Novozymes A/S

Patent Trials and Appeals Board

Mar 23, 2022

2021001274 (P.T.A.B. Mar. 23, 2022)

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. 14/405,850 12/05/2014 Noriyuki Nakashima 12424-US-PCT 6947 25908 7590 03/23/2022 NOVOZYMES NORTH AMERICA, INC. US PATENT DEPARTMENT 77 PERRYS CHAPEL CHURCH ROAD PO BOX 576 FRANKLINTON, NC 27525-0576 EXAMINER TURNER, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): DOCKETING@novozymes.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NORIYUKI NAKASHIMA ____________ Appeal 2021-001274 Application 14/405,850 Technology Center 1700 ____________ Before KAREN M. HASTINGS, JEFFREY R. SNAY, and SHELDON M. MCGEE, Administrative Patent Judges. SNAY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 16, 19-22, and 24-33. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The invention relates to methods for preparing cooked rice. Spec. 1. Claim 16 is the sole independent claim on appeal and read as follows: 16. A method for preparing a cooked rice product having retarded staling which comprises the steps of: 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Novozymes A/S as the real party in interest. Appeal Br. 1. Appeal 2021-001274 Application 14/405,850 2 (a) contacting rice with an aqueous enzyme solution comprising a maltogenic alpha-amylase having an amino acid sequence that is at least 90% identical to the amino acid sequence in SEQ ID NO: 2; and (b) cooking the rice, wherein step (a) comprises soaking the rice in the aqueous enzyme solution before cooking. Appeal Br. 12 (Claims Appendix). REJECTIONS I. Claims 16, 19-22, 25, 26, and 29-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto,2 Duan,3 and Cherry.4 II. Claims 24 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Duan, Cherry, and Shinohara.5 III. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Duan, Cherry, and Gics.6 IV. Claims 16, 19-22, 25, and 29-32 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Lee,7 and Cherry. V. Claims 24 and 33 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Lee, Cherry, and Shinohara. VI. Claim 26 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Lee, Cherry, and Duan. 2 EP 1736061 A1, published December 27, 2006 (“Okamoto”). 3 US 2005/0031734 A1, published February 10, 2005 (“Duan”). 4 EP 2316929 A2, published May 4, 2011 (“Cherry”). 5 WO 00/58445 A1, published October 5, 2000 (“Shinohara”). 6 US 2006/0292277 A1, published December 28, 2006 (“Gics”). 7 KR 1019950016555 B1, published November 23, 1996 (“Lee”), as translated. Appeal 2021-001274 Application 14/405,850 3 VII. Claims 27 and 28 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Okamoto, Lee, Cherry, and Gics. OPINION Rejection I: Obviousness over Okamoto, Duan, and Cherry With regard to Rejection I, Appellant argues claim 16 and does not separately argue any other claim. Appeal Br. 3-8. Claims 19-22, 25, 26, and 29-32 stand or fall with claim 16. The Examiner finds Okamoto discloses a method of making cooked rice that includes all the recitations of claim 16, including contacting rice with amylase, except that Okamoto does not specify using a maltogenic amylase having a sequence at least 90% identical to that of SEQUENCE ID NO. 2. Final Act. 2. The Examiner finds Cherry would have provided one of ordinary skill in the art with a reason to select the recited maltogenic amylase for use as Okamoto’s amylase because it was known to improve certain properties in food products made from rice, such as reduced staling. Id. at 2-3. Appellant argues Okamoto teaches away from using α-amylase. Appeal Br. 5. Appellant points to Okamoto’s Examples 1 and 4 as evidence that use of α-amylase in preparing cooked rice did not yield desired properties. Id. Appellant also argues Cherry lacks any teaching which would motivate one of ordinary skill in the art to “disregard the results in Okamoto and try an alpha-amylase of Cherry in a method of Okamoto.” Id. at 7. Okamoto discloses use of transglucosidase and beta-amylase, together, to reduce retrogradation of starch in rice or bread. Okamoto ¶¶ 13, Appeal 2021-001274 Application 14/405,850 4 21. Okamoto’s Example 1, relied upon by Appellant, compares transglucosidase treated rice with rice treated with either alpha- or beta- amylase alone. Id. ¶ 33. Okamoto reported rice treated with alpha-amylase alone “became softer but the stickiness significantly decreased.” Id. ¶ 36. Beta-amylase treated rice exhibited “no complete effect of suppressing retrogradation.” Id. In Okamoto’s Example 4, also relied upon by Appellant, Okamoto reports sensory evaluation results for rice treated with transglucosidase alone and in combination with a commercially available alpha- or beta-amylase. Id. ¶¶ 45, 46. Immediately after cooking, rice treated with transglucosidase and alpha-amylase exhibited improved hardness and no change in the other tested properties relative to untreated rice. Id. ¶ 45, Table 7. Appellant’s argument that the foregoing disclosures in Okamoto would have taught away from using alpha-amylase is not persuasive. As noted, Okamoto expressly teaches treating rice with a combination of transglucosidase and alpha-amylase. The fact that Okamoto demonstrates treatment with alpha-amylase alone was inferior with respect to one parameter does not negate Okamoto’s disclosure that at least some benefit was obtained through treatment with both transglucosidase and alpha- amylase. See also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (“A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.”). Moreover, Cherry teaches use of the recited maltogenic alpha- amylase8 advantageously exhibited an “increased ability to reduce 8 The Examiner cites Duan as evidence that alpha amylase can be maltogenic. Final Act. 2. Appellant argues Duan does not relate to methods Appeal 2021-001274 Application 14/405,850 5 retrogradation of starch.” Cherry ¶ 9. The combined teachings of Okamoto and Cherry support the Examiner’s finding that one of ordinary skill in the art would have had a reason to use Cherry’s particular amylase in Okamoto’s combined transglucosidase and alpha-amylase rice treatment method to achieve Okamoto’s desired purpose of reducing retrogradation of starch. Appellant further argues the Specification presents data which demonstrates unexpected results. Appeal Br. 10. According to Appellant, the results reported in Tables 1a and 1b (Spec. 7) demonstrates “the firmness of cooked rice measured by texture analysis was reduced significantly by adding maltogenic alpha-amylase, as compared to just cooking the rice in an equivalent amount of water.” Appeal Br. 10. The Examiner contends the results reported in Tables 1a and 1b are not commensurate in scope with the claims. Ans. 15. We agree. Claim 1 encompasses any amount or concentration of enzyme, and any duration of soaking. In contrast, the relied upon results correspond to a single enzyme concentration, and a single soaking duration (overnight). Spec. 7. Appellant does not present evidence or technical reasoning to demonstrate that the purported unexpected results would have been achieved over the full range of the unlimited scope of enzyme concentration and soaking time encompassed by the claims. See In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003) (“[O]bjective evidence of non-obviousness must be of making cooked rice. Appeal Br. 7. Appellant’s argument regarding Duan is unpersuasive because the Examiner’s rejection is premised on the finding that one skilled in the art would have had a reason to use Cherry’s amylase in Okamoto’s method, and there is no dispute that Cherry’s amylase is maltogenic. Appeal 2021-001274 Application 14/405,850 6 commensurate in scope with the claims which the evidence is offered to support.”). Nor does Appellant present evidence to show that the reported firmness values would have been unexpected. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“[I]t is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994))). Notably, Appellant does not dispute the Examiner’s finding that each of Okamoto, Cherry, and Lee acknowledges product quality improvement obtained through enzymatic treatment of rice. Ans. 15. For the foregoing reasons, and those expressed in the Final Office Action and Answer, we are not persuaded of reversible error. Rejection I is sustained. Rejection IV: Obviousness over Okamoto, Lee, and Cherry With regard to Rejection IV, Appellant relies on the same arguments raised against Rejection I-namely, that Okamoto teaches away from using alpha-amylase and Cherry would not have motivated one of ordinary skill to overlook Okamoto’s purported teaching away. Appellant’s arguments are not persuasive of reversible error for the reasons set forth above in connection with Rejection I. Rejection IV is sustained. Rejection II, III, and V-VII Appellant does not separately argue any of Rejections II, III, and V- VII. Accordingly, these grounds of rejection also are sustained. Appeal 2021-001274 Application 14/405,850 7 CONCLUSION The Examiner’s decision rejecting claims 16, 19-22, and 24-33 is affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 19-22, 25, 26, 29- 32 103(a) Okamoto, Duan, Cherry 16, 19-22, 25, 26, 29-32 24, 33 103(a) Okamoto, Duan, Cherry, Shinohara 24, 33 27, 28 103(a) Okamoto, Duan, Cherry, Gics 27, 28 16, 19-22, 25, 29-32 103(a) Okamoto, Lee, Cherry 16, 19-22, 25, 29-32 24, 33 103(a) Okamoto, Lee, Cherry, Shinohara 24, 33 26 103(a) Okamoto, Lee, Cherry, Duan 26 27, 28 103(a) Okamoto, Lee, Cherry, Gics 27, 28 Overall Outcome 16, 19-22, 24-33 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED