Ex Parte Nissing et al

Patent Trial and Appeal Board

May 31, 2017

12743981 (P.T.A.B. May. 31, 2017)

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.
12/743,981 06/28/2010 Nick Nissing MTC 54767.2 8096
45738 7590 06/02/2017
SENNIGER POWERS LLP (MTC)
100 NORTH BROADWAY
17TH FLOOR
ST LOUIS, MO 63102
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
uspatents @ senniger.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NICK NISSING and RICHARD S. WILKES
Appeal 2016-003752
Application 12/743,9811
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 72, 103—111, and 114 in the above-identified
application.2 We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Monsanto Technology
LLC. See Appeal Brief 2, June 29, 2015 [hereinafter Appeal Br.].
2 Final Office Action, Jan. 16, 2015 [hereinafter Final Action]; Examiner’s
Answer, Dec. 30, 2015 [hereinafter Answer],
Appeal 2016-003752
Application 12/743,981
BACKGROUND
Appellants’ invention is directed to “the enhancement of desirable
characteristics in meat products through the incorporation of beneficial fatty
acids such as stearidonic acid (SDA).” Spec.312. Sole independent claim
72 is representative:
72. A food product comprising arachidonic acid (AA),
stearidonic acid (SDA), and alpha-linolenic acid (ALA),
wherein the ratio of concentrations of SDA/ AA is at least 0.1,
the ratio of concentrations of SDA/ ALA is at least 1.0, and
wherein said food product comprises at least 0.1 grams of SDA
per 100 grams of food product.
Appeal Br. 12.
Dependent claims 103 and 104 require that the ratio of SDA/AA is at
least 0.3 and 1.0, respectively. See id. Dependent claim 105 requires that
the composition further comprise gamma-linolenic acid (GLA), and
dependent claims 106 and 107 require that the ratios of SDA/GLA are at
least 2.0 and 2.5, respectively. See id. Dependent claims 108 and 109
require that 6-cis,9-cis,12-cis,15-trans-octadecatetraenoic acid (a specific
isomer of SDA) and 9-cis,12-cis, 15-trans-alpha linolenic acid (a specific
isomer of ALA) are present, respectively. See id.', see also Final Action 7.
Dependent claims 110 and 111 require the presence of 6,9-octodecadienoic
acid and tocopherols, respectively. See Appeal Br. 13. Finally, dependent
claim 114 requires that “the food product comprises endogenous oil from a
transgenic soybean.” Id.
3 Specification, May 20, 2010.
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Application 12/743,981
The Examiner maintains the following grounds of rejection:
I. Claims 72, 103—107, and 114 under 35 U.S.C. § 103(a) as being
unpatentable over Mideastweb4 in view of Ursin,5 as evidenced by USD A6
and Noureddini.7 See Final Action 3—6.
II. Claims 108 and 109 under 35 U.S.C. § 103(a) as being
unpatentable over Mideastweb in view of Ursin, and further in view of
Wolff8 and Mounts,9 as evidenced by USD A and Noureddini. See Final
Action 6—8.
III. Claim 110 under 35 U.S.C. § 103(a) as being unpatentable over
Mideastweb in view of Ursin, and further in view of Akimoto,10 as
evidenced by USDA and Noureddini. See Final Action 8—9.
IV. Claim 111 under 35 U.S.C. § 103(a) as being unpatentable over
Mideastweb in view of Ursin, and further in view of Chu,11 as evidenced by
USDA and Noureddini. See Final Action 9-10.
4 Middle Eastern Recipes, Samboosak, MidEastWeb (June 30, 2002),
http://www.mideastweb.org/recipes.htm [hereinafter Mideastweb].
5 Ursin et al., WO 2005/021761 A1 (published Mar. 10, 2005).
6 U.S. Department of Agriculture, Nutrient data for 23557, Beef, ground,
95% lean meat /5% fat, raw [hereinafter USDA],
7 Hossein Noureddini, B.C. Teoh, & F. Davis Clements, Densities of
Vegetable Oils and Fatty Acids, 69 J. Am. Oil Chemists’ Soc. 1184 (1992).
8 Robert F. Wolff, Heat-Induced Geometrical Isomerization of a-Linolenic
Acid: Effect of Temperature and Heating Time on the Appearance of
Individual Isomers, 70 J. Am. Oil Chemists’ Soc. 425 (1993).
9 Timothy F. Mounts, Processing of Soybean Oil for Food Uses, 34 Cereal
Foods World 268 (1989).
10 Akimoto et al., US 6,150,144 (issued Nov. 21, 2000).
11 Yan-Hwa Chu & Jiuh-Yaw Fin, Factors Affecting the Content of
Tocopherol in Soybean Oil, 70 J. Am. Oil Chemists’ Soc. 1263 (1993).
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Application 12/743,981
DISCUSSION
Claims 72, 103—107, and 114
In the Appeal Brief, Appellants argue claims 72, 103—107, and 114 as
a group. See Appeal Br. 4—7. In addition, Appellants discuss claims 105—
107 under a separate heading, but rely on the same arguments presented for
claim 72 without adding additional substantive arguments. See id. at 7—8.
Therefore, consistent with 37 C.F.R. § 41.37(c)(l)(iv) (2016), we limit our
discussion regarding this group to claim 72. Claims 103—107 and 114 stand
or fall with claim 72.
The Examiner finds that Mideastweb discloses a mixture of 1.5 cups
(355 ml) oil and 1 pound (453 g) ground beef. Final Action 3 (citing
Mideastweb 2). As evidenced by USD A, the Examiner finds that 100 g of
ground beef contains 0.039 g AA, 0.008 GLA, and 0.029 g ALA. See id. at
3, 5—6 (citing USDA3).
The Examiner also finds that Ursin teaches transgenic oil that “can be
incorporated into foods compositions and foodstuff, in order to provide SDA
to the consumer.” Id. at 3 (citing Ursin 6, 8—9, 21). In particular, the
Examiner finds that Ursin teaches a transgenic soybean oil comprising
32.02% SDA, 2.64% GLA, and 18.11% ALA. Id. (citing Ursin tbl. 3, trans.
event GM_A38083). The Examiner determines that
it would have been obvious to a skilled artisan at the time of the
invention to have substituted the oil in Mideastweb with the soy­
bean oil extracted from the transgenic soybeans in Ursin, in order
to provide the final user with the health benefits associated with
the fatty acid profile of the transgenic soybeans from Ursin, and
thus arrive at the claim limitations.
Id. at 4 (emphasis omitted).
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Application 12/743,981
As to the ratio of SDA to AA, and of SDA to ALA in claims 72, 103,
and 104, the Examiner adds up the contributions of SDA, AA, and ALA
from both the transgenic soybean oil (using a density of soybean oil as
evidenced by Noureddini) and the ground beef, and finds that the SDA/AA
and SDA/ALA ratios are both greater than 1.0. See id. 4—5.
first, Appellants argue that the Examiner “has failed to provide a
reason why a person of ordinary skill in the art would have selected the cited
prior art references from the ‘scope and content of the prior art.’” Appeal
Br. 5. In particular, Appellants argue that the Examiner’s reason for
combining Ursin with Mideastweb, “to provide the final user with the health
benefits associated with the fatty acid profile of the transgenic soybeans
from Ursin,” “does not address why the Office selected Mideastweb and
Ursin references to begin with.” Id. at 5—6. Therefore, Appellants argue that
the Examiner engaged in impermissible hindsight. See id. at 6. Appellants
also argue that at the time of invention, the leading commercial methods for
incorporating omega-3 fatty acids into meat products would have been to use
ALA or docosahexaenoic acid (DHA), and the Examiner has provided no
reason for selecting Ursin over these leading methods. See id.
Next, Appellants argue that the Examiner’s stated reasons for
combining Mideastweb and Ursin are insufficient because they fail to
address specific claim elements, “e.g., why one would select the cited
references from the multitude of references describing food products to
develop a meat product having the claimed combination of fatty acids and
ratios.” Id. at 6—7 (citing Ex parte Meagher, Appeal No. 2008-3613, 2008
WL 4338031 (BPAI Sept. 22, 2008)). According to Appellants, “improving
the nutritional value of a food product is likely a goal of every food chemist
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Application 12/743,981
charged with developing a new or improved food product.” Id. at 7. Nor,
Appellants argue, may a reason for combining Mideastweb and Ursin be
found in USD A or Noureddini. See id.
We do not find these arguments persuasive of reversible error. Both
Mideastweb and Ursin were known in the art at the time of Appellants’
invention, and are thus within the scope and content of the available prior
art. See Custom Accessories, Inc. v. Jeffrey-Allan Industries, Inc., 807 F.2d
955, 962 (Fed. Cir. 1986) (a person of ordinary skill in the art is “presumed
to be aware of all the pertinent prior art”). Moreover, an examiner does not
engage in impermissible hindsight unless the rejection takes into
consideration knowledge gleaned from Appellants’ disclosure. See In re
McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Here, the Examiner’s
rationale for obviousness, including the rationale for combining the
teachings of Mideastweb and Ursin—to obtain health benefits associated
with the soybean oil extracted from the transgenic soybeans— is based on
the cited references and not Appellants’ Specification. See Answer 12—13;
see also Final Action 3^4 (setting forth the rationale for combining
Mideastweb and Ursin).
Therefore, by a preponderance of the evidence on this record, we are
not persuaded of reversible error in the Examiner’s rejection of claims 72,
103—107, and 114, and we affirm the Examiner’s rejection of those claims.
Claims 108 and 109
Claims 108 and 109 require the presence of specific trans isomers of
SDA and ALA, respectively. See Final Action 7. The Examiner finds that
Mounts teaches that soybean oils should be heat processed for the purpose of
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Application 12/743,981
deodorization in order to improve taste, odor, color, and stability. Id. (citing
Mounts 268—69). Therefore, the Examiner determines that
it would have been obvious to a skilled artisan who desires to
incorporate into foods, such as the beef patties Mideastweb, to
deodorize the crude soybean oil extracted from the transgenic
soybeans in Ursin prior to incorporating the soybean oil into
foods, in order to improve the taste, odor, color and stability of
the oil.
Id. The Examiner also finds that during heat treatment at temperatures used
for deodorizing, some SDA and ALA would inherently transform into the
SDA and ALA isomers recited in claims 108 and 109, respectively, as
evidenced by Wolff. See id. (citing Wolff Abstract, 428, Fig. 4). Thus, the
resulting combination of Mideastweb and Ursin (with heat treatment as
taught by Mounts) would fall within the scope of claims 108 and 109. See
id. at 8.
Appellants argue that “the Ursin reference does not disclose that the
oil is processed, let alone the deodorization conditions that would have been
used to process the oil.” Appeal Br. 8. Appellants also argue that “the
Mounts article provides general guidelines and a wide range of processes for
extracting soy oil from soybeans are known with a wide range of processing
steps and conditions.” Id.
These arguments are not persuasive of reversible error.
The test for obviousness is not whether the features of a second­
ary reference may be bodily incorporated into the structure of the
primary reference; nor is it that the claimed invention must be
expressly suggested in any one or all of the references. Rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.
In re Keller, 642 F.2d 413, 425 (CCPA 1981). Thus, the question is whether
or not a person of ordinary skill in the art would have had reason to
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Application 12/743,981
deodorize the oil disclosed by Ursin for use in the combination. Appellants
have not cogently argued in the Appeal Brief that heat treatment at
temperatures used for deodorizing would not inherently transform some
SDA and ALA into the SDA and ALA isomers as recited in claims 108 and
109.
In the Reply Brief, Appellants argue that “[t]here are a variety of
unknown parameters from the processing conditions, including the flaking,
degumming, refining, and deodorizing conditions of the Ursin oil to the
exact composition of the ground beef of the Middle Easter[n] recipe.” Reply
Br. 6. Thus, it appears that Appellants are arguing that deodorizing
conditions would not inherently produce the claimed properties. See id.
This argument is not responsive to arguments raised in the Answer, and
Appellants have not explained why they did not raise the argument in the
Appeal Brief. Thus, the argument is waived as untimely, and we will not
consider the argument for purposes of this appeal. See 37 C.F.R.
§ 41.41(b)(2).
For the above reasons, we affirm the Examiner’s rejection of claims
108 and 109.
Claim 110
Claim 110 requires that the food product further comprises 6,9-
octadecadienoic acid. Appeal Br. 13. The Examiner finds that this fatty acid
would inherently be present in the oil disclosed by Ursin, because the
conditions at which this oil is formed involve A6 desaturase and not A12
desaturase. See Final Action 9 (citing Ursin ex. 3). The Examiner finds, as
evidenced by Akimoto, that 6,9-octadecadienoic acid is formed from oleic
acid by A6 desaturation, when the A12 desaturation is lost or decreased. See
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Application 12/743,981
id. (citing Akimoto 2:21—31, 3:40—58). Therefore the Examiner determines
that the combination of claim 110 would have been obvious based on the use
of the oil of Ursin in the mixture of Mideastweb. See id.
Appellants argue that “[sjince the Akimoto reference would not have
provided any additional reason to combine the teachings of the Mideastweb
and Ursin references, claim 110 is patentable.” Appeal Br. 9.
We do not find this argument persuasive of reversible error. The
Examiner already provided a rationale to combine Ursin with Mideastweb,
as discussed above in reference to claim 72. The Examiner cited Akimoto as
evidence that 6,9-octadecadienoic acid would be inherently present in the
combination of Ursin and Mideastweb, to which Appellants have not
presented any counterarguments or pointed to any rebuttal evidence to show
reversible error in the Examiner’s rejection.
As with claims 108 and 109, Appellants argue for the first time in the
Reply Brief that the Examiner has failed to establish a sufficient basis for
inherency. See Reply Br. 6. As discussed above, this argument is waived as
untimely, and we likewise will not consider Appellants’ argument for
purposes of this appeal. See 37 C.F.R. § 41.41(b)(2).
For the above reasons, we affirm the Examiner’s rejection of claim
110.
Claim 111
Claim 111 requires that the food product further comprises
tocopherols. Appeal Br. 13. The Examiner finds that soybean oils are
known inherently to comprise tocopherols, as evidenced by Chu. See Final
Action 10 (citing Chu). Thus, the Examiner determines that the invention of
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Application 12/743,981
claim 111 would have been obvious based on the combination of
Mideastweb and Ursin. See id.
Appellants argue that “the Chu reference would not have provided any
additional reason to combine the teachings of Mideastweb and Ursin
references.” Appeal Br. 9-10.
As with claim 110, we do not find this argument persuasive of
reversible error, as it does not address the Examiner’s rationale for
combining Ursin with Mideastweb.
As with claims 108—110, Appellants argue for the first time in the
Reply Brief that the Examiner has failed to establish a sufficient basis for
inherency. See Reply Br. 6. Again, this argument is waived as untimely, and
we likewise will not consider Appellants’ argument for purposes of this
appeal. See 37 C.F.R. § 41.41(b)(2).
For the above reasons, we affirm the Examiner’s rejection of claim
111.
DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended. See 37 C.F.R. § 1.136(a)(l)(iv) (2016).
AFFIRMED
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