ARLA FOODS AMBA

Patent Trials and Appeals Board

Mar 1, 2022

2021001233 (P.T.A.B. Mar. 1, 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. 14/763,141 07/23/2015 Jesper CHRISTENSEN GUARD-35891.252 9275 72960 7590 03/01/2022 Casimir Jones, S.C. 2275 Deming Way Ste 310 Middleton, WI 53562 EXAMINER MCCLAIN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/01/2022 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): docketing@casimirjones.com pto.correspondence@casimirjones.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JESPER CHRISTENSEN and HANS HENRIK HOLST Appeal 2021-001233 Application 14/763,141 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 5, 7, 8, 10, 11, and 14-26. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Arla Foods amba. Appeal Br. 1. Appeal 2021-001233 Application 14/763,141 2 CLAIMED SUBJECT MATTER The claims are directed to a method of producing beta-casein- containing compositions and products using controlled microfiltration. Claim 1; Spec. 1:7-10. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of producing a beta-casein-containing composition, the method comprising the steps of: a) pre-heating a milk by adjusting it to a pre-heating temperature in the range of 20-60 degrees C and with a holding time in the range of 1 minute - 1 hour, thereby providing a warm milk, b) subjecting the warm milk to a first microfiltration at a first microfiltration temperature using a filter that retains at least a substantial fraction of casein micelles but allows for the passage of milk serum protein, thereby providing a first microfiltration permeate and a first microfiltration retentate, c) subjecting the first microfiltration retentate to a first microfiltration-diafiltration at a first microfiltration-diafiltration temperature, wherein (i) at least part of the microfiltration- diafiltration involves the use of a first diluent having Ca2+ concentration of at least 0.01 g/kg, and (ii) the first microfiltration retentate comprises at least 92% (w/w) casein relative to the total amount of protein of the first microfiltration retentate; d) adjusting the temperature of the first microfiltration retentate to a cold temperature in the range of 0-15 degrees C and keeping the temperature of the first microfiltration retentate within that range for a duration of at least 0.5 hour, thereby obtaining a cooled first composition, e) subjecting the cooled first composition to a second microfiltration, thereby obtaining a second microfiltration retentate and a second microfiltration permeate, which second microfiltration permeate is enriched with respect to beta-casein, f) optionally, subjecting the second microfiltration retentate to a second microfiltration-diafiltration, and Appeal 2021-001233 Application 14/763,141 3 g) optionally, subjecting the second microfiltration permeate to one or more further purification or concentration steps, thereby providing the beta-casein-containing composition. Appeal Br. 9 (Claims App.) (emphasis added). OPINION The sole rejection on appeal rejects claims 1, 4, 5, 7, 8, 10, 11, and 14-26 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Padt,2 Lindau,3 and O’Mahony.4 Non-Final Act.5 3-9. We need only discuss claim 1. Independent claim 1 requires that “at least part of the microfiltration- diafiltration involves the use of a first diluent having Ca2+ concentration of at least 0.01 g/kg.” Appeal Br. 9 (Claims App.). The dispositive issue on appeal is whether the Examiner provided the requisite factual support in finding that the prior art teaches or suggests the claimed Ca2+ concentration of the diluent. See Non-Final Act. 3-4. Because the Examiner failed to do so on this record, we reverse the rejection. In rejecting claim 1, the Examiner acknowledges Padt fails to explicitly teach that at least part of a first microfiltration-diafiltration involves the use of a first diluent having a concentration of Ca2+ of at least 0.01 g/kg. Non-Final Act. 6; Ans. 11. The Examiner does not make a specific finding regarding the Ca2+ concentration in the Office Action, but in 2 Padt, NL 2006662, issued October 29, 2012. 3 Lindau, WO 02/069724 A1, published September 12, 2002. 4 O’Mahony, US 2007/0104847 A1, published May 10, 2007. 5 We refer to the Non-Final Office Action dated December 12, 2019, from which this appeal is taken. Appeal 2021-001233 Application 14/763,141 4 the Answer relies on O’Mahony for this limitation. Ans. 11 (citing O’Mahony ¶¶ 47, 49, 51, Abstract). Appellant argues O’Mahony fails to cure the deficiency of Padt, because neither Padt nor O’Mahony teaches that at least part of a first microfiltration-diafiltration involves the use of a first diluent having a concentration of Ca2+ of at least 0.01 g/kg. Appeal Br. 4, 5. We agree. The Examiner’s rejection relies on O’Mahony’s Abstract and paragraphs 47, 49, and 51 without any explanation as to how the ordinarily skilled artisan would have gleaned from these disclosures the claimed diluent concentration of Ca2+. Ans. 11. We have reviewed these paragraphs and find no discussion of calcium ion concentration. Moreover, the Examiner fails to adequately explain how O’Mahony expressly or inherently teaches or suggests the claimed diluent concentration of Ca2+. Because the Examiner’s rejection lacks the requisite factual support, it cannot be sustained. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies” in the cited references.). CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-001233 Application 14/763,141 5 DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 5, 7, 8, 10, 11, 14-26 103(a) Padt, Lindau, O’Mahony 1, 4, 5, 7, 8, 10, 11, 14-26 REVERSED