Oatly ABDownload PDFPatent Trials and Appeals BoardMay 28, 20212020004202 (P.T.A.B. May. 28, 2021) Copy Citation 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. 15/656,259 07/21/2017 Angeliki Triantafyllou 151154-00101 1069 24998 7590 05/28/2021 Blank Rome LLP 1825 Eye Street, NW Washington, DC 20006-5403 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 05/28/2021 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): WashingtonDocketing@blankrome.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANGELIKI TRIANTAFYLLOU Appeal 2020-004202 Application 15/656,259 Technology Center 1700 Before JEFFREY B. ROBERTSON, JEFFREY R. SNAY, and JENNIFER GUPTA, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject pending claims 24–26, 28–35, 39, 40, 42, and 43. See Appeal Br. 3–14. We have jurisdiction under 35 U.S.C. § 6(b). 1 This Decision includes citations to the following documents: Specification filed July 21, 2017 (“Spec.”); Final Office Action mailed March 5, 2019 (“Final Act.”); Appeal Brief filed December 2, 2019 (“Appeal Br.”); Examiner’s Answer mailed March 20, 2020 (“Ans.”), and Reply Brief filed May 19, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Oatly AB. Appeal Br. 1. Appeal 2020-004202 Application 15/656,259 2 We AFFIRM. CLAIMED SUBJECT MATTER Appellant states the invention relates to a liquid oat base, which may be used for a milk substitute or food additive, and a method of making of a liquid oat base. Spec. 1, ll. 5–7. Claim 24, reproduced below, is illustrative of the claimed subject matter (Appeal Br., Claims Appendix i): 24. A process for preparing a liquid oat base or drink of improved soluble oat protein content from an oats material comprising starch and oat protein, optionally enriched with at least one member selected from the group consisting of vegetable oil, sodium chloride, dicalcium phosphate, tricalcium phosphate, calcium carbonate, and vitamin, comprising: providing the oats material in an aqueous medium, and degrading starch of the oats material with at least one amylase and solubilizing oat protein by means of protein- deamidase without use of protease, and wherein the improvement in the content of the soluble protein is 10 percent by weight or more of protein solubilized in the absence of protease as compared to an oats material obtained in the absence of protein-deamidase. Claim 42 is also independent and recites a liquid oat base or drink including starch or oat protein and at least 10% of protein solubilized oat protein without the use of protease. Id. at ii. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Yamaguchi US 2004/0166558 A1 Aug. 26, 2004 Amano US 2009/0123598 A1 May 14, 2009 Chen US 2012/0034341 A1 Feb. 9, 2012 Appeal 2020-004202 Application 15/656,259 3 REJECTION Claims 24–26, 28–35, 39, 40, 42, and 433 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Chen, Yamaguchi, and Amano. Final Act. 3–13; Ans. 3–14. OPINION Appellant presents separate arguments with respect to claims 24 and 42 subject to this rejection. See Appeal Br. 3–14. We select claim 24 as representative for disposition of this rejection. 37 C.F.R. § 41.37(c)(1)(iv)(2019). Appellant’s additional arguments concerning claim 42 are separately addressed. Claim 24 The Examiner’s Rejection In rejecting claim 24, the Examiner found Chen discloses an oat based drink made by hydrolyzing oat sequentially with beta amylase followed by alpha amylase. Final Act. 3–4. The Examiner found oat is a healthy cereal because it is rich in proteins and nutrients as disclosed in Chen and evidenced by Amano. Id. The Examiner found Chen is silent as to the use of protein-deamidase in its process. Id. at 4. The Examiner found Yamaguchi discloses a pure enzyme deamidase, which is superior to other 3 The Examiner’s Answer identifies claims 24–26, 28–35, and 39–43 as subjected to the rejection on appeal. Ans. 3. However, claim 41 was canceled in the Amendment filed July 30, 2019 and entered in the Advisory Action entered August 19, 2019. We observe also that because the limitations of claim 37 have been incorporated into claim 24, the Examiner relied on the statements made in the Final Action with respect to claim 37 to apply to the rejection of claim 24 as amended. Id. Appeal 2020-004202 Application 15/656,259 4 proteolytic enzymes in deamidating amido groups of proteins, because of the lack of protease activity. Id. The Examiner found Yamaguchi discloses the enzymes provide no side reaction, increased solubility and emulsification property of the treated protein, a reduced mineral sensitivity, and better mineral absorption. Id. The Examiner determined it would have been obvious to have modified Chen to have incorporated a pure enzyme deamidase as disclosed in Yamaguchi for the benefits disclosed therein and to further enhance the content of more soluble intact protein into Chen’s oat drink for a better taste and better nutritional value. Id.; Ans. 15, 17. Appellant’s Arguments Appellant argues there is no prima facie case of obviousness because neither Chen nor Yamaguchi disclose both the use of protein-deamidase and amylase, and at best the prior art may suggest the use of the enzymatic treatment of Yamaguchi instead of the enzymatic treatment disclosed by Chen. Appeal Br. 3–5. Appellant contends also that the claims achieve an unexpected synergistic effect, a high level of soluble oat proteins, as demonstrated by the Declaration of Karin Petersson (submitted November 12, 2018, hereinafter “Petersson Declaration”) and the results in the Specification. Id. at 5–8. Issue Did the Appellant demonstrate reversible error in the Examiner’s position that in view of the evidence of record, it would have been obvious to have combined the amylase treatment of the oats in Chen with the pure Appeal 2020-004202 Application 15/656,259 5 enzyme deamidase in Yamaguchi to arrive at the process recited in claim 24? Discussion We are not persuaded by Appellant’s arguments. Initially, we observe that Appellant’s arguments regarding what Chen and Yamaguchi disclose individually are not sufficient to demonstrate reversible error in the Examiner’s rejection. In an obviousness rejection, the combination of references must be considered as a whole, rather than the specific teaching of each reference. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d 1387, 1390 (CCPA 1972). Chen discloses stable oat-based drinks where oat powders are treated with amylase to provide a stable drink. Chen ¶¶ 12–16, 34. Yamaguchi discloses that the action of protein-deamidating enzyme upon various proteins increases hydration ability and results in improved functionality such as solubility for use in food including drinks. Yamaguchi ¶¶ 85, 86. Yamaguchi discloses its enzyme is advantageous over those in the prior art because it does not generate side reactions, such as cutting of the peptide bond, which is observed when protease is used. Id. ¶¶ 14, 17, 49. Yamaguchi discloses the resulting proteins allow for higher soluble mineral content and improvement of absorption of minerals in the human body. Id.¶ 89. Thus, we agree with the Examiner that one of ordinary skill in the art would have modified Chen’s disclosure with Yamaguchi to further enhance the oat drink by including more soluble intact protein, thereby producing an oat drink with a better taste and better nutritional value. Ans. 15, 17. Appeal 2020-004202 Application 15/656,259 6 We are also not persuaded by Appellant’s arguments that the combination of amylase and deamidase produce an unexpected synergistic effect in the form of an unexpected high level of soluble protein. In this regard, we observe that “[s]ynergism is one factor to be considered in the ultimate determination of obviousness.” In re Huellmantel, 324 F.2d 998, 1003 (CCPA 1963). Synergism must be unexpected in order to provide evidence of nonobviousness. Id. In combining several prior art processes into a single process, it is natural to suppose that the combination would produce more effective results than would be obtained by any one of the prior art processes alone. See In re Streckert, 167 F.2d 1010, 1012 (CCPA 1948) (The court upheld an obviousness rejection combining several prior art references to arrive at the claimed process to preserve ham). In this case, we have reviewed the evidence of record in the form of the Petersson Declaration and the examples in the Specification, and are not persuaded that such evidence is sufficient to demonstrate an unexpected synergy as to the amount of soluble protein obtained as a result of the mixture of amylase and deamidase. As to the Petersson Declaration, we observe that as a result of the experiments performed, which compare the amount of soluble protein obtained from protein deamidase alone to the amount of soluble protein obtained by a combination of protein deamidase and amylase, the Declaration states “[i]t appears that the deamidase (PG) improves the protein solubility while the amylase degrades the starch.” Petersson Decl. ¶ 7 (discussing results in ¶ 5). However, as discussed above, Yamaguchi provides evidence that deamidase is known to provide protein solubility, which is consistent with the observations made in the Declaration. Appeal 2020-004202 Application 15/656,259 7 As to the ability of amylase to increase soluble protein content, although Chen acknowledges that oats are rich in proteins (Chen ¶ 2), Chen does not expressly teach amylase increases soluble protein. In response to Appellant’s contention that the results of the claims would have been unexpected, the Examiner pointed to Tang4 for the position that amylases are known to increase soluble protein content. Final Act. 14; Ans. 18–19. Appellant contends Tang discloses Tang’s amylase is contaminated with protease and therefore fails to disclose preparing a liquid oat base or drink by means of protein-deamidase without the use of protease as recited in claim 24. Appeal Br. 8. Appellant misunderstands the Examiner’s reliance on Tang, which is merely to show amylase increases soluble protein content. Such a concept is also acknowledged in Appellant’s Specification, which states: “[i]t is known to increase the content of water soluble protein in oat drinks by the use of proteinase in addition to amylase(s) in the enzymatic degradation of oat raw material.” Spec. 2, ll. 1–3. Although it is true that Tang discloses amylase contaminated with protease enhances protein extraction (Tang p. 474), Tang provides evidence that amylase alone produces soluble protein. Compare “Control” (pure water) extracting 2.1% protein, with “PA” (pure amylase) extracting 4.8% protein, Tang, p. 474, col. 1, Table 4. Thus, although the Declaration further states that the results “reflect a significant synergism that would not have been expected by a person of ordinary skill in the art” (Petersson Decl. ¶ 9), in view of the prior art cited 4 Tang et al., Protein Extraction from Heat-stabilized Defatted Rice Bran: II. The Role of Amylase, Celluclast, and Viscozyme, 68 J. of Food Science 471, 471–475 (2003). Appeal 2020-004202 Application 15/656,259 8 above, the Declaration does not provide sufficient explanation as to why any synergism observed would have been unexpected as opposed to being the result of each enzyme performing its known function. Our review of the examples in Table 1 of the Specification leads us to a similar conclusion. Specifically, the examples including amylase only (0 U) have a lower deamidation percentage as well as lower soluble protein percentage, when compared to those examples having a combination of amylase and deamidase (1U, 2x0.5 U). Spec. 11 Table 1. Given the known function of amylase to produce soluble protein as disclosed in Chen (and evidenced by Tang) and the known function of the deamidase disclosed in Yamaguchi to solubilize proteins through deamidation without causing side reactions, the evidence provided by Appellant is insufficient to demonstrate an unexpected synergy in the combination of amylase and deamidase. As a result, we affirm the Examiner’s rejection of claim 24, and the claims dependent therefrom. Claim 42 Regarding claim 42, despite Appellant’s contention that the Appeal Brief “distinguishes the invention of claim 42 from Chen based on the numerical range recited in claim 42” (Reply Br. 1), Appellant’s arguments presented in the Appeal Brief rely on similar rationale as discussed above for claim 24. In particular, Appellant argues that Chen alone does not disclose protein deamidase without the use of protease, Yamaguchi does not disclose amylase treatment, and one of ordinary skill in the art would only consider a combination of such prior art to suggest replacing Chen’s enzymatic treatment with Yamaguchi’s enzymatic treatment. Appeal Br. 9–11. Appeal 2020-004202 Application 15/656,259 9 Appellant also relies on similar arguments with respect to the presence of evidence of an unexpected synergy. Appeal Br. 11–14. We are not persuaded by these arguments for similar reasons as discussed above with respect to claim 24. We further observe that claim 42 does not require the same combination of amylase and deamidase as recited in claim 24, nor does claim 42 recite any particular amounts of protein deamidase. As a result, Appellant has not demonstrated reversible error in the Examiner’s rationale for including a specific amount of enzyme to adjust the desired content of soluble protein. Final Act. 11–12. Further, Appellant’s evidence of an unexpected synergy are insufficient for claim 42 for the additional reason that the Petersson Declaration and the Specification fail to establish that the claimed amount of soluble protein could not be obtained simply by increasing the amount of protein deamidase. Accordingly, we affirm the Examiner’s rejection of claim 42 and the claims dependent therefrom. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 24–26, 28– 35, 39, 40, 42, 43 103(a) Chen, Yamaguchi, Amano 24–26, 28– 35, 39, 40, 42, 43 RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). Appeal 2020-004202 Application 15/656,259 10 AFFIRMED Copy with citationCopy as parenthetical citation