PELICAN CO., LTD.

Patent Trials and Appeals Board

Oct 13, 2020

2020000879 (P.T.A.B. Oct. 13, 2020)

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.
14/377,952 08/11/2014 Hiroshi Harada 74887 6236
23872 7590 10/13/2020
MCGLEW & TUTTLE, PC
P.O. BOX 9227
SCARBOROUGH STATION
SCARBOROUGH, NY 10510-9227
EXAMINER
YOO, HONG THI
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
10/13/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HIROSHI HARADA and AKINORI HIRAMATSU

Appeal 2020-000879
Application 14/377,952
Technology Center 1700
____________

Before ROMULO H. DELMENDO, MICHAEL P. COLAIANNI, and
MICHAEL G. McMANUS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1−19, and 21. We have jurisdiction
under 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on
October 1, 2020.
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Pelican Co.,
LTD. Appeal Br. 1.
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Appellant’s invention is directed to a production method for a
fermented dairy product using, as a raw material, sterile full fat soy flour
obtained by pulverizing a whole soybean and to a fermented dairy product
produced by the method (Spec. ¶ 1; Claim 1).
Claim 1 is representative of the subject matter on appeal:
1. A method, comprising the steps of:
providing sterile dehulled soybeans having a bacterial
count of 300 cells/g or less by at completely removing
contaminated soybean hulls;
producing sterile full fat soy flour having a grain size of
from 100 to 1,000 meshes by pulverizing the sterile dehulled
soybeans;
adding water to the sterile full fat soy flour to form a
hydrated powdered soy juice mixture, followed by heat
sterilizing the hydrated powdered soy juice mixture to form a
hydrated powdered soy juice, the hydrated powdered soy juice
containing the sterile full fat soy flour at a solid concentration
from 10 to 25 weight percentage relative to the hydrated
powdered soy juice mixture;
homogenizing the hydrated powdered soy juice to form a
homogenized hydrated powdered soy juice, wherein the hydrated
powdered soy juice is cooled to 30°C to 37°C after the hydrated
powdered soy juice is sterilized; and
adding a lactic acid bacterium to the homogenized
hydrated powdered soy juice, wherein a medium for lactic acid
bacterium starter comprises the homogenized hydrated
powdered soy juice;
fermenting the homogenized hydrated powdered soy juice
with the lactic acid bacterium to prepare fermented soy milk, the
fermented soy milk having a lactic degree of 0.5% to 1.0%.

Appellant appeals the following rejections:
1. Claims 12−16 are rejected under 35 U.S.C. § 101 as failing
to recite statutory subject matter.
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2. Claims 12−19, and 21 are rejected under 35 U.S.C. § 112,
¶ 2 as being indefinite.
3. Claims 1, 2, 5, 7, and 9−18 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nadland (US
2002/0012719 A1, pub. Jan. 31, 2002) in view of Harada
(US 2005/0281938 A1, pub. Dec. 22, 2005) and Boufassa
(US 6,699,517 B2, iss. Mar. 2, 2004).
4. Claims 3, 4, 6, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nadland in view of
Harada, Boufassa, and Evidence Taken Before the Joint
Committee on Tuberculin 1911 (Vol II, Illinois State
Journal Co., State Printers, 1912 ).
5. Claim 8 is rejected under 35 U.S.C. § 103(a) as
unpatentable over Nadland in view of Harada, Boufassa,
and Katz (“The Art of Fermentation”, 2012, p. 201N2).
6. Claim 19 is rejected under 35 U.S.C. § 103 as unpatentable
over Nadland in view of Harada, Boufassa, Katz and
Evidence Taken before the Joint Committee on Tuberculin
1911.
FINDINGS OF FACT & ANALYSIS
Rejection (1)
The Examiner’s findings and conclusions regarding the rejection of
claims 12−16 under § 101 are located on page 2 of the Final Office Action.
The basis for the § 101 rejection is the failure of these claims to recite
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positive process steps used to achieve the particular product recited (e.g.,
yogurt, cheese, fermented beverage) (Final Act. 2).
Appellant argues that there is no requirement that every step used to
make yogurt, cheese, or fermented beverage be set forth in the claims
(Appeal Br. 9−11).
Claims 12−16 either depend from or ultimately depend from claim 1.
Claim 1 recites a method used to make fermented soy milk. The series of
steps includes adding a lactic acid bacterium to homogenized hydrated
powdered soy juice and fermenting the homogenized hydrated powdered soy
juice with the lactic acid bacterium to prepare fermented soy milk having a
lactic degree of 0.5 to 1.0% (claim 1). Claims 12−14 and 16 further the
process of claim 1 by reciting that yogurt, cheese, or lactic acid bacteria
beverage is produced comprising at least the fermented soy milk.
The Specification describes that yogurt forms after fermenting the
homogenized hydrated powdered soy juice with the lactic acid bacterium
(Spec. 15:12−25; 19:10−11; 22:22−25). The Specification further discloses
that the fermented soy milk may be processed by routine procedures to
obtain many kinds of products such as dairy product lactic acid beverages
(sterilized), lactic acid bacteria beverages, yogurts and cheeses (Spec.
23:4−9). The Examiner does not find that non-conventional processes are
required to make these products. Rather, the Examiner’s finds that claims
12−16 are not considered a process because they fail to recite steps to
achieve a particular product (Final Act. 2). Contrary to the Examiner’s
finding, the Specification’s disclosure indicates that the steps in claim 1
result in forming a yogurt. In other words, the method steps in claim 1 yield
the desired yogurt product. See e.g., Spec. 15:12−25. The method used to
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make the cheese and beverage are disclosed as conventional such that a
person of ordinary skill in the art would have understood the process used
make these products from the fermented soy juice (Spec. 23:4−9). In other
words, we find that a person of ordinary skill in the art would have
understood that claims 12−-16 are directed to a process.
The Examiner has not shown that claims 12−16 fail to fall within one
of the statutory categories of the invention recited in 35 U.S.C. § 101. We
reverse the § 101 rejection.

Rejection (2)
The Examiner’s indefiniteness conclusions for claims 12−19 and 21
under § 112, ¶ 2 are located on pages 3 to 4 of the Final Office Action. The
basis for the § 112 rejection is the failure of these claims to recite positive
process steps used to achieve the particular product recited (e.g., yogurt,
cheese, fermented beverage) (Final Act. 3−4).
Appellant contends that the claims are clear that the particular product
recited (i.e., yogurt, cheese, or beverage) is produced andincludes at least
fermented soy milk (Appeal Br. 12−17). With regard to the § 112 rejection
of claim 15, Appellant contends that the claim clearly states that a sterilized
dairy lactic beverage comprises at least fermented soy milk (Appeal Br. 14).
The test for definiteness is whether one of ordinary skill in the art
would understand what is being claimed when the claim is read in light of
the Specification. Orthokinetics,Inc. v. Safety Travel Chair, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). In the present case, the Specification describes
that conventional processes are used to make the cheese or lactic acid
beverage in claims 14 and 16 (Spec. 23:4−9). The Specification further
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describes that the method steps recited in claim 1 result in forming yogurt
(Spec. 15:12−25; 19:10-11; 22:22−25). The Examiner’s only determination
with claim 12−16 is that the claims do not recite positive steps to form the
cheese, yogurt or beverage (Final Act. 3−4). The Examiner does not address
the disclosure in the Specification regarding using conventional processes to
form the products or that yogurt results from practicing the steps of claim 1.
We find that the Examiner has not established that the preponderance of the
evidence supports that claims 12−14, 16−19, and 21 are indefinite.
Claim 15 is on a different footing than claims 12−14, 16−19, and 21.
Claim 15 depends from claim 1 and recites: “wherein a sterilized dairy
product lactic acid bacteria beverage, the sterilized diary [sic, dairy] product
lactic acid beverage comprising at least the fermented soy milk.” Claim 15
differs from claims 12, 14 and 16 in that each of these claims recites that the
product “is produced” whereas claim 15 does not include such language.
Because it is unclear from claim 15 how the sterilized lactic acid bacteria
beverage relates to the method of claim 1, we determine that the Examiner
has established that claim 15 is indefinite. We affirm the Examiner’s § 112,
¶ 2 rejection of claim 15.

Rejections (3) to (6)
The Examiner’s findings and conclusions regarding the § 103(a)
rejection over Nadland in view of Harada and Boufassa are located on pages
5 to 8 of the Final Office Action. The Examiner finds, inter alia, that
because Nadland as modified uses the same materials in the same process
the fermented soy milk would have been expected to have the same
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characteristics including the recited lactic degree of 0.5 to 1.0% (Final Act.
7−8; Ans. 5−6).
Appellant argues that the Examiner reversibly errs in finding that
Nadland, Harada, and Boufassa use like material in a like manner as recited
in claim 1 (Appeal Br. 20; Reply Br. 10). Appellant contends that the prior
art references as a whole do not disclose features of the present invention, so
it unclear how the modified cultured soy milk product of Nadland would
have the same lactic degree as recited in claim 1 (Appeal Br. 21).
We agree that the preponderance of the evidence favors Appellant’s
argument of non-obviousness. The Examiner finds that Nadland as modified
by Harada and Boufassa use the same material in the same manner in
determining that the recited lactic degree of 0.5 to 1.0% would have resulted
(Final Act. 7−8). Nadland’s process, however, includes the steps of (1)
hydrating a protein source that may include soy flour, (2) adding the
hydrated protein source to a milk composition, (3) adding fermentation
culture to the protein/milk mixture, (4) fermenting to form a dairy product,
and (5) cooling the fermented product (Nadland ¶¶ 47−58, 67). In contrast,
claim 1 recites adding the lactic acid bacterium to a homogenized hydrated
powered soy juice and fermenting to form a prepared fermented soy milk.
Nadland includes the additional process step of adding the hydrated protein
source to a milk composition before adding the fermenting agent (¶¶ 49, 55).
Although claim 1 includes the open-ended transitional claim language
“comprising”, it is not clear how the addition of Nadland’s milk composition
to the hydrated protein source (e.g., soy flour) before fermentation would
affect the lactic degree. The Examiner does not address this difference
between Nadland’s process and the steps recited in claim 1.
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For the above reasons, we find that the Examiner has not established
that Nadland as modified by Harada, and Boufassa teaches using the same
materials in the same manner/method as claimed. Accordingly, the
Examiner has not established that the claimed lactic degree from 0.5 to 1.0%
would have resulted from practicing Nadland’s method, which is different
than the claimed invention. The Examiner, in this case, has not dispensed
with the initial burden of showing that similar materials in a similar process
was used by Nadland as modified in order to shift the burden of production
to Appellant to show that Nadland’s product does not possess the claimed
lactic degree. In re Best, 562 F.2d 1252, 1255 (CCPA 1977).
On this record, we reverse the §103(a) rejection over Nadland in view
of Harada and Boufassa. The § 103(a) rejections of the dependent claims
over Nadland in view of Harada, Boufassa, and further in view of either
Joint Committee on Tuberculin and Katz are reversed for the same reasons
as claim 1.

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
12−16 101 Eligibility 12−16
12−19, 21 112 Indefiniteness 15 12−14,
16−19, 21
1, 2, 5, 7, 9−18 103(a) Nadland, Harada,
Boufassa
1, 2, 5, 7,
9−18
3, 4, 6, 21 103(a) Nadland, Harada,
Boufassa, Joint
3, 4, 6, 21
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Committee on
Tuberculin 1911
8 103(a) Nadland, Harada,
Boufassa, Katz
8
19 103(a) Nadland, Harada,
Boufassa, Joint
Committee on
Tuberculin 1911,
Katz
19
Outcome 15 1−14,
16−19, 21

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 IN PART