Ex Parte Solorio

Patent Trials and Appeals Board

Mar 25, 2019

13390875 - (D) (P.T.A.B. Mar. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/390,875 02/16/2012
44388 7590 03/27/2019
Solae, LLC
974 Centre Road, P. 0. Box 2915
CRP 721-2340
Wilmington, DE 19805
FIRST NAMED INVENTOR
Santiago Solorio
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.
SP1441-US-PCT 8996
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
03/27/2019 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):
PTO-Legal.PRC@dupont.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANTIAGO SOLORIO
Appeal2018-005228
Application 13/390,875 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and
JEFFREY R. SNAY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review2 under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 15, 17, and 18 under 35 U.S.C.
§ 103(a) as unpatentable over Lanter et al. (U.S. 5,120,565, issued June 9,
1992) ("Lanter") in view of Baumer et al. (US 2005/0220979 Al, published
Oct. 6, 2005) ("Baumer") and Glickman (US 4,081,230, issued Mar. 28,
1978).
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
1 Appellant identifies the real party in interest as E. I. du Pont de Nemours
and Company (Appeal Br. 1 ).
2 We refer to the Specification filed Feb. 16, 2012 ("Spec."), the Appeal
Brief filed Jan. 31, 2018 ("Appeal Br."), the Examiner's Answer dated Mar.
21, 2018 ("Ans."), and the Reply Brief filed Apr. 20, 2018 ("Reply Br.").
Appeal2018-005228
Application 13/390,875
We AFFIRM.
Independent claim 15 below is illustrative of the subject matter on
appeal ( emphasis and some indentation added):
15. A method of making a protein extrudate with an
amorphous structure comprising:
mixing a protein and water in an extruder to form a
mixture;
pressurizing the mixture in the extruder to a pressure of
at least about 200 psi to form a pressurized mixture;
heating the pressurized mixture in the extruder to a
temperature of at least 80°C to form a heated and pressurized
mixture;
extruding the heated and pressurized mixture through an
extruder die to a reduced pressure environment to expand the
mixture and form an extrudate;
cutting the extrudate into a plurality of pieces using
cutting blades wherein the cutting blades are at a distance from
a face of the extruder die of between about 0.2 mm and about
10 mm thereby producing an amorphous protein exudate
comprising non-uniform internal and external structures and a
network of internal voids of varying shapes and sizes; and
drying the pieces to a water content of from about 1 % by
weight to about 10% by weight to form the amorphous shaped
protein extrudate having a density from about 0.02 g/cm3 to
about 0.35 g/cm3 based on the weight of the amorphous protein
extrudate and comprising from about 10% by weight to about
90% by weight protein,
wherein the protein extrudate has external and internal
structures and wherein the external and internal structures are
non-uniform.
ANALYSIS
Appellant's principal argument on appeal is that Lanter, Baumer, and
Glickman do not teach or suggest cutting an extrudate using cutting blades at
a distance between about 0.2 mm and about 10 mm from a face of an
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Application 13/390,875
extruder die, as recited in claim 15 (Appeal Br. 3-6; Reply Br. 2-5). 3
Specifically, Appellant asserts Glickman discloses the use of rollers instead
of blades and teaches away from using blades in an extrusion process
because Glickman desires a catalyst product that is substantially identical in
shape and size and teaches that cutting extrudate via blades results in
non-uniform lengths (Appeal Br. 3-6; Reply Br. 3---6). Appellant argues that
each of Lanter and Baumer does not disclose or suggest a cutting blade at
the distance recited in claim 15 (Appeal Br. 3--4, 6). 4
In the rejection of claim 15, the Examiner finds Lanter discloses a
method of making a protein extrudate comprising, among other things,
mixing a protein and water, pressurizing the mixture in an extruder, heating
the pressurized mixture, extruding the mixture to form an extrudate, cutting
the extrudate, and drying the pieces (Non-Final Act. 3--4). The Examiner
finds Lanter does not disclose the cutting distance recited in claim 15 but
finds Glickman discloses cutting an extrudate at a distance of about 0.1 to
about 0.5 inches (about 2.54 mm to about 12.7 mm) from the face of a die
and concludes it would have been obvious to modify Lanter in view of
3 Appellant states "[a]s has been previously argued, placement of cutting
blades at a distance of between about 0.2 mm and about 10 mm as opposed
to flush against the die face, produced dramatically different and unexpected
results" (Reply Br. 2-3). No assertion of unexpected results appears in the
Appeal Brief. Appellant has not shown good cause why an assertion of
unexpected results could not have been presented in the Appeal Brief.
Therefore, we will not consider an assertion of unexpected results newly
raised in the Reply Brief. 37 C.F.R. § 4I.41(b)(2). Moreover, Appellant's
comment in the Reply Brief does not direct our attention to specific results
that may be considered.
4 Appellant notes Baumer and Lanter disclose different densities but does
not make an argument regarding these differences (Appeal Br. 6).
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Appeal2018-005228
Application 13/390,875
Glickman (id. at 4--5). The Examiner also finds Lanter does not disclose the
density recited in claim 15 but finds Baumer discloses such a density for an
extrudate and concludes it would have been obvious to modify Lanter in
view of Baumer (id. at 5).
Lanter discloses the manufacture of animal feed supplements by
plasticizing a blend of a starch source, water, protein, and added fat at
elevated temperature and pressure, extruding the blend into an extrudate,
cutting the extrudate, and drying the nugget (Lanter 1:6, 2:6-21, 3:29-37,
4:13-26, 5:4--16). As the Examiner correctly finds (Ans. 8), Lanter
discloses cutting the extrudate "by any conventional cutting means" (Lanter
5:4--7). In fact, Lanter discloses the use of blades in its examples as cutting
means (id. at 6: 15, 7:33). Lanter discloses that the extrudate is a dense,
amorphous structure (id. at 6:27-30, 8:33-36).
Glickman discloses the production of materials where it is critical that
sections are identical or substantially identical in size and shape ( e.g.,
catalyst particles that are subsequently packed into columns) (Glickman
1:5-11, 1:18-21). Glickman teaches that cutting knives have been used to
cut such extrudate but, due to non-uniform pressure and more rapid
extrusion at the center of the extrudate, this results in cut sections that are
non-uniform in length (id. at 1 :24--32). To reduce the amount of
unacceptable product, Glickman discloses cutting extrudate via rollers
positioned about 0.1 to about 0.5 inches from the face of an extrusion die (id.
at 2: 1--4, 2:65---68, 3: 1-5).
A prior art reference evidences teaching away if it "criticize[s],
discredit[s], or otherwise discourage[s] the solution claimed." In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004) (emphasis added). Here, Glickman's
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Appeal2018-005228
Application 13/390,875
desire for a uniform product and its teaching that cutting an extrudate with
knives results in non-uniform cut lengths do not teach away from the method
of claim 15, which recites that an extrudate comprises "non-uniform internal
and external structures." In other words, Glickman does not teach away
from the claimed method, as the option of achieving non-uniformity was
known. With regard to the modification of Lanter, Appellant cites no
evidence or persuasive technical reasoning that non-uniform cut lengths
would have rendered Lanter's method of making animal feed supplements
unsatisfactory for its intended purpose, changed its principle of operation,
rendered Lanter's method inoperable, or otherwise been non-obvious. Nor
do we discern a requirement for uniform lengths in Lanter' s disclosure.
As noted above, Glickman demonstrates it was known to position a
cutting device at a distance from an extrusion die within the range recited in
claim 15. Moreover, "[a] recognition in the prior art that a property is
affected by the variable is sufficient to find the variable result-effective" (In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012)). Here,
Glickman teaches that for "extrudate [to] be cut into the same size and
shape, it is necessary that each extrudate come into contact with each roller
at the same distance from the die and at substantially the same lengthwise
axis of the roller" (Glickman 3:34--38). Thus, Glickman recognizes the
distance between an extrusion die and a cutting device as a result-effective
variable.
"[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art" (In re Boesch, 617
F.2d 272,276 (CCPA 1980)). It would have been obvious to modify the
arrangement and geometries of Lanter' s extrusion process by determining
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Application 13/390,875
workable or optimal arrangements for the distance between its extrusion die
and cutting blades (e.g., to determine what distance provides desirable cut
sizes) as a matter of routine experimentation and design within the level of
the ordinary skill, thus, arriving at an arrangement or configuration within
the scope of claim 15.
In view of Lanter' s disclosure that the extrudate is amorphous and that
the claimed method and Lanter' s method ( as modified in view of Glickman
and Baumer) are substantially identical, the extrudate resulting from
Lanter's modified process presumptively would have a non-uniform internal
and external structure and a network of internal voids of varying shapes and
sizes, as recited in claim 15. "Where, as here, the cfaimed 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" (in re Best, 562 F.2d 1252, 1255
(CCPA 1977)).
As a result, Appellant's arguments do not identify a reversible error in
the Examiner's rejection of claim 15 over Lanter, Baumer, and Glickman.
Appellant does not argue claims 17 and 185 separately from claim 15
(Appeal Br. 3---6).
5 Claims 15 and 1 7 recite methods. Claim 18 recites a protein produced by
the process of claim 15 or 17. Thus, claim 18 is a product-by-process claim.
It has been well established that, when a product recited in product-by-
process format reasonably appears to be the same as or obvious from a
product of the prior art, the burden is on applicant to show that the prior art
product is in fact different from the claimed product, even though the
products may be made by different processes (In re Thorpe, 777 F.2d 695,
697 (Fed. Cir. 1985)).
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Application 13/390,875
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 15, 17, and
18 over Lanter, Baumer, and Glickman.
DECISION
The Examiner's rejection of claims 15, 17 and 18 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)(l )(iv).
AFFIRMED
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