Ex Parte Kortes et al

Patent Trial and Appeal Board

Mar 2, 2016

12097447 (P.T.A.B. Mar. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/097,447 06/13/2008
84331 7590 03/04/2016
MMWVIP,LLC
10 NORTH JEFFERSON ST
STE 100
FREDERICK, MD 21701
FIRST NAMED INVENTOR
Jan Gerrit Kartes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2919208-061001 1732
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
03/04/2016 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):
docketing@mmwvlaw.com
cgmoore@mmwvlaw.com
dwoodward@mmwvlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN KOR TES and BERTUS NOORDAM
Appeal2014-001534
Application 12/097,447
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
BEVERLY FRANKLIN, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 12, 13, 15, 16, and 18-25 under
35 U.S.C. § 103(a) as unpatentable over various prior art combinations (Ans.
3-8). An oral hearing was conducted on February 11, 2016. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Claim 12 is illustrative of the subject matter on appeal (emphasis
added):
12. A method to produce a process flavour comprising:
1 The real party in interest is stated to be DSM IP Assets B.V. (App. Br. 3).
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Application 12/097,447
a) introducing a mixture containing a source of amino acids selected
from a yeast extract, an autolysed yeast, a protein hydrolysate or a mixture
thereof, that contains an amount of free asparagine, based on dry matter,
which is not higher than 1 mg/ g into an extruder;
b) kneading and heating the mixture in the extruder under conditions
of pH, temperature, pressure and reaction time sufficient for a flavour to
develop; and
c) extruding the resulting process flavour subsequently from the
extruder.
Dependent claim 13 makes it clear that the achievement of the recited
amount of asparagine in claim 12 is a result of treating the amino acids
source with an enzyme that reduces the amount of free asparagine (Claims
App.).
The appeal centers on the rejection of claim 12 over Heyland et al.
(US 4,879,130, issued November 7, 1989) (hereinafter "Heyland"), in view
of Zyzak et al. (2003, Acrylamide formation in heated foods) (hereinafter
"Zyzak"), with Chae et al. (2001, Utilization of brewer's yeast cells for the
production of food grade yeast extract) (hereinafter "Chae") as an
evidentiary reference.
Appellants argue claims 12, 13, 15, 18-23, and 25 as a group and
argue that claims 16 and 24, which were each rejected in view of a
respective additional reference, are allowable for the same reasons as claim
12 (App. Br. 6-13). Accordingly, the claims stand or fall together with
independent claim 12.
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Application 12/097,447
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants' contentions, we find that the preponderance of evidence on this
record supports the Examiner's conclusion that the subject matter of
Appellants' claims is unpatentable over the applied prior art. We sustain the
Examiner's§ 103 rejections essentially for the reasons set out by the
Examiner in the Answer.
We add the following primarily for emphasis.
Independent claim 12 is directed to a method of producing a process
flavor by introducing a particular mixture into an extruder, which kneads
and heats the mixture (App. Br. 3--4). A process flavor is any distinct flavor,
like a meat or savory flavor, obtained by heating a mixture of ingredients
containing an amino acid under particular conditions (Spec. 1-2). In
particular, the claimed invention produces a process flavor with low levels
of acrylamide, which is known to be a result of heating various foods and is
possibly carcinogenic (id. at 2). The Examiner relied on Heyland to disclose
the method of producing a process flavor with the claimed source mixture
under the claimed conditions in an extruder (Final Rej. 2-3). Then, the
Examiner cited Z yzak to teach that reducing the amount of free asparagine
by adding the enzyme asparaginase to a heated food system reduces the
resulting acrylamide (id. at 3--4). Lastly, the Examiner pointed to Chae to
disclose that the particular yeast extract used in Heyland contains
asparagine, necessitating adding asparaginase as suggested by Zyzak to
reduce the resulting acrylamide (id. at 4--5).
Appellants argue that the obviousness rejection was improper because
the prior art does not disclose that the method exemplified in Heyland's
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Application 12/097,447
extrusion process would produce acrylamide, that is, the applied prior art
does not specifically recognize the problem of acrylamide formation in an
extrusion process (App. Br. 6-8, Reply Br. 5-8). Appellants also state that
one of ordinary skill in the art would not expect that Heyland's extrusion
process would produce acrylamide because Heyland's method discloses
temperatures between 80°C and 140°C, with higher temperatures posing the
risk of degrading the components (App. Br. 8, Reply Br. 5-8). Appellants
point out that Zyzak uses either deep-frying at 205°C or microwaving, and
Chae merely heats brewer's yeast at 95°C (App. Br. 8, Reply Br. 5-8).
Therefore, even though Chae describes a yeast extract containing 4.85%
(w/w) asparagine, and even though Zyzak demonstrates acrylamide
production after deep-frying or microwaving, Appellants state that neither
reference indicates that acrylamide would form during Heyland's production
of process flavors at lower temperatures than Zyzak's deep-frying (App. Br.
8-9, Reply Br. 5-8). Finally, Appellants aver that nothing in Heyland,
Zyzak, or Chae discloses that process flavors produced by kneading and
heating in an extruder are high in acrylamide compared to process flavors
produced in an oven (App. Br. 9-12, Reply Br. 5-8). Appellants point to
Examples 2, 3, and 4 from their Specification to support that using a kneader
or extruder yields a greater percentage of acrylamide than a traditional oven;
as such, the unexpected problem necessitates treating the amino acid source-
-that is, the yeast extract-with the enzyme asparaginase (App. Br. 10-12,
Reply Br. 7-8).
Regarding the recited amount of free asparagine in claim 12, the
Examiner recognizes that Heyland is silent as to the formation of acrylamide
and the role of asparagine in the generation of acrylamide (App. Br. 6-7;
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Application 12/097,447
Ans. 10). However, the Examiner states that the problem of acrylamide
formation in heating foods containing sugar and asparagine has been known
since 2002, well before Appellants' filing date, but after Heyland's issuance
date (Ans. 10). In particular, Zyzak's microwave experiment supports
adding asparaginase, which reduces the amount of free asparagine, which in
tum reduces the amount of acrylamide in the final product (id. at 9). Zyzak
points out that the Maillard reaction results in the acrylamide formation
(id.). 2 The Examiner also points out that Heyland did not disclose
acrylamide formation because acrylamide was not known to be problematic
at the time of the patent; however, developments in the art since then
indicate that one having ordinary skill in the art at the time of the invention
would know that Hey land's heating and extruding process would likely form
acrylamide through its iteration of the Maillard process (id. at 11-12).
Moreover, Zyzak discloses that acrylamide is a possible carcinogen resulting
from heating a mixture of reducing sugars and amino acids that also contains
asparagine-that is, conducting a Maillard reaction in the presence of
asparagine (id. at 11-12). Finally, regarding forming a process flavor with
an extruder rather than with an oven, the Examiner reiterates that Heyland
2 We note that the question of whether combining references is obvious
occurs at the time of the claimed invention, not at the time of the publication
of the individual references. It appears that there may be some confusion
between Appellants and the Examiner as to when the consideration occurs
(App. Br. 6-8; Ans. at 10), but the question is whether it would have been
obvious to one having ordinary skill in the art at the time of Appellants'
claimed invention to modify the extrusion process of Hey land to extrude a
process flavor with a reduced amount of asparagine based on the disclosure
of Z yzak. As discussed in more detail in our opinion, we find no error in the
Examiner's obviousness conclusion.
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Application 12/097,447
discloses the extrusion process and Zyzak discloses treating with
asparaginase to reduce the resulting acrylamide (id. at 12-13).
We are unpersuaded of error in the Examiner's determination of
obviousness. It has been established that "the [obviousness] analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). Likewise, it is also well settled
that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in the art would have reasonably been
expected to draw therefrom. See In re Fritch, 972 F.2d 1260, 1264---65 (Fed.
Cir. 1992).
Contrary to Appellants' contention that one would not have expected
the problem, we determine that the weight of the evidence supports the
Examiner's determination that a person of ordinary skill in the art would
have reasonably expected that Heyland's process of heating the particular
mixture of amino acids and reducing sugars in an extruder that results in a
Maillard reaction would produce acrylamide at Heyland's temperatures
(noting claim 1 is devoid of any temperature), and Zyzak's disclosure would
lead a person of ordinary skill in the art to reduce the amount of free
asparagine to reduce the amount of acrylamide in the extruded product.
There is no dispute that it was known at the time of the invention that
treating food sources with asparagine content (such as yeast) with
asparaginase reduces the resulting acrylamide in a heated mixture
undergoing a Maillard reaction, regardless of the heating method.
Appellants have not disputed the Examiner's reasoning that once the
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Application 12/097,447
existence of the unwanted material (i.e., acrylamide) in the extruded product
was known, it would have been prima facie obvious to reduce or eliminate
this unwanted material by adding asparaginase to reduce the free asparagine
content, thus reducing the resulting acrylamide concentration. See KSR, 550
U.S. at 421 ("A person of ordinary skill is also a person of ordinary
creativity, not an automaton."); Ball Aerosol & Specialty Container, Inc. v.
Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (under the flexible
inquiry set forth by the Supreme Court, the PTO must take account of the
"inferences and creative steps," as well as routine steps, that an ordinary
artisan would employ); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985)
(appellants "are assuming that one of ordinary skill would not appreciate that
Esher's hollow member 14 could be removed if it is not wanted, as
insulation or otherwise, and that it would not be removed by a skilled worker
who wished to allow heat recovery of the conduit in which it was placed.
This argument presumes stupidity rather than skill.").
We conclude that the Examiner did not err in finding that one of
ordinary skill in the art would have appreciated that the Maillard reaction,
i.e., the heating reaction of a mixture of amino acids and reducing sugars in
the presence of asparagine, in Heyland's extrusion process to produce a
process flavor would likely result in a product with acrylamide, based on the
knowledge discussed in Zyzak, such that one having ordinary skill in the art
would have been motivated to reduce the amount of free asparagine to the
level recited in claim 12 in the mixture by adding asparaginase (Ans. 3-7).
Heyland does not discuss acrylamide because it pre-dates the discovery that
acrylamide is possibly carcinogenic, but similar heating and browning
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processes in Zyzak suggest that a solution to the acrylamide problem is
reducing the amount of free asparagine (id. at 3-7, 10-12).
Appellants, in their reply, state that a plethora of factors contribute to
the temperature at which acrylamide forms in a Maillard reaction, including
the various concentrations, pH, and water activity, so one having ordinary
skill in the art would not have been motivated the reduce the asparagine
concentration since other factors also contribute (Reply Br. 4--5). However,
the applied prior art clearly discloses that one factor, the amount of
asparagine, can be manipulated and reduced, to lower the resulting
acrylamide (Ans. 9-13). Appellants urge that because Heyland and Zyzak
disclose different cooking temperatures3, the teachings are not relevant to
each other (Reply Br. 5-8). To the contrary, we conclude that since Heyland
and Zyzak both discuss Maillard reactions, which Zyzak discloses can
produce acrylamide in whatever product is produced, one having ordinary
skill in the art would have been motivated to add asparaginase to reduce the
free asparagine in the mixture to be heated in order to reduce the resulting
product's acrylamide concentration. As such, we find no error in the
Examiner's rejection.
Accordingly, we affirm the Examiner's prior art rejection of claims 1,
12, 13, 15, 16, and 18-25 under 35 U.S.C. § 103(a) for the reasons given
above and presented by the Examiner.
3 The Examiner found that it was known that when reducing sugar is
increased, acrylamide formation in potatoes at 120QC increases by a factor of
28 (sentence bridging Ans. 11-12). Appellants did not dispute this (Reply
Br. 4, 5).
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DECISION
The Examiner's§ 103 rejection is affirmed.
TIME PERIOD FOR 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)(l).
AFFIRMED
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