WhiteWave Services, Inc.

Patent Trials and Appeals Board

Nov 3, 2020

14942480 - (D) (P.T.A.B. Nov. 3, 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.
14/942,480 11/16/2015 Neal Allan Bringe 082170.0181 7935
5073 7590 11/03/2020
BAKER BOTTS L.L.P.
2001 Ross Avenue, Suite 900
Dallas, TX 75201
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/03/2020 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEAL ALLAN BRINGE

Appeal 2019-006927
Application 14/942,480
Technology Center 1700
____________

Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 1–10. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

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 WhiteWave
Services, Inc. Appeal Brief dated April 9, 2019 (“Appeal Br.”) 2.
Appeal 2019-006927
Application 14/942,480

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CLAIMED SUBJECT MATTER

The present application generally relates to a method of making soy-
based food products (e.g., soymilk) with improved taste characteristics.
Specification dated Nov. 16, 2015 (“Spec.”) 1. Conventional soy-based
food products may have a “beany” or cereal-like taste that is considered
undesirable. Id. The Specification teaches that “[o]ne indicator of lipid
oxidation may include hexanal levels in the soy extract used to create the
soy-based food products.” Id.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:

1. A method, comprising:
adding a plurality of soybeans to an extractor, the
soybeans having an average protein:oil ratio of
greater than 2.3;
heating the soybeans;
removing hulls from the plurality of soybeans; and
grinding the plurality of soybeans with water at a
temperature between 180 °F and 190 °F to yield an
aqueous soy extract having hexanal levels of less than 50
parts per billion (ppb).
Appeal Br. (Claims App. A-1) (reformatted for clarity)
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Application 14/942,480

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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Clatfelter et al.
(“Clatfelter”)
US 4,209,541 June 24, 1980
Johnson et al.
(“Johnson”)
US 4,409,256 Oct. 11, 1983
Marshall et al.
(“Marshall”)
US 4,678,673 July 7, 1987
Zemel et al. (“Zemel”) US 4,906,482 Mar. 6, 1990
Gottemoller US 2004/0197463 A1 Oct. 7, 2004
Robinson et al., Development of Soy-Based Foods of High Nutritive Value
for Use in the Philippines, Cornell Univ. Dept. of Food Science and
Technology, Semi-Annual Scientific Progress Report (Jan.–June 1969)
(“Cornell”)
Yan Zhang et al., Off-Flavor Related Volatiles in Soymilk As Affected by
Soybean Variety, Grinding, and Heat-Processing Methods, J. Agric. Food
Chem. 60, 7457–7462 (2012) (“Zhang”)
Eun-Young Hwang et al., A genome-wide association study of seed
protein and oil content in soybean, BMC Genomics, 15:1 (2014)
(“Hwang”)
Z. Berk, Technology of Production of Edible Flours and Protein Products
from Soybeans, Food and Agriculture Organization of the United Nations,
Food and Agriculture Services Bulletin No. 97 (1992) (“FAO”)

REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1 and 4–6 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gottemoller, in view of Cornell, Zhang,
FAO, and Hwang. Non-Final Office Action dated Oct. 12,
2018 (“Non-Final Act.”) 4–11.
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2. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gottemoller in view of Cornell, Zhang,
FAO, Hwang, and Marshall. Id. at 11–12.
3. Claim 7 is rejected under 35 U.S.C. § 103 as being
unpatentable over Gottemoller in view of Cornell, Zhang,
FAO, Hwang, and Clatfelter. Id. at 12–13.
4. Claims 8 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Gottemoller in view of Cornell, Zhang,
FAO, Hwang, and Zemel. Id. at 13–14.
5. Claim 9 is rejected under 35 U.S.C. § 103 as being
unpatentable over Gottemoller in view of Cornell, Zhang,
FAO, Hwang, Zemel, and Johnson. Id. at 14–16.
DISCUSSION
Rejection 1. The Examiner rejects claims 1 and 4–6 as obvious over
Gottemoller, in view of Cornell, Zhang, FAO, and Hwang. Non-Final Act.
4–11. In support of the rejection, the Examiner finds that Gottemoller
teaches methods for processing soybeans that include hull removal and
grinding steps. Id. at 5. The Examiner finds, however, that Gottemoller
does not teach the temperature of the wet grind step (id. at 5), heating before
dehulling (id. at 7), or that the soybeans used have an average protein:oil
ratio of greater than 2.3 (id. at 8).
The Examiner relies on Cornell as teaching a “hot water grind” and
that Zhang teaches to grind with water having a temperature of 180.5 °F. Id.
at 5–6. The Examiner further relies on FAO as teaching heating prior to
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dehulling. Id. at 7. The Examiner additionally relies on Hwang as teaching
soybeans that have an average protein:oil ratio of at least 2.5. Id. at 8–9.
Appellant argues that the rejection should be reversed because the
references fail to teach several elements of claim 1. Appeal Br. 7–10.
First, Appellant argues that the Examiner errs in finding that Hwang
teaches soybeans having an average protein:oil ratio of greater than 2.3. Id.
at 7–8. In the rejection, the Examiner cites to Table 3 of Hwang, reproduced
below.

Table 3 is titled “SNP loci associated with both seed protein and oil
content.” Hwang 7.
The Examiner directs us to Table 3 “where the total protein contents
and oil contents of soybeans ̍120_T_C and '542_T_C equal the protein being
greater than 2.5 times the oil content.” Non-Final Act. 8. The Examiner
further directs us to the “Conclusions” section of Hwang which indicates
that “[t]he chromosome regions defined in this study can be used for further
analysis to identify the causal gene(s) as well as to identify DNA markers
that can be used in selection to alter soybean seed protein and oil in a
predictable manner.” Id. at 9 (citing Hwang 9).
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Appellant argues that “[a]lthough Hwang may disclose genetic
markers related to protein and oil content, Hwang does not appear to
specifically disclose a protein-to-oil ratio greater than 2.3.” Appeal Br. 7.
Appellant further argues that the proposed combination would not yield a
predictable result. Id. at 8.
In the Answer, the Examiner asserts that Hwang “makes clear the
claimed protein to oil ratio in Table 3, which show that methods of using
soybeans (ab.) include soybeans having total protein contents that are greater
than 2.5 times the oil content (see '120_ T_C and '542_ T_C).” Examiner’s
Answer dated July 23, 2019 (“Ans.”) 19. The Examiner concludes, in part,
that “it was known to use soy beans having a protein to oil ratio of greater
than 2.5.” Ans. 19.
In its Reply Brief, Appellant argues that it is unclear which data
within Table 3 of Hwang is relied upon as teaching the claimed protein to oil
ratio. Reply Brief dated Sept. 23, 2019 (“Reply Br.”) 4. Appellant further
argues that, if the Examiner relies upon the mean protein and oil content
associated with an SNP allele, “the Examiner has not explained how the T
and/or C values associated with the SNP allele relate to the average
protein:oil ratio of the soybean.” Id.
We find this persuasive. An Examiner must provide more than
conclusory statements to support an obviousness argument: “there must be
some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
The Examiner does not adequately describe how the information in Table 3
sets forth a basis for the stated findings regarding total protein and oil
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content. Nor does the Examiner explain how the information set forth in
Table 3 relates to Hwang’s teaching that “protein and oil concentration are
quantitative traits which are determined by the interaction among many
genes with small to moderate genetic effects and their interaction with the
environment.” Hwang 1.
Further, the “Conclusions” section of Hwang appears to indicate that
future research may “identify the causal gene(s) as well as to identify DNA
markers that can be used in selection to alter soybean seed protein and oil in
a predictable manner.” Hwang 9. There is no clear description of a soybean
having the claimed ratio. Accordingly, the steps indicated in the
“Conclusions” section amount to more than mere substitution of an art
recognized equivalent.
In view of the foregoing, Appellant has shown error in the rejection of
claim 1 and claims 4–6 which depend therefrom.
Appellant additionally argues that Zhang does not teach to grind the
soybeans at a temperature between 180 °F and 190 °F so as to achieve the
claimed level of hexanal. Appeal Br. 8–9. In response, the Examiner
concedes that Zhang’s teachings include a vacuum process. Ans. 21. The
Examiner determines, however, that the claims include the transition term
“comprising” and do not exclude additional process steps. Ans. 21. We find
this reasoning to be persuasive.
Appellant additionally argues that the Examiner has not stated an
adequate reason why one of ordinary skill in the art would have combined
the teachings of the cited references. Appeal Br. 9–10.
In the Non-Final Rejection, the Examiner sets forth certain bases for
combination of the cited teachings. See Non-Final Act. 6 (regarding
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Gottemoller, Cornell, and Zhang), 7 (regarding FOA), 8 (regarding FOA),
and 9 (regarding Hwang). Appellant argues that the references are directed
to “markedly different problems and solutions” but does not assert any
specific error with regard to any specific stated reason to combine. Appeal
Br. 9–10. Accordingly, Appellant has not shown error in this regard.

Rejections 2–5. The Examiner additionally rejects claims 2, 3, and
7–10 over Gottemoller, Cornell, Zhang, FAO, Hwang, and certain additional
references. Non-Final Act. 11–16. Each rejection relies on Hwang as
teaching the claimed protein:oil ratio. For the reasons set forth above, we
determine that Appellant has shown error with regard to the disclosure of
this limitation. Accordingly, the rejections of claims 2, 3, and 7–10 are
reversed.

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CONCLUSION

The Examiner’s rejections are reversed.
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 4–6 103 Gottemoller,
Cornell, Zhang,
FAO, Hwang
1, 4–6
2, 3 103 Gottemoller,
Cornell, Zhang,
FAO, Hwang,
Marshall
2, 3
7 103 Gottemoller,
Cornell, Zhang,
FAO, Hwang,
Clatfelter
7
8, 10 103 Gottemoller,
Cornell, Zhang,
FAO, Hwang,
Zemel
8, 10
9 103 Gottemoller,
Cornell, Zhang,
FAO, Hwang,
Zemel, Johnson
9
Overall
Outcome
1–10

REVERSED