue that the Examiner has not provided evidence demonstrating that at the time of the invention, alpha-amylase HT-340L was "known to be unreactive towards dietary fibers." Appeal Br. 9 (emphasis added); see also Reply Br. 4. To support this contention, Appellants rely on the Declaration under 37 C.F.R. § 1.132 filed September 1, 2016 ("Declaration II"). Declaration II repeats Appellants' contention in the Briefs that there is no evidence to demonstrate that it was known, at the time of the invention, that alpha-amylase HT-340L was unreactive towards dietary fibers, and further contends that the obviousness rejection is improper "unless this characteristic of the enzyme and the advantages of this characteristic were known at the time of the claimed invention." Deel. i-f 7. Appellants' argument and the statements of the declarant, one of the inventors of the present application, are legally incorrect. Inherency may supply a missing claim limitation in an obviousness analysis when "the limitation at issue necessarily must be present, or the natural result of the combination of elements explicitly disclosed by the prior art." See PAR 7 Appeal2017-006614 Application 13/514,518 Pharm., Inc. v. TWI Pharms., Inc., 113 F.3d 1186, 1195-96 (Fed. Cir. 2014). "The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious." Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985); see also In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990) (explaining that a chemical composition and its properties are inseparable.). Appellants argue that Mitchell, Conrad, and Bunzel do not disclose or suggest a protease showing "no hydrolytic activity towards dietary fibers when in an active state," such that the hydrolyzed whole grain composition "has a substantially intact beta-glucan structure relative to the starting material," as required by independent Claim 1. Appeal Br. 10-13. To support this argument, Appellants rely on the Declaration under 37 C.F.R. § 1.132 filed August 12, 2015 ("Declaration I"). According to Appellants, Declaration I demonstrates that Neutrase, as disclosed in Conrad, actually hydrolyzes beta-glucan. Appeal Br. 12 (citing Deel. i-f 7, Figs. 1-2). Therefore, Appellants contend that contrary to the Examiner's finding, Neutrase is not inactive toward dietary fibers. Appeal Br. 12. Appellants' arguments are not persuasive of reversible error. Conrad is not limited to using Neutrase. 7 Conrad teaches a process for preparing hydrolyzed products from whole grain that includes an enzymatic treatment with a protease and an amylase so that the essential, nutritionally important proteins of the grain are present in a water-soluble state together with the 7 Because Declaration I in the Image File Wrapper is illegible, we presume that Appellants and the Examiner have accurately interpreted the Declaration's content. 8 Appeal2017-006614 Application 13/514,518 water-soluble starch hydrolysis products. Conrad, Abstract, 1 :38--44. As the Examiner explains, because Mitchell's process is modified in the proposed rejection, and Mitchell teaches that dietary fibers remain intact in the nutritional composition, one of ordinary skill in the art would have been led, based on Conrad, to use a protease that is not active towards the dietary fibers, including beta-glucan, in an active state, such as Alcalase 2.4. Las disclosed in Bunzel, in Mitchell's process to obtain a product where the nutritionally important proteins and starch are present in a water soluble state, making them more digestible and more nutritionally available to the human digestive system. Ans. 11, 13; see also Spec. 26, 11. 19-23 (Example 3) (disclosing that Alcalase 2.4L showed no hydrolytic activity on either beta-glucan or arabinoxylan). Appellants do not identify error in this reasomng. Accordingly, based on the totality of the appeal record, including due consideration of Appellants' arguments, we determine that the preponderance of the evidence weighs most heavily in favor of obviousness of the subject matter recited in claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18, and 20-23 within the meaning of 35 U.S.C. § 103(a). DECISION For the above reasons, the rejection of claims 1, 3, 4, 6, 7, 9, 11, 12, 14, 15, 17, 18, and 20-23 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). 9 Appeal2017-006614 Application 13/514,518 AFFIRMED 10 Copy with citationCopy as parenthetical citation