Ex Parte Samoto et al

Patent Trial and Appeal Board

Jan 26, 2015

11921237 (P.T.A.B. Jan. 26, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAHIKO SAMOTO, MOTOHIRO MAEBUCHI, CHIAKI
MIYAZAKI, HIROFUMI KUGITANI, MITSUTAKA KOHNO, KENSUKE
FUKUI, and MOTOHIKO HIROTSUKA

Appeal 2013-004367
Application 11/921,237
Technology Center 1700
____________

Before BRADLEY R. GARRIS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134 from the November 1, 2011
decision of the Primary Examiner finally rejecting claims 9, 12–15, 27, 29,
and 38. We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a process for fractionating
soybean protein into a 7S globulin, 11S globulin, or a lipophilic protein of
high purity (Abstract). The process involves subjecting a low-denatured
soybean to a specific denaturation treatment to produce soybean milk, which

1 The Real Party in Interest is Fuji Oil Company, Limited (Appeal Br. 2).
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is then fractionated into 7S globulin, 11S globulin, and lipophilic fractions
(Spec. 8–9). Claim 9 is representative of the claims on appeal and is
reproduced below from the Claims Appendix to the Brief (key claim
limitations in italics):
9. A process for producing a fractionated soybean protein,
which comprises preparing a processed soybean by subjecting a
soybean comprising a protein component and a soybean curd
refuse component to an impregnation with an equal or lesser
weight of a polar alcohol solution and then to a warming
treatment at a product temperature of 40 to 90°C, or by
subjecting a soybean comprising a protein component and a
soybean curd refuse component to a wet heating treatment, and
preparing soybean milk or soybean curd refuse as raw material
from the processed soybean, and then collecting, from the
soybean milk or soybean curd refuse, a fraction in which at
least an acid-precipitable soybean protein selected from the
group consisting of 7S globulin, 11 S globulin and a lipophilic
protein is concentrated,

wherein PDI of the processed soybean is not less than 40
and less than 80, and a lipophilic protein is selectively water-
insolubilized among proteins contained in the processed
soybean.
REJECTION
Claims 9, 12–15, 27, 29 and 38 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Ishikawa2 in view of Albrecht3. As our decision
relies on limitations found in both independent claims 9 and 29, as well as
each of the dependent claims, we limit our discussion to claim 9.

2 Ishikawa et al., EP 1 232 353 A1, published July 2, 2003.
3 Albrecht et al., "Rate Studies on Atmospheric Steaming and Immersion
Cooking of Soybeans," 43 CEREAL CHEMISTRY, 400-407 (1966).
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DISCUSSION
The Examiner finds that Ishikawa discloses a method for fractionating
soybean protein into highly pure 7S globulin and 11S globulin comprising the
steps of: (a) extracting a solution containing soybean and water to obtain a
soybean milk; (b) adjusting the pH of the soymilk to a pH of 5.8 and
centrifuging to separate a 7S globulin-containing soluble fraction and a 11S
globulin-containing insoluble fraction; (c) adjusting the pH of the soluble
fraction to a pH of 4.9 and centrifuging to obtain a precipitated curd (i.e., an
insoluble fraction); (d) hydrating and neutralizing the precipitated curd to obtain
a 7S globulin-rich fraction; and (e) spray-drying the hydrated precipitated curd
to obtain 7S globulin-rich fractionated soybean protein (Ans. 3, citing Ishikawa
¶¶ 33, 49 (Examples 1 and 5)). The Examiner also finds that Ishikawa does not
disclose the specific processes recited in the claim for generating the soybean
milk (id.).
The Examiner further finds that Albrecht teaches that it was known in the
art to cook soybeans to inactivate growth inhibitors (such as urease enzyme) by
subjecting whole soybeans to atmospheric steam for a period of 15 minutes,
which the Examiner indicates corresponds to a “wet heating treatment” as set
forth in claim 9 (Ans. 4). The Examiner concludes that it would have been
obvious to one of ordinary skill in the art to have treated Ishikawa’s raw
soybean material with atmospheric steam as taught by Albrecht for the purpose
of inactivating growth inhibitors in the soybean material and to attain the full
nutritive value of the material (id.). The Examiner also determines that “[g]iven
[that] Albrecht . . . teach[es] a method of preparing a processed soybean
substantially similar to that presently claimed, intrinsically the treated soybean
would display a PDI of not less than 40 and less than 80 . . . and the lipophilic
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protein would be selectively water-insolubilized among protein contained in the
wet heat treated soybean” (id.).
In response, Appellants argue that the Examiner erred in finding that
Albrecht teaches the processed soybean disclosed in the first step of claim 9
(Appeal Br. 17). In support of this position, Appellant further argues that
(1) the Examiner erred in finding that Albrecht’s cooked soybean inherently has
a PDI in the claimed range of 40–80 (Appeal Br. 18–19), (2) the Examiner
erred in finding that Albrecht’s cooked soybean inherently has a lipophilic
protein which is selectively water-insolubilized (Appeal Br. 19–20); and (3) the
Examiner erred in finding that Albrecht’s soybean processing method is
“substantially similar” to the processing method described in claim 9 (Appeal
Br. 20–25).
After consideration of the evidence of record, and the arguments set forth
by Appellants in the Appeal Brief and the Reply Brief, we reverse the rejections
of the claims. In particular, we find that the Examiner has not adequately
established that the prior art inherently discloses the use of processed soybean
material with a PDI of not less than 40 and less than 80, and selectively water-
insolubilized lipophilic proteins.
The principles of inherency may be applied in an obviousness analysis.
See, e.g., Alcon Research, Ltd. v. Apotex Inc., 687 F.3d 1362, 1369 (Fed. Cir.
2012). The inherent result must inevitably result from the disclosed steps.
Bettcher Indus., Inc. v. Bunzl USA, Inc., 661 F.3d 629, 639 (Fed. Cir. 2011).
“Inherency…may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not
sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (quoting
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Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991))
(emphasis added).
In this instance, the Examiner finds that soybean material prepared
according to the steaming process disclosed by Albrecht would inherently
display the claimed PDI and lipophilic protein solubility because Albrecht’s
steaming is “substantially similar” to the claimed process (Ans. 7). The
Examiner finds that Albrecht’s process is substantially similar because Albrecht
discloses subjecting whole soybean to atmospheric steam at 100°C for a period
of 15 minutes, and the claimed wet heating process is described in the present
Specification as including using a humidifying and heating device, a steaming
device, a steam heating device, or similar devices (id., citing Specification,
p. 29, ll. 15–17).
However, Appellants persuasively argue that while Albrecht’s steaming
process may result in a processed soybean material having the claimed
properties, it may also result in a processed soybean material not having the
claimed properties because the material would be subjected to a high
temperature (i.e., 100°C) (Appeal Br. 20–21; Reply Br. 9). In particular,
Appellants note that the use of Albrecht’s steaming process on a small quantity
of soybeans with a large quantity of steam could result in a soybean temperature
of 100°C (Reply Br. 9). As evidenced by the Yamanuchi reference made of
record by Appellants,4 subjecting soybean material to high temperatures results
in highly denatured soybean material, which would not have the claimed PDI
range (Appeal Br. 23, citing both Yamanuchi and Albrecht, FIG. 3).

4 Yamanuchi et al., “Science of soybean” (1992) (partial English translation
provided by Appellants and included in Evidence Appendix to Appeal
Brief).
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In view of all of the evidence of record, we find that the Examiner has
not established that Albrecht’s steaming process would inevitably result in a
soybean material having the claimed properties. Accordingly, the Examiner has
not established that the prior art discloses, either explicitly or inherently, a
soybean material having the claimed properties. Bettcher, 661 F.3d at 639.
We conclude that the Examiner has not shown that the cited prior art
references would have made the claimed process obvious to a person of skill in
the art, and reverse the rejection of claim 9.5 Because independent claim 29 and
each of the dependent claims also include the limitations reciting that the
processed soybean material has a PDI of not less than 40 and less than 80, and
selectively water-insolubilized lipophilic proteins, we also reverse the rejections
of those claims.
CONCLUSION
For the foregoing reasons, we REVERSE the rejection of claims 9,
12–15, 27, 29 and 38 under 35 U.S.C. § 103(a) as being unpatentable over
Ishikawa in view of Albrecht.
REVERSED

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5 We need not and do not address the other arguments set forth by
Appellants.