Advanta International BV

Patent Trials and Appeals Board

Mar 23, 2022

2021004533 (P.T.A.B. Mar. 23, 2022)

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. 14/414,692 01/13/2015 Lucas Guillermo Pan ARSI-197 3399 93726 7590 03/23/2022 EPA - BOZICEVIC FIELD & FRANCIS LLP BOZICEVIC, FIELD & FRANCIS 201 REDWOOD SHORES PARKWAY SUITE 200 REDWOOD CITY, CA 94065 EXAMINER MCCLAIN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/23/2022 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): docket@bozpat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LUCAS GUILLERMO PAN, EDUARDO PEDRO DUBINSKY, MARTIN OSCAR GRONDONA, ANDRÉS DANIEL ZAMBELLI, and ALBERTO JAVIER LEON __________ Appeal 2021-004533 Application 14/414,692 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134 the final rejection of claims 1-4, 6, 7, and 9-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Oral arguments were heard in this appeal on March 9, 2022. We REVERSE. Appellant’s invention is directed to a process of intraesterification of fats (Spec. 1:3-6). The Specification discloses that during intraesterification 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 Advanta International BV (Appeal Br. 3). Appeal 2021-004533 Application 14/414,692 2 one or more types of triglycerides are modified by redistribution of the fatty acids between the triglycerides (Spec. 1:4-6). Claim 1 is illustrative: 1. A method for modifying one or more types of triglycerides in a single fat type, comprising subjecting a single oil or fat type selected from the group consisting of high stearic high oleic sunflower oil, high stearic high oleic soybean oil or olein fraction, high stearic high oleic rapeseed oil or olein fraction, and high stearic high oleic cottonseed oil or olein fraction, to an intraesterification process in which the fatty acids of the triglycerides constituting said single oil or fat type are randomly redistributed within said triglycerides and/or amongst said triglycerides of only said single oil or fat type to obtain an oil or fat with a modified solid fat content (SFC) profile. Appeal Br. 24 (Claims App.). Appellant appeals the following rejections: 1. Claims 1, 3, 4, 6, 7, 9, 10, and 12 are rejected under 35 U.S.C. § 102(b) as unpatentable over Floter (US 2003/0161934 A1; pub. Aug. 28, 2003) as evidenced by Hustedt (Interesterification of Edible Oils, 53 J. AM. OIL CHEMISTS’ SOC., 390-92 (June 1976)). 2. Claims 1-4, 6, 7, and 9-20 are rejected under 35 U.S.C. § 103(a) as unpatentable over Oonishi (US 2011/0039008 A1; pub. Feb. 17, 2011) in view of Floter as evidenced by Hustedt. FINDINGS OF FACT & ANALYSIS We review the appealed rejection for reversible error based on the arguments and evidence presented by Appellant. 37 C.F.R. § 41.37(c)(1)(iv) (2020); Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had failed to make a prima facie case, Appeal 2021-004533 Application 14/414,692 3 “it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). 35 U.S.C. § 102(b) Rejection Appellant argues the subject matter of claim 1 only (Appeal Br. 8- 16). Accordingly, claims 3, 4, 6, 7, 9, 10, and 12 will stand or fall with our analysis of the rejection of claim 1. The Examiner’s findings regarding Floter are located on pages 2 to 4 of the Final Action. The dispositive issue is whether Floter discloses performing an intraesterification on a single oil or fat type wherein a single oil or fat type is selected from the group consisting of high stearic high oleic sunflower oil, high stearic high oleic soybean oil or olein fraction, high stearic high oleic rapeseed oil or olein fraction, and high stearic high oleic cottonseed oil or olein fraction as recited in claim 1 (Appeal Br. 8-16). Appellant argues that Floter teaches using blends of oils and so does not teach intraesterification of a single oil or fat type (Appeal Br. 16). Appellant argues that intraesterification is an esterification reaction involving one single fat type whereas interesterification involves esterification of two or more fat types (Appeal Br. 9). Appellant argues interesterification involves rearranging fatty acids from the triglycerides of one oil type to the triglycerides of another oil type (Appeal Br. 10). Appellant argues that intraesterification involves rearranging fatty acids from one triglyceride in an oil to another triglyceride in the same oil type (Appeal Br. 10-13). Appellant argues that Floter’s enzymatic rearrangement recited in paragraph 20 refers to a form of interesterification (Appeal Br. Appeal 2021-004533 Application 14/414,692 4 14). Appellant argues that enzymatic interesterification involves two oil types where an enzyme causes the fatty acids of the triglycerides to exchange positions in the oils (Appeal Br. 14). Appellant cites to the Declaration of Andres Zambelli (Zambelli Declaration or Zambelli Decl.) as supporting that Floter teaches a blend of oils (Appeal Br. 14-16). Appellant contends that the Examiner’s reliance on “a vegetable oil” in Floter’s paragraph 5 for the finding that Floter teaches a single oil is incorrect because interesterification requires two or more oils (Appeal Br. 15). The Examiner finds that Floter teaches in paragraph 5 that suitable hardstock fats are usually obtained by “one or more blending, fractionation, hydrogenation[,] and interesterification treatments upon a vegetable oil” (emphasis added) (Final Act. 2). The Examiner finds that “a liquid vegetable oil” implies a single oil (Final Act. 2). The Examiner further finds that Floter teaches in paragraph 20 that when modification of the natural starting oils is needed, preferably a natural treatment is used (Final Act. 2; Ans. 14). The Examiner finds that “starting oils” is interpreted as a single oil or fat type (Ans. 14). The Examiner finds that Floter may not prefer to use enzymatic rearrangement to modify the starting oils, but that does not constitute a teaching to not use enzymatic rearrangement as a non-preferred embodiment (Ans. 14). The Examiner finds that Floter teaches in paragraph 31 blending two sunflower oils, which constitute a single oil or fat type (Ans. 14). The Zambelli Declaration states that paragraph 31 in Floter clearly teaches mixing two different sunflower oil types (Zambelli Decl. 3-4). The Specification defines “fats” as “a mixture of triglycerides” and the terms fat and oil are used interchangeably (Spec. 6:19-22; 31-33). The phrase “a fat” Appeal 2021-004533 Application 14/414,692 5 or “one fat” is defined as “one oil or fat type, or [a] single oil or fat type and not . . . a combination of different oil or fat types” (Spec. 5:29-32). The Specification does not formally define what is meant by fat type, but the Specification describes that fat types relate to fatty acid saturations and unsaturations in the fat (Spec. 7:6-13). With this understanding of what constitutes a single oil and fat type, Floter’s paragraph 31 disclosure of mixing high stearic high oleic sunflower oil and a high stearic sunflower oil constitutes a mixture of two different types of fats/oils. Floter’s high stearic high oleic sunflower oil and the high stearic sunflower oil include different fatty acids and thus constitute different oil or fat types as described in Appellant’s Specification. The Examiner’s reliance on Floter’s paragraph 16 disclosure of high stearic, high oleic sunflower seed oil must be taken in context with Floter’s full disclosure. Specifically, paragraph 16 further discloses that such fats can be obtained by blending high stearic vegetable oils. Moreover, Floter’s paragraph 13 discloses blending two unprocessed natural vegetable oils to obtain the desired fats. Thus, Floter’s reference to using high stearic, high oleic sunflower seed oil in paragraph 16 is understood to disclose that the high stearic, high oleic sunflower seed oil is a blend of oils. The Examiner relies on Floter’s paragraph 5 as teaching performing interesterification on “a vegetable oil” (Final Act. 2). The Examiner further finds that paragraph 20 of Floter discloses a non-preferred embodiment of using enzymatic rearrangement on the “starting oil,” which would include a single oil or fat type (Ans. 14). Appellant’s Specification discloses that intraesterification may be performed by using an enzymatic process or chemical reactions (Spec. 7: Appeal 2021-004533 Application 14/414,692 6 21-29). The chemical reactions include using catalysis by sodium methoxide (Spec. 7:26-27). In light of this disclosure, it appears that Floter’s non-preferred use of enzymatic rearrangement may be a form of intraesterification if performed on a single oil or fat type. However, Floter’s paragraph 20 disclosure refers to natural “starting oils” and not “[a] starting oil” as found by the Examiner. Accordingly, we find Floter does not disclose within the meaning of 35 U.S.C. § 102(b) that enzymatic rearrangement is performed on a single oil or fat type. The Examiner’s reliance on Floter’s paragraph 5, which discloses “interesterification treatments upon a liquid vegetable oil,” does not dictate a different result. On this record, the Examiner has not established that Floter’s interesterification in paragraph 5 is synonymous with intraesterification as defined in Appellant’s Specification. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (examiner bears the initial burden of presenting a prima case of unpatentability). Notably, the mere presence of the phrase “a liquid vegetable oil,”2 in the context of Floter’s disclosure, does not exclude a vegetable oil comprising two or more oil types. See Floter ¶ 16 (using the phrase “high stearic, high oleic sunflower seed oil” to describe a blend of vegetable oils (emphasis added)). We reverse the Examiner’s § 102(b) rejection of claims 1, 3, 4, 6, 7, 9, 10, and 12 over Floter as evidenced by Hustedt. 35 U.S.C. § 103(a) Rejection The Examiner’s findings and conclusions regarding Oonishi, Floter, and Hustedt are located on pages 4 to 7 of the Final Action. The Examiner 2 Floter ¶ 5 (emphasis added). Appeal 2021-004533 Application 14/414,692 7 finds that Oonishi teaches subjecting a single oil to transesterification (interesterification) in paragraph 50 (Final Act. 4). The Examiner finds that Oonishi teaches that transesterification is performed using enzymes or chemically using sodium methoxide (Final Act. 5). The Examiner finds that Oonishi does not disclose using a single oil or fat type that is selected from the group consisting of high stearic high oleic sunflower oil, high stearic high oleic soybean oil or olein fraction, high stearic high oleic rapeseed oil or olein fraction, and high stearic high oleic cottonseed oil or olein fraction as claimed (Final Act. 5-6). The Examiner relies on Floter to teach treating a single oil, which may include a high stearic, high oleic sunflower seed oil using an interesterification process (Final Act. 6). The Examiner concludes it would have been obvious to use Floter’s high stearic high oleic sunflower seed oil as the oil in Oonishi’s process that transesterifies the oil because Oonishi discloses subjecting any oil such as sunflower oil, soybean oil, rapeseed oil, cottonseed oil, as well as fractions thereof or oils having high oleic acid content, to transesterification (interesterification) (Final Act. 6). The Examiner explains that selection of known material based on its suitability for its intended use support a prima facie obviousness determination (Final Act. 6). Appellant argues that Oonishi teaches transesterification of the oil(s) which is not the same as the claimed intraesterification (Appeal Br. 18). Appellant argues that transesterification is a process in which glyceride reacts with an alcohol in the presence of a catalyst forming fatty acid alkyl esters and an alcohol (Appeal Br. 18). Appellant argues that neither Oonishi nor Floter teach the intraesterification process performed on a single oil or fat type as recited in Appellant’s claim 1 (Appeal Br. 20). Appellant argues Appeal 2021-004533 Application 14/414,692 8 that Hustedt is silent about intraesterification and only discloses interesterification (Appeal Br. 20). The Examiner has not established that Oonishi’s transesterification is the same as the claimed intraesterification as it is described on page 7 of the Specification. The Examiner finds that Oonishi teaches enzymatic or chemical transesterifications (Final Act. 5). The Examiner, however, does not explain how transesterification is the same as the recited intraesterification in claim 1. Appellant has shown that transesterification has a particular chemical meaning, which appears different than the intraesterification described on page 7 of the Specification. The Examiner’s findings regarding Floter are problematic for the reasons discussed above with regard to the § 102(b) rejection over Floter. We reverse the Examiner’s § 103(a) rejection of claims 1-4, 6, 7, and 9-20 over Oonishi in view of Floter as evidenced by Hustedt. CONCLUSION The decision of the Examiner is REVERSED. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 4, 6, 7, 9, 10, 12 102(b) Floter, Hustedt 1, 3, 4, 6, 7, 9, 10, 12 1-4, 6, 7, 9-20 103(a) Oonishi, Floter, Hustedt 1-4, 6, 7, 9-20 Overall Outcome 1-4, 6, 7, 9-20 REVERSED