Ex Parte Nakamura et alDownload PDFBoard of Patent Appeals and InterferencesAug 26, 200910451038 (B.P.A.I. Aug. 26, 2009) Copy Citation 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. 2 Appeal 2009-005817 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. 3 Appeal 2009-005817 Application 10/451,038 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. 4 Appeal 2009-005817 Application 10/451,038 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). 5 Appeal 2009-005817 Application 10/451,038 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 6 Appeal 2009-005817 Application 10/451,038 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.”). 7 Appeal 2009-005817 Application 10/451,038 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. 8 Appeal 2009-005817 Application 10/451,038 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 9 Appeal 2009-005817 Application 10/451,038 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. 10 Appeal 2009-005817 Application 10/451,038 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 ssl PAUL AND PAUL 2000 MARKET STREET SUITE 2900 PHILADELPHIA, PA 19103 11 Copy with citationCopy as parenthetical citation