Richard S. Wilkes

Patent Trials and Appeals Board

Sep 27, 2019

12521938 - (D) (P.T.A.B. Sep. 27, 2019)

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.
12/521,938 07/01/2009 Richard S. Wilkes MTC 54768.200 4037
45738 7590 09/27/2019
STINSON LLP (MTC)
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/27/2019 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte RICHARD S. WILKES
____________________

Appeal 2018-002135
Application 12/521,938
Technology Center 1700
——————
Before JAMES A. WORTH, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 102, 104, 105, 107–115, 117, 121, and 123–125 in
the above-identified application. We affirm.

1 �e appeal record includes the following: Specification, July 1, 2009
(“Spec.”); Final Office Action, July 27, 2016 (“Final Action”); Appeal Brief,
Mar. 31, 2017 (“Appeal Br.”); Examiner’s Answer, Oct. 20, 2017
(“Answer”); and Reply Brief, Dec. 20, 2017 (“Reply Br.”).
2 Appellant is the “applicant” as defined in 37 C.F.R. § 1.42. According to
Appellant, the real party in interest is Monsanto Technology LLC. Appeal
Br. 2.
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BACKGROUND
Appellant’s invention “relates to an improvement in both the
nutritional quality and shelf-life of food products through the use of
transgenic plant-derived stearidonic acid [“SDA”].” Spec. ¶ 1. Sole
independent claim 102 is representative:
102. A food product comprising an oil from a transgenic
plant, the food product exhibiting at least 5% longer shelf-life
against flavor degradation than an otherwise identical food
product having eicosapentaenoic acid rather than stearidonic
acid, wherein the oil from a transgenic plant comprises at least
10% by weight stearidonic acid based on the total weight of
fatty acids in the oil and wherein the food product is selected
from the group consisting of soyflour, soy protein concentrate,
texturized soy protein concentrate, hydrolyzed soy protein, soy
protein isolate, and spray-dried tofu.
Appeal Br. 12 (emphases added to key phrases). Dependent claims 104 and
114 depend directly or indirectly from claim 102 and recite a food product
“further comprising at least 5 ppm tocopherols.” Id. at 12, 13.
�e Examiner maintains the following grounds of rejection:
1. Claims 102, 104, 105, 107–115, 117, 121, and 123–125 are
provisionally rejected on the ground of nonstatutory obviousness-type
double patenting over claims in copending Applications Nos. 12/729,055,
12/429,891, and 12/743,981. Final Action 4. Appellant does not contest this
rejection. See Appeal Br. 2. However, because these applications are now
abandoned,3 we dismiss the provisional rejection as moot.

3 See Application No. 12/729,055, Notice of Abandonment, July 2, 2013;
Application No. 12/429,891, Notice of Abandonment, May 5, 2016;
Application No. 12/743,981, Notice of Abandonment, Aug. 25, 2017. �e
latter application was the subject of an earlier appeal. See Nissing et al.,
Appeal 2016-003752, (PTAB June 2, 2017).
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Application 12/521,938

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2. Claims 102, 104, 105, 107–115, 117, 121, and 123–125 are
rejected under 35 U.S.C. § 103(a) as being unpatentable over Anfinsen4 in
view of Ursin,5 Sato,6 and Harlander,7 as evidenced by NutritionData8 and
Main World Sources of Oils.9 See Final Action 5–10.
DISCUSSION
A. Claims 102, 105, 107–113, 115, 117, 121, and 123–125
Regarding claim 102, the Examiner finds that Anfinsen teaches a non-
defatted soybean flour that retains at least 90% of its original oil content.
Final Action 5 (citing Anfinsen 6, para. 7). �e Examiner also finds that
Ursin teaches genetically modifying soybeans so that they produce at least
10% stearidonic acid. Id. at 6 (citing Ursin 34 (GM_A38083, showing
soybeans having stearidonic acid (SDA) levels ranging from 13.35–32.02
wt. %). According to the Examiner, Ursin also teaches that food products
enriched in SDA have health benefits. Id. (citing Ursin 1:27–2:11, 5:23–29,

4 Laux et al., CA 2523056 A1, published Nov. 18, 2004 (“Anfinsen,” after
the last named inventor for consistency with the record on appeal).
5 Ursin et al., WO 2005/021761 A1, published Mar. 10, 2005 (“Ursin”).
6 Shirley Sato et al., Production of γ-Linolenic Acid and Stearidonic Acid in
Seeds of Marker-Free Transgenic Soybean, 44 Crop Science 646, March–
April 2004 (“Sato”).
7 Susan Harlander, Biotechnology’s Possibilities for Soyfoods and Soybean
Oil, 12 �e Soy Connection, 1, Fall 2004 (“Harlander”).
8 Soy Flour, Full-Fat, Raw, SELFNutritionData, https://nutritiondata.self.
com/facts/legumes-and-legume-products/4382/2 (last accessed June 2, 2014)
(“NutritionData”).
9 Main World Sources of Oils, Cyberlipid Center, http://www.cyberlipid.org/
glycer/glyc0051.htm (accessed June 27, 2003) [https://web.archive.org/web/
20030627141945/http://www.cyberlipid.org/glycer/glyc0051.htm] (“Main
World Sources of Oils”).
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10:10–14, 21:1–20). Likewise, according to the Examiner, Sato teaches that
SDA-enriched soybeans lead to health benefits. See Final Action 6 (citing
Sato 651). �us, the Examiner determines that a person of ordinary skill in
the art would have had reason to substitute Ursin’s transgenic soybeans for
the soybeans in Anfinsen’s non-defatted soyflour, “in order to provide the
consumer with the health benefits” that Ursin teaches. Id. at 6.
For the limitation “the food product exhibiting at least 5% longer
shelf-life against flavor degradation than an otherwise identical food product
having eicosapentaenoic acid rather than stearidonic acid,” the Examiner
relies on inherency. Final Action 7. �e Examiner finds that Anfinsen, as
modified by Ursin, inherently discloses the recited shelf-life improvement.
Id. Evidence of this, according to the Examiner, is that Sato teaches “that
substituting fish oil, which contains eicosapentaenoic acid, with stearidonic
acid is known to augment the stability and taste of the oil.” Id. (citing Sato
651). In addition, the Examiner finds that Harlander teaches that “in foods,
stearidonic acid has greater oxidative stability than eicosapentaenoic acid.”
Final Action 7 (citing Harlander 2). Because “oxidative stability directly
relates to flavor degradation,” the Examiner finds that “the relative shelf-life
and flavor degradation recited in claim 102 is inherently present in”
Anfinsen’s soyflour as modified by Ursin. Id.
Appellant argues that the Examiner “has failed to provide a reason
why a person of ordinary skill in the art would have selected the cited prior
art references from the ‘scope and content of the prior art.’” Appeal Br. 5.
According to Appellant, “Anfinsen . . . does not identify the advantages of
omega-3 fatty acids in food[] products,” and Ursin “does not provide a
motivation to select all the elements of claim 102.” Id.
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�is argument is not persuasive of reversible error. “[O]ne cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references.” In re Keller, 642
F.2d 413, 426 (CCPA 1981). �us, neither Anfinsen nor Ursin alone must
motivate the claimed invention. Moreover, “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007). A preponderance of the evidence on this record supports the
Examiner’s determination that, at the time of the invention, a person of
ordinary skill in the art would have expected to achieve a predictable health
benefit by substituting Ursin’s transgenic soybeans for those of Anfinsen.
See Final Action 6.
Appellant next argues that, given the “large universe of possible
soybeans that could have been substituted for the Anfinsen soybeans,” the
Examiner has not provided a sufficient reason why a skilled artisan would
have looked to Ursin. Appeal Br. 6; see also id. at 8 (arguing that, other than
the soybeans described in Ursin and Sato, there is a “universe of soybeans
disclosed in thousands of other references”). According to Appellant, a
skilled artisan “would not have had reason to select the transgenic soybean
oils of Ursin or Sato from the entire genus [of edible oils] absent hindsight
reconstruction from Applicant’s specification.” Id. at 6–7.
We disagree. A rejection does not rely on improper hindsight
reconstruction so long as it “takes into account only knowledge which was
within the level of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's disclosure.”
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In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Moreover, regardless
of how many references or teachings exist within the field of endeavor, a
person of ordinary skill in the art is “presumed to be aware of all the
pertinent art.” Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807
F.2d 955, 962 (Fed. Cir. 1986). �us, the Examiner does not rely on
improper hindsight simply by choosing Ursin from among a large number of
other teachings in the art. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398,
420 (2007) (“Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the patent can
provide a reason for combining the elements in the manner claimed.”)
Next, Appellant argues that the Examiner has not established that
Anfinsen’s non-defatted soyflour would retain the fatty acid profile of the
original soybeans, such that one would expect the modified Anfinsen
composition to have at least 10% SDA. See Appeal Br. 7. According to
Appellant, a skilled artisan would have understood that “the processing of
the soybeans into soyflour would have affected the fatty acid profile since
the various steps would have affected the fatty acids in the oil differently
based on their identity.” Id. For example, “more highly unsaturated fatty
acids would have been oxidized or otherwise reacted more readily than less
highly unsaturated fatty acids.” Id. Appellant argues that “SDA is the most
polyunsaturated of the fatty acids disclosed as present in the soybeans of
Ursin.” Id.
In response, the Examiner finds that Anfinsen “discloses a method of
low temperature, low moisture processing . . . at low oxygen atmospheric
conditions, in order to avoid oxidative damage and prevent deterioration of
the nutritional value of the product.” Answer 9 (citing Anfinsen 3–7).
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Moreover, considering that Anfinsen’s process retains at least 90% of the
original oil content, the Examiner finds that Anfinsen’s soyflour “would have
the same, or similar fatty acid profile as the soybeans it was processed
from.” Id. at 11.
�e Examiner’s rationale is persuasive, especially considering that
Ursin teaches soybeans containing up to 32% SDA. �e resulting soyflour
would retain at least 10% SDA unless Anfinsen’s process destroyed most of
the original SDA. Moreover, we find it reasonable that Anfinsen’s low
temperature, low moisture, and low oxygen process would minimize damage
to SDA during the process, and thus retain at least 10% SDA. “When the
PTO shows a sound basis for believing that the products of the applicant and
the prior art are the same, the applicant has the burden of showing that they
are not.” In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990). In the absence of
any factual evidence by Appellant to the contrary, a preponderance of the
evidence supports the Examiner’s finding that Anfinsen’s soyflour, using
Ursin’s transgenic soybeans, would comprise at least 10% by weight of SDA
based on the total weight of fatty acids.
Appellant also argues that at the time of invention, it was
unpredictable how substituting SDA for fish oil (in Sato), or using Ursin’s
soybeans in Anfinsen’s process would affect flavor or nutrition of the
resulting food product. See Appeal Br. 8. According to Appellant, Anfinsen
teaches that many variables, such as “particle size, the nutrient fiber content,
the lipoxygenase content, the oil content[,] the nitrogen solubility index, the
isoflavon content, and the trypsin inhibitor content are important for an
acceptable soybean flour.” Id. According to Appellant, Ursin also fails to
disclose whether “the important parameters disclosed in Anfinsen would
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have fallen within an acceptable range.” Id. �us, Appellant argues that there
would not have been a reasonable expectation of success in using Ursin’s
soybeans in Anfinsen’s process. Id.
�is argument is not persuasive of reversible error. We note that claim
102 does not recite ranges for particle size, nutrient fiber content,
lipoxygenase, content, oil content, nitrogen solubility index, isoflavon
content, or trypsin inhibitor content. See Appeal Br. 12. Appellant has not
pointed to evidence that any deviation from Anfinsen’s preferred ranges for
these parameters would have resulted in a soyflour that was unusable for its
intended purpose at the time of invention. Nor has Appellant pointed to
evidence that adjusting these parameters would have been beyond the
ordinary skill in the art, given Anfinsen’s teachings.
Appellant next argues that Ursin is non-analogous art. Appeal. Br. 9.
According to Appellant, the field of the invention is “development of
functional food products,” but Ursin’s field is “the provision of nucleic acids
for use in transgenic crops.” Id. (citing Ursin 6:8–9). Appellant also argues
that the problem faced by the inventors is “to provide a food product having
a longer shelf-life against flavor degradation,” whereas Ursin only relates to
“provid[ing] transgenic soybeans with improved fatty acid profiles.” Id.
We do not find this argument persuasive. A reference is analogous to
the claimed invention if either (1) it is within “the same field of endeavor,”
or (2) it is “reasonably pertinent to the particular problem with which the
inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
Moreover, “[t]he field of endeavor of a patent is not limited to the specific
point of novelty, the narrowest possible conception of the field, or the
particular focus within a given field.” Unwired Planet, LLC v. Google Inc.,
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841 F.3d 995, 1001 (Fed. Cir. 2016). �e Specification describes the
invention as “relat[ing] to the utilization of transgenically derived
stearidonic acid in the development of functional food products.” Spec. ¶ 1.
Likewise, in addition to describing a transgenic soybean with increased
stearidonic acid, Ursin states that one aspect of its invention is “provid[ing] a
method of increasing the nutritional value of an edible product for human or
animal consumption, comprising adding a soybean seed oil provided by the
invention to the edible product.” Ursin 8:27–29. �us, Ursin and the claimed
invention are within the same field of endeavor.
Ursin’s teachings are also reasonably pertinent to the particular
problem with which the inventor is involved. Ursin discloses a transgenic
soybean, and teaches its usefulness in food products. �is disclosure is at
least reasonably pertinent to the problem in claim 102 of providing a “food
product comprising oil from a transgenic plant, . . . wherein the food product
is [a soy product].” See Appeal Br. 12.
Finally, in the Reply Brief, Appellant argues that the Examiner erred
in finding that the modified soyflour of Anfinsen would inherently have 5%
longer shelf life against flavor degradation than an otherwise identical food
product having eicosapentaenoic acid rather than SDA. Reply Br. 4–6.
According to Appellant, “the required components of claim 102 and the
claims that depend therefrom would not have necessarily been present in the
food product of the combined cited references.” Id. at 6. �is argument is
untimely, because Appellant did not make it in the Appeal Brief and it is not
responsive to an argument raised in the Examiner’s Answer. See 37 C.F.R.
§ 41.41(b)(2). Moreover, even if it were timely, the argument would not be
persuasive because Appellant does not point to any supporting evidence on
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the record that Anfinsen’s modified soyflour “do[es] not necessarily or
inherently possess the characteristics of [the] claimed product.” In re Best,
562 F.2d 1252, 1255 (CCPA 1997).
For the above reasons, and based on the Examiner’s findings and
conclusions as a whole, which we find persuasive, the preponderance of the
evidence supports the Examiner’s rejection of claim 102, and Appellant has
not shown reversible error. Appellant presents no separate arguments for
dependent claims 105, 107–113, 115, 117, 121, or 123–125. See Appeal Br.
3–9. �us, we sustain the Examiner’s rejection of claims 102, 105, 107–113,
115, 117, 121, and 123–125.
B. Claims 104 and 114
Dependent claims 104 and 114 depend directly or indirectly from
claim 102 and recite a food product “further comprising at least 5 ppm
tocopherols.” Appeal Br. 12, 13. �e Examiner finds that “it is well known
that a cup (i.e., 84g) of full fat soybean flour comprise[s] 1.6 mg of alpha-
toc[]opherol (i.e., vitamin E) (see Nutrition[D]ata pages 1 and 2), which is
about 19ppm tocopherol.” Final Action 8.
Appellant argues that “NutritionData would not have provided any
additional reason over those detailed above to have prepared the required
food product of a soyflour . . . having the claimed properties.” Appeal Br. 10.
�is argument is not persuasive of reversible error, because the
Examiner cites NutritionData as an evidentiary reference to show the
inherent tocopherol content of full-fat soybean flour. Appellant does not
point to any evidence disputing the information in NutritionData. �us, we
sustain the rejection of claims 104 and 114 for the reasons given above
regarding claim 102.
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CONCLUSION
�e following table summarizes the decision:
Claims
Rejected
Basis Affirmed Reversed
102, 104, 105, 107–
115, 117, 121, 123–
125
§ 103(a)
Anfinsen, Ursin,
Sato, Harlander
102, 104, 105, 107–
115, 117, 121, 123–
125

DECISION
�e Examiner’s decision is affirmed.
We dismiss, as moot, the Examiner’s provisional rejection of claims
102, 104, 105, 107–115, 117, 121, and 123–125 on the ground of
nonstatutory obviousness-type double patenting over claims in Applications
Nos. 12/729,055, 12/429,891, and 12/743,981, now abandoned.
No time period for taking any subsequent action in connection with
this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv) (2018).
AFFIRMED