Ex Parte Jansen et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11121295 (B.P.A.I. Jul. 25, 2012)

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.
11/121,295 05/03/2005 Robert Jansen 2027.695000/KDG
(2006950)
2503
79138 7590 07/26/2012
WILLIAMS, MORGAN & AMERSON, P.C.
10333 RICHMOND, SUITE 1100
HOUSTON, TX 77042
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
07/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ROBERT JANSEN,
JOHN KERR, EDWARD FARLEY,
GORDON WALKER,
and SEBASTIEN CAMBORIEUX
__________

Appeal 2010-005241
Application 11/121,295
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

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A. STATEMENT OF THE CASE
This is a decision on appeal under 35 U.S.C. § 134 from an Examiner’s
decision finally rejecting claims 1-3, 5-23, and 25-29, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
The subject matter on appeal is directed to a grain wet milling process for
producing ethanol (claims 1-3, 5-12, 20-23, and 25-29) and a protein composition
produced by the ethanol-producing process (claims 13-19). Claim 1, reproduced
below, is illustrative.
1. A process comprising:
(a) steeping at least one of wheat, barley, rye, or rice in an aqueous
liquid to produce softened grain;
(b) milling the softened grain to produce milled grain;
(c) liquefying the milled grain by contacting it with amylase and
heating it to a temperature of at least about 50ºC, producing a
liquefied material;
(d) at least partially saccharifying the liquefied material by
contacting it with amyloglucosidase at a temperature of at least about
50ºC, producing a first saccharified material;
(e) separating fiber and germ from the first saccharified material,
producing a screened material that is substantially free of fiber and
germ;
(f) further saccharifying and fermenting the screened material with
a microorganism that produces ethanol, thereby producing a broth that
comprises ethanol and insoluble protein;
(g) separating ethanol from the broth;
(h) separating from the broth an insoluble protein-rich stream; and
(i) recovering a protein-rich product that has a reducing sugar
content of no more than about 1.5 wt %.
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App. Br., Claims Appendix (emphasis added).1
The Appellants seek review of the following grounds of rejection:
(1) the rejection of claims 1, 2, 7, 9-12, 20-23, and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Keim,2 Muller,3 and Heikkilä4;
and
(2) the rejection of claims 3, 5, 6, 8, 13-19, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Keim, Muller, Heikkilä, Ducroo,5
Chwalek,6 and Ali.7
B. DISCUSSION
1. Claims 1, 2, 7, 9-12, 20-23, and 27-298
We affirm the § 103(a) rejection of claims 1, 2, 7, 9-12, 20-23, and 27-29 for
the reasons set forth in the Examiner’s Answer9 and add the following for
emphasis.
The Appellants argue Keim does not disclose the step of separating fiber and
germ from the first saccharified material (i.e., step (e) recited in claim 1). Instead,

1 Appeal Brief dated July 23, 2009.
2 US 4,361,651 issued November 30, 1982.
3 US 4,243,750 issued January 6, 1981.
4 US 5,730,877 issued March 24, 1998.
5 US 5,023,176 issued June 11, 1991.
6 US 4,171,383 issued October 16, 1979.
7 Yusuf Ali et al., Properties of thermally-treated wheat gluten films, 6 INDUS.
CROPS & PRODS. 177-84 (1997).
8 The Appellants argue the patentability of the claims in this rejection as a group
and select claim 1 as representative. See App. Br. 12-13.
9 Examiner’s Answer dated October 28, 2009 (“Ans.”).
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the Appellants argue Keim removes germ prior to the liquefying step and thus only
removes fiber from a saccharified material. App. Br. 10.
The Examiner recognizes as much. However, the Examiner concludes it
would have been obvious to separate fiber and germ from the first saccharified
material of Keim because this sequence of steps could be manipulated by one of
ordinary skill in the art. See Ans. 16. The Examiner’s position is supported by
Keim which discloses that “[t]he process may be shortened to remove both germ
and fiber together.” Keim, col. 10, ll. 63-64.
The Appellants also argue Keim removes protein prior to fermentation and
thus does not ferment a material containing protein as recited in claim 1. App. Br.
10; see also claim 1, step (f).
The Examiner finds Keim ferments a sugar solution to produce ethanol.
Ans. 5. The Examiner recognizes that Keim removes gluten (i.e., grain protein)
from the sugar solution prior to fermentation. Ans. 14. However, the Examiner
finds the fermentation broth contains yeast and yeast contains a high amount of
protein. Ans. 5; see also Spec., p. 3, ll. 15-17 and p. 4, ll. 2-3 (insoluble protein
may include yeast protein). Thus, the fermentation broth produced in the Keim
process satisfies step (f) recited in claim 1, i.e., producing a broth that comprises
ethanol and insoluble protein. The Examiner also finds that excess yeast is
removed from the fermented mash after fermentation is complete and concludes
this removal step satisfies step (h) recited in claim 1, i.e., “separating from the
broth [produced during fermenting] an insoluble protein-rich stream.”10 Ans. 5-6.
Significantly, the Appellants have not directed us to any error in the Examiner’s
position.

10 We note claim 1 does not limit the “insoluble protein” to gluten.
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Finally, for the first time on appeal, the Appellants present arguments
relating to claims 2, 10, 11, 20-23, and 27-29 in the Reply Brief. See Reply Br. 2-
3, 4, 5, 7. Under regulations governing appeals to the Board, any new argument
not timely presented in the Appeal Brief will not be considered when filed in a
Reply Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Appeal Brief. See Ex parte Borden, 93 USPQ2d
1473, 1474-77 (BPAI 2010) (informative). The Appellants have not provided such
a showing on this record. Therefore, we will not consider these new arguments on
appeal.
2. Claims 3, 5, 6, 8, 25, and 2611
We affirm the § 103(a) rejection of claims 3, 5, 6, 8, 25, and 26 for the
reasons set forth in the Examiner’s Answer and add the following for emphasis.
The Appellants argue Ducroo, Chwalek, and Ali do not cure the deficiencies
of Keim, Muller, and Heikkilä as to the process recited in claim 1. App. Br. 14.
For the reasons set forth above and in the Examiner’s Answer, there are no
deficiencies in Keim, Muller, or Heikkilä that need to be cured by Ducroo,
Chwalek, and/or Ali.
The Appellants also argue Ali “is directed to non-analogous art and therefore
cannot be asserted against the present claims as a matter of law.” App. Br. 15. In
particular, the Appellants argue Ali is directed to a film cast from a solution
containing wheat gluten, ethanol, and glycerin whereas the claims on appeal are
directed to a process yielding a protein-rich product. App. Br. 15.

11 The Appellants argue the patentability of the claims in this rejection as a group.
See App. Br. 13-16.
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The Appellants’ argument is not persuasive of reversible error. The
Examiner merely relies on Ali to establish that it was known to use the Hunter L, a,
b color scale to measure the color of protein products at the time of the Appellants’
invention. See Ans. 13. Significantly, the Appellants have not directed us to any
evidence establishing that application of the Hunter L, a, b color scale is product
specific.
The Appellants also present arguments relating to claims 8, 25, and 26 for
the first time on appeal in the Reply Brief. See Reply Br. 5, 9, 12. The Appellants
have not explained why these arguments could not have been presented in the
Appeal Brief. See Borden, 93 USPQ2d at 1474-77. Therefore, the Appellants’
new arguments will not be considered on appeal.
3. Claims 13 and 16-1912
We affirm the § 103(a) rejection of claims 13 and 16-19 for the reasons set
forth in the Examiner’s Answer and add the following for emphasis.
Claim 13 recites “[a] non-binding, non-yellow protein composition
comprising no more than about 10 wt% moisture that is produced by the process of
claim 1.” App. Br., Claims Appendix. We conclude claim 13 is in product-by-
process format. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (the patentability
of a product in a product-by-process claim is based on the product not the process).
The Appellants argue the § 103(a) rejection of claims 13 and 16-19 is
improper “because the Examiner based this rejection on an allegedly inherent
property of the composition, and as a matter of law, a rejection under 35 U.S.C.
§ 103(a) based on an allegedly inherent property is improper.” App. Br. 17.

12 The Appellants argue the patentability of the claims in this rejection as a group.
See App. Br. 16-18.
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The Appellants’ argument is not persuasive of reversible error. The
Examiner’s rejection is based on (1) the conclusion that the process recited in
claim 1 is rendered obvious by Keim in combination with other prior art of record
and (2) the finding that the modified Keim process would produce the same or
substantially the same product as the process recited in claim 1 and thus inherently
have the same properties. See In re Papesch, 315 F.2d 381, 391 (CCPA 1963) (a
chemical compound and its properties are inseparable).
Based on the record before us, the Examiner has set forth a prima facie case
of unpatentability, and the burden properly shifted to the Appellants to demonstrate
that the product produced by the modified Keim process does not possess the
properties recited in claim 13. See, e.g., In re Best, 562 F.2d 1252, 1255 (CCPA
1977) (where the claimed and prior art products are produced by identical or
substantially identical processes, the USPTO can require an applicant to prove that
the prior art products do not necessarily or inherently possess the characteristics of
the claimed product; whether the rejection is based on “inherency” under §102, on
“prima facie obviousness” under § 103, jointly or alternatively, the burden of proof
is the same). The Appellants have failed to satisfy that burden.
The Appellants also present arguments relating to claims 16-18 for the first
time in the Reply Brief. See Reply Br. 10, 12. The Appellants have not explained
why these arguments could not have been presented in the Appeal Brief. See
Borden, 93 USPQ2d at 1474-77. Therefore, these new arguments will not be
considered on appeal.

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4. Claims 14 and 15
Claim 14 recites “[t]he composition of claim 13, wherein the protein in the
composition comprises a mixture of wheat protein and yeast protein,” and claim 15
depends from claim 14. App. Br., Claims Appendix.
The Appellants argue the prior art of record does not teach or suggest
combining yeast protein and grain protein in a final product. App. Br. 18.
The Appellants’ argument is supported by the record. As discussed above,
Keim expressly discloses that gluten (i.e., grain protein) is removed prior to
fermentation. Keim, col. 9, ll. 44-47, 61-63 and col. 10, ll. 1-3; Keim Fig. 2. The
Examiner recognizes as much. However, the Examiner contends that
“fermentation of whole grain, while the gluten is included in the fermentation
process, is known in the art.” Ans. 14. For support, the Examiner directs us to a
portion of Keim which discloses that alcohol is produced from starch “in the same
manner as if it were whole grain being processed” and contends this disclosure
suggests that gluten may be included in the fermented solution and thus the final
product. Ans. 14. We disagree. The disclosure relied on by the Examiner merely
refers to the steps employed in known grain milling processes, i.e., cooking,
saccharifying, fermenting, and distilling, not the materials processed in these steps.
See Keim, col. 5, ll. 45-50.
Based on the record before us, there would have been no reason to ferment a
solution containing gluten in the Keim process, absent the Appellants’ disclosure.
Thus, the product recited in claims 14 and 15 would not have been obvious to one
of ordinary skill in the art based on the prior art of record. For this reason, the
§ 103(a) rejection of claims 14 and 15 is reversed.
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C. DECISION
The rejection of claims 1, 2, 7, 9-12, 20-23, and 27-29 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Keim, Muller, and Heikkilä is
affirmed.
The rejection of claims 3, 5, 6, 8, 13, 16-19, 25, and 26 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Keim, Muller, Heikkilä, Ducroo,
Chwalek, and Ali is affirmed.
The rejection of claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Keim, Muller, Heikkilä, Ducroo, Chwalek, and Ali is
reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a) (2011).
AFFIRMED-IN-PART

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