Srinivasan Damodaran et al.

Patent Trials and Appeals Board

Oct 13, 2020

12861077 - (D) (P.T.A.B. Oct. 13, 2020)

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.
12/861,077 08/23/2010 Srinivasan Damodaran 09820.897-P090393US02 1351
60961 7590 10/13/2020
Intellectual Property Dept./DeWitt LLP
Wisconsin Alumni Research Foundation
2 East Mifflin Street,
Suite #600
Madison, WI 53703-2865
EXAMINER
WARDEN, JILL ALICE
ART UNIT PAPER NUMBER
1798
NOTIFICATION DATE DELIVERY MODE
10/13/2020 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):
IP-DOCKET@dewittllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SRINIVASAN DAMODARAN and AKSHAY ARORA
____________

Appeal 2019-001998
Application 12/861,077
Technology Center 1700
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s Non-Final Action2 rejecting claims 1, 2, 4, 5, 8, 9, 13, 15–17,
35, 41, and 44 under 35 U.S.C. § 103 as being unpatentable over at least the
basic combination of Fox (US 2009/0053368 A1, published Feb. 26, 2009),
Szuhaj (Bernard Szuhaj, Bailey’s Industrial Oil and Fat Products, vol. 3,
ch. 13, 366–368 (6th ed. 2005)), Eskin (N.A. Michael Eskin et al.,

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Wisconsin Alumni Research
Foundation as the real party in interest (Appeal Br. 2).
2 Non-Final Action mailed Sept. 19, 2017.
Appeal 2019-001998
Application 12/861,077

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Biochemistry of Foods, 546–547 (3rd ed. 2013)), and Conte (US 5,560,950,
issued Oct. 1, 1996).3
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is the only independent claim on appeal and is illustrative of
the claimed subject matter:
1. A method for removing compounds that cause off-flavors
in proteins, the method comprising:
treating a protein-containing solution comprising a
phospholipid with a phospholipase to yield a hydrolytic
byproduct of the phospholipid in the solution;
contacting the protein-containing solution with a
cyclodextrin for a time wherein the cyclodextrin binds to the
hydrolytic byproduct, thereby yielding a complex comprising
the cyclodextrin bound to the hydrolytic byproduct; and then
separating the complex from the protein-containing solution.
(Claims Appendix 1).
ANALYSIS
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of

3 The Examiner applied additional prior art of Schwartz (Larry Schwartz,
Diafiltration for Desalting or Buffer Exchange, Bioprocess Int’l, 43–44
(2003)) in a separate rejection of dependent claims 13 and 15–17 (Non-Final
Act. 6−8), as well as Mikaelian (US 2003/0215559 A1, published Nov. 20,
2003) in a separate rejection of claim 44 (Non-Final Act. 10, 11). A
discussion of these rejections is not necessary for the disposition of this
appeal. The Examiner also withdrew the § 103 rejection of claims 39 and 43
in the Answer (Ans. 9).
Appeal 2019-001998
Application 12/861,077

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obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
After review of the respective positions provided by Appellant and the
Examiner, we conclude that the preponderance of the evidence supports
Appellant’s position that the Examiner has not established a prima facie case
of obviousness for substantially the reasons set forth by Appellant in the
Briefs. Accordingly, we reverse the Examiner’s § 103 rejections of all the
claims on appeal.
Specifically, a preponderance of the evidence supports Appellant’s
position that the proposed modification of Fox to add the absorbent and
cyclodextrin of Conte and then separate out a cyclodextrin/absorbent/free
fatty acid as shown in Conte would be based on undue speculation and an
improper hindsight reconstruction for the reasons discussed by Appellant in
the Briefs (Appeal Br. 5−9; Reply Br. 2–6). A preponderance of the
evidence supports Appellant’s position that there is no apparent reason one
of ordinary skill in the art would have looked at the process of Conte to
reduce free fatty acids from used frying fat as the basis for modification of
Fox’s process to make a corn protein concentrate. The fact finder must be
aware “of the distortion caused by hindsight bias and must be cautious of
arguments reliant upon ex post reasoning.” KSR, 550 U.S. at 421 (citing
Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a
“temptation to read into the prior art the teachings of the invention in
issue”)). As pointed out by Appellant, Fox adds cyclodextrin as a
deodorizer and does not contemplate its separation from the corn protein
concentrate (e.g., Appeal Br. 4, 5; Reply Br. 4). The Examiner has not
adequately explained why one would have formed and then “separat[ed] the
Appeal 2019-001998
Application 12/861,077

4
[cyclodextrin hydrolytic byproduct] complex from the protein” as recited in
claim 1 in light of Fox’s teachings that the cyclodextrin is added as a
deodorizer. Indeed, the cyclodextrin may even be “added to the finished
CPC [protein] product” (e.g., Fox ¶ 46). The Examiner has not adequately
explained why the skilled artisan’s knowledge or inferences and creativity
would have supported the obviousness determination based on the teachings
of the applied references without undue speculation and/or an improper
hindsight reconstruction of Fox’s method.
The Examiner does not establish that any of the additional references
as applied in the § 103 rejections of claims 13, 15−17, and 44 cures these
deficiencies and/or otherwise provides another rationale that cures these
deficiencies.
Accordingly, we reverse the § 103 rejections of claims 1, 2, 4, 5, 8, 9,
13, 15–17, 35, 41, and 44 which all rely upon an impermissible hindsight
reconstruction of the method described in Fox based on Conte.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4, 5, 8,
9, 35, 41
103 Fox, Szuhaj,
Eskin, Conte
1, 2, 4, 5, 8,
9, 35, 41
13, 15–17 103 Fox, Szuhaj,
Eskin, Conte,
Schwartz
13, 15–17
44 103 Fox, Szuhaj,
Eskin, Conte,
Mikaelian
44
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Application 12/861,077

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1, 2, 4, 5, 8,
9, 13, 15–17,
35, 41, 44

The Examiner’s § 103 rejections of all the claims on appeal are
reversed.

REVERSED