Ex Parte McPherson et al

Patent Trial and Appeal Board

Mar 25, 2016

12777919 (P.T.A.B. Mar. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
121777,919 05/11/2010
74456 7590 03/25/2016
FITCH, EVEN, TABIN & FLANNERY, LLP
120 South LaSalle Street, Suite 1600
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Roger E. McPherson
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.
8970-97821-US 5339
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1793
MAILDATE DELIVERY MODE
03/25/2016 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 ROGER E. McPHERSON, JEFF M. UNDERWOOD, and
FRANK W. BARRESI
Appeal2014-005546
Application 12/777 ,919
Technology Center 1700
Before PETER F. KRATZ, BEYERL YA. FRANKLIN, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1-12. 1 We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellants' claimed invention is directed to a process of preparing a
fibrous grain product comprising subjecting a dry milled grain product to a
1 An Amendment filed on February 4, 2014 (Amendment) pursuant to 37
C.F.R. § 41.33 cancels claims 13-26 and Appellants indicate that only
claims 1-12 remain pending and before us for review on appeal (Reply Br.
2, 3; Amendment, pp. 3, 4). Accordingly, the appeal is dismissed as to
cancelled claims 13-26, which have been withdrawn from appeal.
Appeal2014-005546
Application 12/777 ,919
de-starching treatment, steaming the reduced starch product to yield a
fibrous grain product, and removing liquid starch byproduct.
Claim 1 is illustrative and reproduced below:
1. A process for preparing a fibrous grain product, comprising:
providing a dry milled grain product, said grain product containing
starch and dietary fiber;
subjecting said grain product to a destarching treatment thereby
providing an intermediate product, said intermediate product containing
relatively less starch on a dry solids basis than said grain product; and
subjecting said intermediate product to steam to yield a fibrous grain
product, said fibrous grain product having relatively more fiber on a dry
solids basis than said intermediate product, the process including removal of
liquid starch after subjecting said intermediate product to steam.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
McPherson
Jansen
WO 20061017786 A2
US 2007 /0020375 Al
Feb. 16,2006
Jan.25,2007
The Examiner maintains the following grounds of rejection2 :
Claims 1-12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jansen in view of McPherson (WO '786).
After a careful review of the opposing positions articulated by
Appellants and the Examiner and the evidence of obviousness adduced by
the Examiner, we determine that the Appellants' arguments are insufficient
to identify reversible error in the Examiner's obviousness rejection. In re
Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
2 The rejections maintained by the Examiner to the extent they are directed
to withdrawn and cancelled claims 13-26 are moot and not before us for
review.
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Appeal2014-005546
Application 12/777 ,919
Accordingly, we affirm the stated obviousness rejection for
substantially the fact findings and the reasons set forth by the Examiner in
the Examiner's Answer and in the Final Office Action. We offer the
following for emphasis.
Appellants do not dispute the Examiner's determination that the
combined teachings of the applied references would have suggested a
process of subjecting milled grain products to a destarching treatment
followed by a steam treatment corresponding to the requirements of
representative claim 1 but for the claim 1 requirement that .dry milled grain
products be subjected to the required destarching and steam treatment steps
of claim 1 (App. Br. 8-11; Reply Br. 4--7). In this regard, Appellants focus
on the claim 1 requirement for treating dry milled grain products with the
claimed process steps and argue that Jansen is directed to a wet milling
process and McPherson does not teach or suggest the use of a dry milled
grain product while arguing the rejected claims 1-12 together as a group
(App. Br. 8-11; Reply Br. 4--7). Accordingly, we select claim 1 as the
representative claim on which we focus in deciding this appeal.
Appellants argue that the Examiner's rejection premised on a
proposed combination of Jansen and McPherson lacks merit because Jansen
is directed to a com wet milling process and McPherson (WO '786) employs
dried com hulls from a wet milling process, which dried hulls according to
Appellants, are not dry milled grain product, as required by claim 1 (App.
Br. 8-9; Reply Br. 4--6; McPherson, i-f 27). As such, Appellants maintain
that the Examiner has not identified a reference, or a combination of
references, which discloses or suggests subjecting a dry milled grain product
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Appeal2014-005546
Application 12/777 ,919
to a process as claimed, including destarching to form an intermediate
product, and subjecting the intermediate product to steam (App. Br. 10-11).
This argument is not persuasive of reversible error in the Examiner's
obviousness rejection because Appellants have not persuasively articulated
why McPherson would not have taught or suggested subjecting a dry milled
grain product to destarching and steam treatment given that McPherson
teaches that dried com hulls derived from com wet milling can be ground
(dry milling) and then mixed with water for destarching and steam treatment
(McPherson i-fi-127-29, 49). In this regard, we observe that Appellants have
not established that the art recognized meaning of "dry milled grain product"
of representative claim 1 excludes a dry milled grain product that is obtained
by dry milling a dried wet milling derived grain product. Nor have
Appellants pointed to a definition furnished by Appellants in the subject
Specification for the claim term "dry milled claim product" that would
exclude a dry milled grain product that was obtained by dry milling
(grinding) a dried wet milled derived grain product. Furthermore, the
subject Specification reflects Appellants' acknowledgement that both dry
milling and wet milling are known techniques for preparing dry grain
product and are both useful as a technique for isolating starch-rich fractions
from other grain fractions, including bran (Spec. i-fi-13, 4). 3
Consequently, the Examiner has identified a reference (McPherson)
that teaches or suggests a dry milled grain product and Appellants have not
established that the Examiner has harmfully mischaracterized the claim
3 In re Nomiya, 509 F.2d 566, 570-71 (CCPA 1975) (The admittedly known
prior art disclosed in an appellant's specification may be used in determining
the patentability of a claimed invention.).
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Appeal2014-005546
Application 12/777 ,919
language in determining that McPherson teaches or suggests subjecting a dry
milled grain product to destarching and steam treatment, as required by
representative claim 1 (Final Office Action 4; Ans. 8-9).
Moreover, Appellants urge that the Examiner errs in failing to
establish motivation for one of ordinary skill in the art to interpose or
introduce a dry milled grain product into the wet milling process of Jansen,
such as by interrupting or stopping the wet milling process of Jansen and
continuing the process with a substituted dry milled grain product for the
intermediate wet milled product for the remaining steps; that is, the
destarching and steam treatment (cooking) steps (Reply Br. 4, 6-7).
Contrary to Appellants' argument; however, the Examiner's
application of McPherson furnishes the requisite motivation by teaching that
a dry milled grain product can be subjected to destarching and steam
treatment, as discussed above and in the Answer. Furthermore and while the
Examiner has not explicitly predicated the obviousness rejection on stopping
the wet milling process of Jansen and continuing subsequent steps with a
substituted intermediate product as argued by Appellants, we observe that
Appellants have not articulated why such a substitution/addition scenario for
interposing a known dry milled grain source into the fiber recovering portion
of the process of Jansen would not have been an obvious option to one of
ordinary skill in the art. This is so given that both wet milling and dry
milling are known options for recovering different fractions from grain and
Jansen teaches that the process can be performed in a batch, semi-batch, or
continuous manner and/or some combination thereof (i-f 23). The latter
teachings of Jansen suggest that the process steps can be broken up into
separately performed segments, which allows for and reinforces the
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Appeal2014-005546
Application 12/777 ,919
Examiner's determination of the obviousness of the proposed modification
of Jansen. This is because the introduction of another known source of
milled grain fractions (dry milled grain) into the process of Jansen for the
subsequent starch and steam treatments of Jansen for reducing the starch in
the alternative sourced milled grain fraction (dry milled grain) would have
been obvious as an addition/alternative to the process of Jansen to one of
ordinary skill in the relevant art with the reasonable expectation of fiber
recovery therefrom.
Thus, Appellants' arguments are insufficient to indicate reversible
error in the Examiner's determination that one of ordinary skill in the art
would have been led to employ dry milled grain product as a substitute or
additional milled grain fraction for processing in the downstream
de starching and steam treatment steps of Jansen in light of the combined
teachings of the applied prior art.
It follows that, on this appeal record, we sustain the Examiner's
obviousness rejection of remaining appealed claims 1-12.
CONCLUSION
The Examiner's decision to reject the appealed claims 1-12 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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