Oatly AB

Patent Trials and Appeals Board

May 28, 2021

2020004202 (P.T.A.B. May. 28, 2021)

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.
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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

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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.
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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
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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.
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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.
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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).
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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.
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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).
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AFFIRMED