WhiteWave Services, Inc.Download PDFPatent Trials and Appeals BoardNov 3, 20202019006927 (P.T.A.B. Nov. 3, 2020) Copy Citation 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. 14/942,480 11/16/2015 Neal Allan Bringe 082170.0181 7935 5073 7590 11/03/2020 BAKER BOTTS L.L.P. 2001 Ross Avenue, Suite 900 Dallas, TX 75201 EXAMINER GEORGE, PATRICIA ANN ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 11/03/2020 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): PTOmail1@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NEAL ALLAN BRINGE Appeal 2019-006927 Application 14/942,480 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the Examiner’s decision to reject claims 1–10. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as WhiteWave Services, Inc. Appeal Brief dated April 9, 2019 (“Appeal Br.”) 2. Appeal 2019-006927 Application 14/942,480 2 CLAIMED SUBJECT MATTER The present application generally relates to a method of making soy- based food products (e.g., soymilk) with improved taste characteristics. Specification dated Nov. 16, 2015 (“Spec.”) 1. Conventional soy-based food products may have a “beany” or cereal-like taste that is considered undesirable. Id. The Specification teaches that “[o]ne indicator of lipid oxidation may include hexanal levels in the soy extract used to create the soy-based food products.” Id. Claim 1 is illustrative of the subject matter on appeal and is reproduced below with certain limitations bolded for emphasis: 1. A method, comprising: adding a plurality of soybeans to an extractor, the soybeans having an average protein:oil ratio of greater than 2.3; heating the soybeans; removing hulls from the plurality of soybeans; and grinding the plurality of soybeans with water at a temperature between 180 °F and 190 °F to yield an aqueous soy extract having hexanal levels of less than 50 parts per billion (ppb). Appeal Br. (Claims App. A-1) (reformatted for clarity) Appeal 2019-006927 Application 14/942,480 3 REFERENCES The Examiner relies upon the following prior art: Name Reference Date Clatfelter et al. (“Clatfelter”) US 4,209,541 June 24, 1980 Johnson et al. (“Johnson”) US 4,409,256 Oct. 11, 1983 Marshall et al. (“Marshall”) US 4,678,673 July 7, 1987 Zemel et al. (“Zemel”) US 4,906,482 Mar. 6, 1990 Gottemoller US 2004/0197463 A1 Oct. 7, 2004 Robinson et al., Development of Soy-Based Foods of High Nutritive Value for Use in the Philippines, Cornell Univ. Dept. of Food Science and Technology, Semi-Annual Scientific Progress Report (Jan.–June 1969) (“Cornell”) Yan Zhang et al., Off-Flavor Related Volatiles in Soymilk As Affected by Soybean Variety, Grinding, and Heat-Processing Methods, J. Agric. Food Chem. 60, 7457–7462 (2012) (“Zhang”) Eun-Young Hwang et al., A genome-wide association study of seed protein and oil content in soybean, BMC Genomics, 15:1 (2014) (“Hwang”) Z. Berk, Technology of Production of Edible Flours and Protein Products from Soybeans, Food and Agriculture Organization of the United Nations, Food and Agriculture Services Bulletin No. 97 (1992) (“FAO”) REJECTIONS The Examiner maintains the following rejections: 1. Claims 1 and 4–6 are rejected under 35 U.S.C. § 103 as being unpatentable over Gottemoller, in view of Cornell, Zhang, FAO, and Hwang. Non-Final Office Action dated Oct. 12, 2018 (“Non-Final Act.”) 4–11. Appeal 2019-006927 Application 14/942,480 4 2. Claims 2 and 3 are rejected under 35 U.S.C. § 103 as being unpatentable over Gottemoller in view of Cornell, Zhang, FAO, Hwang, and Marshall. Id. at 11–12. 3. Claim 7 is rejected under 35 U.S.C. § 103 as being unpatentable over Gottemoller in view of Cornell, Zhang, FAO, Hwang, and Clatfelter. Id. at 12–13. 4. Claims 8 and 10 are rejected under 35 U.S.C. § 103 as being unpatentable over Gottemoller in view of Cornell, Zhang, FAO, Hwang, and Zemel. Id. at 13–14. 5. Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over Gottemoller in view of Cornell, Zhang, FAO, Hwang, Zemel, and Johnson. Id. at 14–16. DISCUSSION Rejection 1. The Examiner rejects claims 1 and 4–6 as obvious over Gottemoller, in view of Cornell, Zhang, FAO, and Hwang. Non-Final Act. 4–11. In support of the rejection, the Examiner finds that Gottemoller teaches methods for processing soybeans that include hull removal and grinding steps. Id. at 5. The Examiner finds, however, that Gottemoller does not teach the temperature of the wet grind step (id. at 5), heating before dehulling (id. at 7), or that the soybeans used have an average protein:oil ratio of greater than 2.3 (id. at 8). The Examiner relies on Cornell as teaching a “hot water grind” and that Zhang teaches to grind with water having a temperature of 180.5 °F. Id. at 5–6. The Examiner further relies on FAO as teaching heating prior to Appeal 2019-006927 Application 14/942,480 5 dehulling. Id. at 7. The Examiner additionally relies on Hwang as teaching soybeans that have an average protein:oil ratio of at least 2.5. Id. at 8–9. Appellant argues that the rejection should be reversed because the references fail to teach several elements of claim 1. Appeal Br. 7–10. First, Appellant argues that the Examiner errs in finding that Hwang teaches soybeans having an average protein:oil ratio of greater than 2.3. Id. at 7–8. In the rejection, the Examiner cites to Table 3 of Hwang, reproduced below. Table 3 is titled “SNP loci associated with both seed protein and oil content.” Hwang 7. The Examiner directs us to Table 3 “where the total protein contents and oil contents of soybeans ̍120_T_C and '542_T_C equal the protein being greater than 2.5 times the oil content.” Non-Final Act. 8. The Examiner further directs us to the “Conclusions” section of Hwang which indicates that “[t]he chromosome regions defined in this study can be used for further analysis to identify the causal gene(s) as well as to identify DNA markers that can be used in selection to alter soybean seed protein and oil in a predictable manner.” Id. at 9 (citing Hwang 9). Appeal 2019-006927 Application 14/942,480 6 Appellant argues that “[a]lthough Hwang may disclose genetic markers related to protein and oil content, Hwang does not appear to specifically disclose a protein-to-oil ratio greater than 2.3.” Appeal Br. 7. Appellant further argues that the proposed combination would not yield a predictable result. Id. at 8. In the Answer, the Examiner asserts that Hwang “makes clear the claimed protein to oil ratio in Table 3, which show that methods of using soybeans (ab.) include soybeans having total protein contents that are greater than 2.5 times the oil content (see '120_ T_C and '542_ T_C).” Examiner’s Answer dated July 23, 2019 (“Ans.”) 19. The Examiner concludes, in part, that “it was known to use soy beans having a protein to oil ratio of greater than 2.5.” Ans. 19. In its Reply Brief, Appellant argues that it is unclear which data within Table 3 of Hwang is relied upon as teaching the claimed protein to oil ratio. Reply Brief dated Sept. 23, 2019 (“Reply Br.”) 4. Appellant further argues that, if the Examiner relies upon the mean protein and oil content associated with an SNP allele, “the Examiner has not explained how the T and/or C values associated with the SNP allele relate to the average protein:oil ratio of the soybean.” Id. We find this persuasive. An Examiner must provide more than conclusory statements to support an obviousness argument: “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner does not adequately describe how the information in Table 3 sets forth a basis for the stated findings regarding total protein and oil Appeal 2019-006927 Application 14/942,480 7 content. Nor does the Examiner explain how the information set forth in Table 3 relates to Hwang’s teaching that “protein and oil concentration are quantitative traits which are determined by the interaction among many genes with small to moderate genetic effects and their interaction with the environment.” Hwang 1. Further, the “Conclusions” section of Hwang appears to indicate that future research may “identify the causal gene(s) as well as to identify DNA markers that can be used in selection to alter soybean seed protein and oil in a predictable manner.” Hwang 9. There is no clear description of a soybean having the claimed ratio. Accordingly, the steps indicated in the “Conclusions” section amount to more than mere substitution of an art recognized equivalent. In view of the foregoing, Appellant has shown error in the rejection of claim 1 and claims 4–6 which depend therefrom. Appellant additionally argues that Zhang does not teach to grind the soybeans at a temperature between 180 °F and 190 °F so as to achieve the claimed level of hexanal. Appeal Br. 8–9. In response, the Examiner concedes that Zhang’s teachings include a vacuum process. Ans. 21. The Examiner determines, however, that the claims include the transition term “comprising” and do not exclude additional process steps. Ans. 21. We find this reasoning to be persuasive. Appellant additionally argues that the Examiner has not stated an adequate reason why one of ordinary skill in the art would have combined the teachings of the cited references. Appeal Br. 9–10. In the Non-Final Rejection, the Examiner sets forth certain bases for combination of the cited teachings. See Non-Final Act. 6 (regarding Appeal 2019-006927 Application 14/942,480 8 Gottemoller, Cornell, and Zhang), 7 (regarding FOA), 8 (regarding FOA), and 9 (regarding Hwang). Appellant argues that the references are directed to “markedly different problems and solutions” but does not assert any specific error with regard to any specific stated reason to combine. Appeal Br. 9–10. Accordingly, Appellant has not shown error in this regard. Rejections 2–5. The Examiner additionally rejects claims 2, 3, and 7–10 over Gottemoller, Cornell, Zhang, FAO, Hwang, and certain additional references. Non-Final Act. 11–16. Each rejection relies on Hwang as teaching the claimed protein:oil ratio. For the reasons set forth above, we determine that Appellant has shown error with regard to the disclosure of this limitation. Accordingly, the rejections of claims 2, 3, and 7–10 are reversed. Appeal 2019-006927 Application 14/942,480 9 CONCLUSION The Examiner’s rejections are reversed. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4–6 103 Gottemoller, Cornell, Zhang, FAO, Hwang 1, 4–6 2, 3 103 Gottemoller, Cornell, Zhang, FAO, Hwang, Marshall 2, 3 7 103 Gottemoller, Cornell, Zhang, FAO, Hwang, Clatfelter 7 8, 10 103 Gottemoller, Cornell, Zhang, FAO, Hwang, Zemel 8, 10 9 103 Gottemoller, Cornell, Zhang, FAO, Hwang, Zemel, Johnson 9 Overall Outcome 1–10 REVERSED Copy with citationCopy as parenthetical citation