Carder, Gary et al.

Patent Trials and Appeals Board

Oct 30, 2019

15077758 - (D) (P.T.A.B. Oct. 30, 2019)

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.
15/077,758 03/22/2016 Gary Carder 2189-292455 2311
23644 7590 10/30/2019
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/30/2019 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY CARDER, ROBERT E. CHATEL, YONGSOO CHUNG,
JUSTIN A. FRENCH, and WESLEY TWOMBLY
Appeal 2019-001196
Application 15/077,758
Technology Center 1700
Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
SHELDON M. MCGEE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 20–22, 25, 28–30, 32, 33, 35, and 37–42.3
We REVERSE.

1 This Decision includes citations to the following documents: Specification
filed Mar. 22, 2016 (“Spec.”); Final Office Action dated Jan. 31, 2018
(“Final”); Appeal Brief filed July 2, 2018 (“Appeal Br.”); Examiner’s
Answer dated Oct. 16, 2018 (“Ans.”); and Reply Brief filed Nov. 21, 2018
(“Reply Br.”).
2 We use the word “Appellant” to refer to the “Applicant” as defined in 37
C.F.R. § 1.42(a). The Appellant, and the real party in interest, is The Quaker
Oats Company. Appeal Br. 2.
3 We have jurisdiction under 35 U.S.C. § 6(b).
Appeal 2019-001196
Application 15/077,758

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CLAIMED SUBJECT MATTER
The invention relates to a “food grade . . . composition comprising at
least a portion of a grain and/or at least a portion of a pulse with hydrolyzed
starch.” Spec. ¶ 2. A goal of the invention is to provide a partially
hydrolyzed grain that contains the principal nutrients (i.e., starch, fat,
protein, dietary fiber, beta-glucan, and sugar) in approximately the same
relative proportions as in the original grain, such that the partially
hydrolyzed grain maintains its whole grain status. Id. ¶ 24. According to the
Specification, because “the average molecular weight of starch (e.g.,
amylopectin) in whole grains varies widely across the various types of whole
grains . . . , a shift in starch moieties from higher molecular weight to lower
molecular weight does not alter whole grain status if the total starch content
remains the same.” Id.
Independent claim 20, reproduced below, is illustrative of the claimed
subject matter:
20. A composition comprising:
at least a portion of pulse;
wherein the at least a portion of pulse comprises
gelatinized, hydrolyzed starch;
wherein an average molecular weight of the gelatinized,
hydrolyzed starch is 0.60 to 0.07 times an original average
molecular weight of the starch;
wherein the original average molecular weight of the
starch is an average molecular weight of the starch before the
gelatinization and the hydrolysis that provides the gelatinized,
hydrolyzed starch;
wherein a mass ratio of starch to protein in the at least a
portion of pulse is equal to an original mass ratio of starch to
protein in the at least a portion of pulse within a tolerance of
+/- 10%;
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wherein the original mass ratio of the starch to protein is
a mass ratio of starch to protein in the at least a portion of pulse
before the gelatinization and the hydrolysis that provides the
gelatinized, hydrolyzed starch;
wherein the mass ratio of starch to protein in the at least a
portion of pulse is equal to the mass of starch divided by the
mass of protein in the at least a portion of pulse;
wherein the original mass ratio of starch to protein in the
at least a portion of pulse is equal to the mass of starch divided
by the mass of protein in the at least a portion of pulse before
the gelatinization and the hydrolysis that provides the
gelatinized, hydrolyzed starch.
Appeal Br. 25 (Claims Appendix).
REFERENCES
The Examiner relies on the following prior art as evidence of
unpatentability:
Fritze US 4,233,322 Nov. 11, 1980
Strozzi US 2010/0330230 A1 Dec. 30, 2010

REJECTION
Claims 20–22, 25, 28–30, 32, 33, 35, and 37–42 are rejected under 35
U.S.C. § 103(a) as unpatentable over Fritze in view of Strozzi. Final 3.
The Examiner has withdrawn the indefiniteness rejection of claim 29
under 35 U.S.C. § 112. Advisory Action mailed May 2, 2018, 2.
OPINION
Claim 42, the only other independent claim on appeal, recites
limitations similar to those in claim 20. See Appeal Br. 30 (Claims
Appendix), 23 (“Claim[] 42 is similar to claim 20, although claim 42 recites
‘an average molecular weight of the gelatinized, hydrolyzed starch is 0.80 to
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0.07 times an original average molecular weight of the starch.’”).
Accordingly, we focus our discussion on claim 20.
The Examiner relies solely on Fritze for a teaching or suggestion of
the invention recited in claim 20. See Ans. 9. In the Answer, the Examiner
further clarifies that the obviousness rejection is not based on a finding that
Fritze’s composition necessarily or inherently includes any of the features
recited in claim 20. Id. at 13–14.
The Appellant argues that the Examiner fails to identify sufficient
evidence to support a determination that Fritze discloses or suggests a
composition as claimed, in particular, a composition “wherein a mass ratio
of starch to protein in the at least a portion of pulse is equal to an original
mass ratio of starch to protein in the at least a portion of pulse within a
tolerance of +/- 10%” (claims 20, 42). See Appeal Br. 16. The Appellant
directs us to Specification paragraph 160 and Fritze column 1, lines 57–60 in
support of its argument. Appeal Br. 16–17.
Specification paragraph 160 discloses that if
the mass of starch is unchanged (e.g., because the hydrolysis is
controlled and stopped before starch is converted to
monosaccharides, disaccharides, simple sugars, and/or non-
starch molecules), then the mass ratio of starch to other
components will also remain unchanged or substantially or
essentially unchanged. Accordingly, a small tolerance can be
achieved for the change in the mass ratios of any one
component relative to another component (e.g., protein) in at
least a portion of pulse and/or grain.
From Specification paragraph 160, one of ordinary skill in the art would
understand the above-quoted, claim 20 wherein clause as requiring that the
portion of pulse containing gelatinized, hydrolyzed starch, comprises the
same or substantially the same mass fraction of starch that was contained in
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that portion of pulse prior to hydrolysis. In other words, the ordinary artisan
would understand that essentially none of the “monosaccharides,
disaccharides, simple sugars, and/or non-starch molecules” in the claimed
composition resulted from the hydrolysis of starch in the pre-hydrolyzed
pulse material. See Appeal Br. 16 (quoting Spec. ¶ 160); see also Spec. ¶ 65.
As explained in the Specification, “if the principal nutrients (i.e., starch, fat,
protein, dietary fiber, beta-glucan, and sugar) are present in approximately
the same relative proportions for a partially hydrolyzed grain and the
original grain, it can be assumed that the processed grain (e.g., the partially
hydrolyzed grain) maintains its whole grain status.” Spec. ¶ 24.
Fritze discloses a composition comprising a pulse material containing
hydrolyzed starch that differs from the pre-hydrolysis pulse material in that
“the addition of α-amylase causes a part of the starch in the legumes to
decompose to maltose and dextrines . . . to eliminate the bitter, raw taste.”
Fritze 1:57–60. Fritze discloses that “[t]he natural flavours of the legumes
are better conserved in the quick dissolving product,” and that “the structure
and viscosity of the product are considerably improved.” Id. at 1:63–64.
Thus, unlike claim 20, which requires essentially the same mass ratio of
starch to protein in the pre- and post-hydrolysis pulse material, Fritze
discloses the use of hydrolysis to convert a portion of the starch in the
original pulse material to a non-starch molecule, effectively reducing the
mass ratio of starch to protein in the partially hydrolyzed product.
The Examiner contends that although Fritze does not describe a
hydrolyzed product containing the same mass ratio of starch to protein
present in the pre-hydrolyzed material as recited in claim 20, achieving a
composition having the claimed mass ratio would have been a matter of
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routine optimization. Ans. 10. The Examiner finds that Fritze teaches that
the alpha-amylase concentration and reaction conditions are result-effective
variables, “[t]he result being the dispersibility, structure and viscosity of the
hydrolyzed product in aqueous media,” Ans. 7, and that the ordinary artisan
would have understood that the starch portion of a legume may be
hydrolyzed to any extent depending on the reactants and reaction conditions
to obtain any structure and viscosity of the final product, id. at 6.
The Appellant argues that although Fritze teaches that the relative
amounts of alpha-amylase and milled flour affect the amount of starch in the
legumes that decomposes to maltose and dextrines, Fritze does not disclose
or suggest that alpha-amylase concentration and reaction conditions may be
varied to limit the conversion of starch to non-starch molecules. Reply Br.
6–8; see Fritze 1:57–59. Fritze discloses that by adding alpha-amylase to
convert a portion of the starch to a non-starch molecule in order to eliminate
the bitter, raw taste of substances in the flour, the structure and viscosity of
the product are considerably improved. Fritze 1:59–63. However, Fritze
does not disclose or suggest that the addition of alpha-amylase alone, i.e.,
without effecting a conversion of a portion of the starch to a non-starch
molecule, improves the structure and viscosity of the product. As explained
by our reviewing court, “[a]bsent some additional reasoning, . . . [a] finding
that a skilled artisan would have arrived at the claimed invention through
routine optimization is insufficient to support a conclusion of obviousness.”
In re Stepan Co., 868 F.3d 1342, 1346 (Fed. Cir. 2017).
In summary, for the reasons discussed above, the Appellant has
argued persuasively that the Examiner erred reversibly in rejecting claim 20.
The Examiner’s rejection of dependent claims 21, 22, 25, 28–30, 32, 33, 35,
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and 37–41, as well as independent claim 42, is based on the same erroneous
findings. See generally Final 3–5. Therefore, we do not sustain the rejection
of claims 20–22, 25, 28–30, 32, 33, 35, and 37–42.

CONCLUSION
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
20–22, 25, 28–
30, 32, 33, 35,
37–42
103(a) Fritze,
Strozzi
20–22, 25,
28–30, 32,
33, 35, 37–42

REVERSED