Ex Parte Nakamura et al

Board of Patent Appeals and Interferences

Aug 26, 2009

10451038 (B.P.A.I. Aug. 26, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte AKIHIRO NAKAMURA,
RYUJI YOSHIDA, HIROKAZU MAEDA,
and SHUSHI NAGAOKA
__________

Appeal 2009-005817
Application 10/451,038
Technology Center 1700
___________

Decided: August 26, 2009
___________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from an Examiner’s decision
rejecting claims 1 and 4-28. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2009-005817
Application 10/451,038

Claim 1, reproduced below, is directed to a process for extracting
water-soluble dietary fiber from cacao bean husks.1
1. A production process for water-soluble dietary fiber
comprising extracting water-soluble dietary fiber by hot water
extraction of the water-soluble dietary fiber from cacao bean
husks wherein the temperature for the hot water extraction is
above 100ºC and no higher than 130ºC under pressure and the
pH upon completion of the extraction is between pH 2.0 and pH
6.5.

App. Br. 16, Claims Appendix.2
The following Examiner’s rejections are before us on appeal:
(1) Claims 6, 7, 10, 14, 15, 21, and 26 are rejected under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
obvious over Hess.3
(2) Claims 1 and 4-8 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Adomako4 and Martin-Cabrejas.5
(3) Claims 9-20 and 26-28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Adomako, Martin-Cabrejas, and Hess.
(4) Claims 21-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Adomako, Hess, and Epstein 9406 or
Epstein 440.7

1 The terms “cacao” and “cocoa” are used interchangeably in this opinion.
2 Appeal Brief dated August 25, 2008.
3 US 3,392,027 to Hess issued July 9, 1968.
4 Daniel Adomako, Cocoa Pod Husk Pectin, 11 Phytochemistry 1145-48
(1972).
5 Maria A. Martin-Cabrejas et al., Cocoa Hull: A Potential Source of
Dietary Fibre, 66 J. Sci. Food Agric. 307-11 (1994).
6 US 1,964,940 to Epstein issued July 3, 1934.
7 US 2,009,440 to Epstein issued July 30, 1935.
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Application 10/451,038

The Examiner entered rejection (1) as a new ground of rejection in the
Examiner’s Answer. Ans. 3-4.8 The Appellants did not respond to rejection
(1) in the Reply Brief. Therefore, the appeal is dismissed as to claims 6, 7,
10, 14, 15, 21, and 26 subject to the new ground of rejection. MPEP
§ 1207.03 (8th ed., Rev. 7, Jul. 2008).
As for the remaining claims, the Appellants submit that the claims
stand or fall with the patentability of claim 1. Tr. 2:12-14, 5:1-9.9 Thus, we
have considered rejections (2), (3), and (4) based on the arguments advanced
in support of the patentability of claim 1.
B. ISSUES
(1) Have the Appellants shown reversible error in the Examiner’s
conclusion that extracting water-soluble dietary fiber from cacao bean husks
according to the process of claim 1 would have been obvious to one of
ordinary skill in the art in view of the combined teachings of Adomako and
Martin-Cabrejas?
(2) On balance, does the evidence, including the prior art of record
and the Appellants’ objective evidence of non-obviousness, i.e., Examples 2
and 3 in the Appellants’ Specification, weigh in favor of a determination that
the subject matter of claim 1 is patentable over the prior art of record?
C. FINDINGS OF FACT
The Appellants provide a diagram of the cacao fruit pod. App. Br. 5.
The diagram is reproduced below.

8 Examiner’s Answer dated October 20, 2008.
9 Transcript of the Oral Hearing held July 23, 2009.
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The Appellants’ diagram depicts
the cacao fruit pod.

There is no dispute that Adomako discloses a process for extracting
dietary fiber from the cacao fruit pod, namely the cocoa pod husk. App. Br.
6; Reply Br. 5.
In particular, Adomako discloses a process for preparing powdered
pectin from the husk of ripe cocoa pods. Adomako 1147 (section entitled
“EXPERIMENTAL”).
Pectin is a common form of dietary fiber. App. Br. 4; Reply Br. 3.10
According to the Adomako process, the husk of the cocoa pods was
chopped, mixed thoroughly, and placed in boiling 0.2 N acetic acid having a
pH of 2.8. Boiling was continued for 20 minutes with frequent stirring and
the solution was removed by filtration. Extraction was repeated until
extracts were no longer viscous. Adomako 1147 (section entitled
“EXPERIMENTAL”).

10 Reply Brief dated December 22, 2008.
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The Examiner found, and the Appellants do not dispute, that acetic
acid is known in the art to create an acidic condition within the pH range
recited in the claims. Ans. 6.
The Examiner found that “acetic acid has a boiling temperature of
over 100C.” Ans. 7.
Adomako discloses that the husk of mature cocoa pods contains
soluble pectic substances. Adomako 1147, para. 3.
Adomako discloses that mild acid was chosen to facilitate extraction
of maximum amounts of high-methoxyl pectin. Adomako 1145 (section
entitled “INTRODUCTION”).
Martin-Cabrejas defines “cocoa hull” as the skin of the cocoa bean.
Martin-Cabrejas 307, col. 1.
Martin-Cabrejas discloses that cocoa hull contains a high content of
dietary fiber, including soluble dietary fiber. Martin-Cabrejas 309, col. 1.
Martin-Cabrejas identifies the main pectic substances in the soluble
fiber as high methoxyl pectins. Martin-Cabrejas 307, Abstract.
D. PRINCIPLES OF LAW
During patent examination, the pending claims must be interpreted as
broadly as their terms reasonably allow. In re Zletz, 893 F.2d 319, 321 (Fed.
Cir. 1989).
A claimed invention is not patentable if the subject matter of the
invention would have been obvious to a person having ordinary skill in the
art at the time the invention was made. 35 U.S.C. § 103(a); KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 405 (2007); Graham v. John Deere Co. of
Kansas City, 383 U.S. 1, 13 (1966).
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A person of ordinary skill is not an automaton but is a person of
ordinary creativity. KSR, 550 U.S. at 420-21. One of ordinary skill in the
art is presumed to have skills apart from what the prior art references
expressly disclose. In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985).
The test for obviousness “is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” The
test is not that the claimed invention must be expressly suggested in any one
or all of the references. In re Keller, 642 F.2d 413, 425 (CCPA 1981).
“Obviousness does not require absolute predictability of success.” In
re O’Farrell, 853 F.2d 894, 903-904 (Fed. Cir. 1988). “For obviousness
under § 103, all that is required is a reasonable expectation of success.” Id.
at 904.
A factual finding not shown by an Appellant to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964).
Nothing in the rules or in jurisprudence requires the fact finder to
credit unsupported or conclusory assertions. Rohm and Haas Co. v. Brotech
Corp., 127 F.3d 1089, 1092 (Fed. Cir. 1997); see also In re Schulze, 346
F.2d 600, 602 (CCPA 1965) (“Argument in the brief does not take the place
of evidence in the record.”).
E. ANALYSIS
1. Issue (1)
The Examiner found that Adomako suggests a process for extracting
cocoa pectin from cocoa pod husks having the claimed parameters. Ans. 6-
7. The Examiner found that Martin-Cabrejas discloses that cocoa pectin is
also contained in cocoa bean hulls. Thus, the Examiner determined that one
of ordinary skill in the art would have found the process of Adomako useful
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for extracting cocoa pectin from this additional part of the cocoa fruit pod.
Ans. 6-7.
The Appellants argue that Adomako does not disclose an extraction
process that uses the claimed temperature parameters or requires the
extraction to be conducted “under pressure.” App. Br. 7.
This argument is not persuasive of reversible error. Claim 1 recites
that the extraction is carried out “above 100ºC and no higher than 130ºC
under pressure.” The Appellants do not direct us to any definition of “under
pressure” in their Specification. Thus, it is reasonable to conclude that the
term “under pressure” as used in claim 1 encompasses any pressure,
including atmospheric pressure.11 Zletz, 893 F.2d at 321.
Adomako does not expressly disclose that the extraction was
conducted “under pressure.” However, it appears that the extraction was
carried out under at least atmospheric pressure rather than in a vacuum. See,
e.g., Adomako 1147 (section entitled “EXPERIMENTAL”). The Appellants
have failed to establish otherwise.
As for temperature, Adomako discloses that the cocoa pod husks are
boiled in 0.2 N acetic acid. Adomako 1147 (section entitled
“EXPERIMENTAL”). The boiling point of acetic acid is within the claimed
temperature range, i.e., “above 100ºC and no higher than 130ºC.12

11 At the oral hearing, counsel for the Appellants argued that “under pressure
. . . implies above atmosphere, above ambient.” Tr. 3:14-16. However, the
Appellants have failed to direct us to any evidence that supports this
argument. Rohm and Haas, 127 F.3d at 1092; Schulze, 346 F.2d at 602.
12 We take official notice of the fact that the boiling point of acetic acid is
118ºC. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (Board “may
take notice of facts beyond the record which . . . are capable of such instant
and unquestionable demonstration as to defy dispute.”).
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The Examiner found:
[W]ith the addition of acidic [sic, acetic] acid to water one of
ordinary skill in the art would have expected the slurry to
boiling [sic, boil] at a temperature over 100C because acetic
acid has a boiling temperature of over 100C.

Ans. 10. The Appellants do not point to any error in this finding.
Likewise, we find that one of ordinary skill in the art would have
expected the extraction process of Adomako to be conducted at a
temperature lower than 130ºC because the boiling point of acetic acid is
lower than 130ºC.
Next, the Appellants argue that “a person of ordinary skill in the art
would not assume that Adomako’s process of extracting dietary fiber from
cocoa pod husk is applicable to cocoa bean hulls” because dietary fiber
extracted from cocoa pod husk has a different chemical composition and
different properties than dietary fiber extracted from cocoa bean hulls. The
Appellants rely on an article by Redgwell13 and a Declaration of Hitoshi
Furuta14 for support. App. Br. 9-10.
The evidence relied on by the Appellants establishes that both cocoa
pod husk and cocoa bean hulls contain water-soluble dietary fiber. The
evidence can also be said to establish that water-soluble dietary fiber derived
from cocoa pod husk and water-soluble dietary fiber derived from cocoa
bean hulls have different chemical compositions, and as a result, different
properties. See, e.g., Furuta Decl., para. 12.

13 R. Redgwell et al., Dietary Fibre in Cocoa Shell: Characterisation of
Component Polysaccharides, 81 Food Chemistry 103-112 (2003).
14 Declaration of Hitoshi Furuta dated December 28, 2007.
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However, the Appellants have failed to direct us to any evidence
establishing that this difference in chemical composition would have
discouraged one of ordinary skill in the art from using the process disclosed
in Adomako to extract water-soluble dietary fiber from cocoa bean hulls.
Likewise, the Appellants have failed to direct us to any evidence
demonstrating that the difference in chemical composition weighs against a
reasonable expectation of success. O’Farrell, 853 F.2d at 903-904. In this
regard, we note that the Furuta Declaration is silent on these points.
Finally, the Appellants argue that the Adomako process is a “lab-scale
analytical method” and “it would not be obvious to a person of ordinary skill
in the art that Adomako’s extraction process can be a production process for
water-soluble dietary fiber.” App. Br. 11.
The Appellants’ argument is not persuasive of reversible error. The
Examiner found that “[t]o scale up a lab process would have been an
obvious extension of Adomako.” Ans. 11. The Appellants have failed to
direct us to any evidence to the contrary.
For the reasons set forth above, the Appellants have not shown
reversible error in the Examiner’s conclusion that extracting water-soluble
dietary fiber from cacao bean husks according to the process of claim 1
would have been obvious to one of ordinary skill in the art in view of the
combined teachings of Adomako and Martin-Cabrejas.
2. Issue (2)
The Appellants argue that the “increased temperature and pressure” of
the Appellants’ claimed process “has the unexpected result of significantly
increasing the yield of water-soluble dietary fiber extracted from cacao bean
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shell.” The Appellants refer to the Furuta Declaration for support. App. Br.
12.
Referring to Examples 2 and 3 in the Appellants’ Specification, Dr.
Furuta states:
[T]he yields of the water-soluble dietary fibers (E) and (F)
extracted at 80ºC and 100ºC were 11.8% and 25.9%
respectively, while those of the water-soluble dietary fibers (A),
(G), (H), and (I) extracted at 110ºC, 105ºC, 120ºC and 130ºC
were 48.5%, 42.5%, 45.9% and 51.2% respectively.

Furuta Decl., para. 15.
Significantly, the Appellants have failed to direct us to any evidence
establishing that the increased yield reported in Examples 2 and 3 would
have been unexpected by one skilled in the art. See In re Freeman, 474 F.2d
1318, 1324 (CCPA 1973) (a showing of “unexpected results” must establish
that the difference actually obtained would not have been expected by one
skilled in the art).
We recognize that Dr. Furuta states that the increased yield is
“unexpected.” Furuta Decl., para. 16. However, Dr. Furuta fails to provide
a factual basis for this conclusion. See Rohm and Haas, 127 F.3d at 1092; In
re Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (an affidavit fails in its
purpose if it recites conclusions and few facts to buttress those conclusions).
On balance, the evidence, including the prior art of record and the
Appellants’ objective evidence of non-obviousness, i.e., Examples 2 and 3 in
the Appellants’ Specification, does not weigh in favor of a determination
that the subject matter of claim 1 is patentable over the prior art of record.
F. DECISION
The decision of the Examiner is affirmed.
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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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