DMK Deutsches Milchkontor GmbH

Patent Trials and Appeals Board

Jun 19, 2020

2019004338 (P.T.A.B. Jun. 19, 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.
14/839,202 08/28/2015 Sven-Rainer Döring 1507-125 1645
28249 7590 06/19/2020
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE 405
WOODBURY, NY 11797
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
usptomail@dilworthbarrese.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN-RAINER DÖRING
Appeal 2019-004338
Application 14/839,202
Technology Center 1700
Before ADRIENE LEPIANE HANLON, LILAN REN, and
MERRELL C. CASHION JR., Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 6, 7, 9–11, and 13–24. See Final
Act. 2, 10, 11, 12, 13. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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 “DMK DEUTSCHES
MILCHKONTOR GMBH.” Appeal Br. 4.
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CLAIMED SUBJECT MATTER
“The invention is in the field of dairy products and relates to a process
for the production of colourless vat milk as starting material for the
production of colourless cheese.” Spec. ¶ 2. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A process for the production of colourless vat milk,
comprising the steps of:
(a) subjecting vat milk to ultrafiltration using a membrane
having a pore size of about 1,000 to about 50,000 Dalton to
obtain a first pe1meate P1 and a first retentate R1;
(b) subjecting the first permeate Pl to a reverse osmosis
using a membrane having a pore size of about 10 to about 1,000
Dalton to obtain a second permeate P2 and a second retentate R2;
(c) treating the second retentate R2 with an adsorbent to
obtain a third retentate R2*; and
(d) combining the third retentate R2* with the first
retentate Rl and the second permeate P2.
Claims Appendix (Appeal Br. 23).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Nagasawa
Moeller
Carver
US 3,907,777
US 5,085,881
US 5,549,830
Sep. 23, 1975
Feb. 4, 1992
Aug. 27, 1996
Norris
Etzel
Holst
Tikanmaki
Tossavainen
US 2002/0001651 A1
US 2003/0026845 A1
US 2009/0092731 A1
US 2010/0055286 A1
US 2011/0059220 A1
Jan. 3, 2002
Feb. 6, 2003
Apr. 9, 2009
Mar. 4, 2010
Mar. 10, 2011

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REJECTIONS
Claims 1, 2, 9, 11, 13, 14, 16–18, 22, and 24 are rejected under 35
U.S.C. § 103 as being unpatentable over Tossavainen in view of Nagasawa,
Moeller, and Carver. Final Act. 2.
Claims 3 and 19 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and
Tikanmaki. Final Act. 10.
Claims 6 and 20 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and
Holst. Final Act. 11.
Claims 7 and 21 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and
Etzel. Final Act. 12.
Claims 10 and 23 are rejected under 35 U.S.C. § 103 as being
unpatentable over Tossavainen in view of Nagasawa, Moeller, Carver, and
Koizumi. Final Act. 13.
Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable over
Tossavainen in view of Nagasawa, Moeller, Carver, and Norris. Final Act.
13.

OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf. Ex parte Frye, 2010 WL 889747, *4 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
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the alleged error in the examiner’s rejections.”)). After having considered
the evidence presented in this Appeal and each of Appellant’s contentions,
we are not persuaded that reversible error has been identified, and we affirm
the Examiner’s § 103 rejections for the reasons expressed in the Final Office
Action and the Answer. We add the following primarily for emphasis.
Claim 12
In rejecting claim 1, the Examiner finds that the prior art teaches or
suggests every recited step. Final Act. 2–3. Appellant does not dispute that
these steps are known in the art but argues instead that “none of the
references cited by the Examiner relates to the process recited in Appellant’s
claims.” Appeal Br. 15. More specifically, Appellant argues that
Tossavainen is non-analogous art because it “is directed to the production of
a lactose-free milk product” and “do[es] not even generally relate to a
process of producing colorless vat milk by removing riboflavin . . . .” Id. at
15, 16.
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of endeavor,
regardless of the problem addressed, and (2) if the reference is
not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem
with which the inventor is involved.

In re Clay, 966 F.2d 656, 658–59 (Fed. Cir. 1992).
Appellant’s argument does not apply these criteria to address the
Examiner’s findings and is therefore unpersuasive to show that the reference

2 Appellant does not argue separately the patentability of any of claims 2, 9,
11, 13, 14, 16–18, 22, and 24 and they stand or fall with claim 1. See Appeal
Br. 14–18; see also 37 C.F.R. § 41.37(c)(1)(vii).
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is non-analogous. Appellant’s argument is unpersuasive because it does not
address – and does not identify error in – the Examiner’s finding that the
claims at issue are in the same field of endeavor as Tossavainen. Compare
Appeal Br. 15–16, with Final Act. 15 (finding that Appellant’s field of
endeavor is milk component separation processes). We further note that
“KSR . . . directs us to construe the scope of analogous art broadly,” stating
that “familiar items may have obvious uses beyond their primary purposes,
and a person of ordinary skill often will be able to fit the teachings of
multiple patents together like pieces of a puzzle.” Wyers v. Master Lock Co.,
616 F.3d 1231, 1238 (Fed. Cir. 2010). Appellant’s argument that
Tossavainen does not solve the same problem as the inventor here does not
show sufficiently that Tossavainen is non-analogous art. Appeal Br. 15.
Appellant’s arguments with regard to the remaining references are
likewise unpersuasive for failing to analyze whether the references are from
the Appellant’s field of endeavor and reasonably pertinent to the problem
with which the Appellant is involved. See Appeal Br. 17 (arguing instead
that Nagasawa “relate[s] to the production of white lactose from whey” and
does not “relate to a process of producing colorless vat milk”), 17 (arguing
instead that Moeller does not “relate to a process of producing colorless vat
milk”), 18 (arguing instead that Carver’s system “is completely different
from the system subjected to reverse osmosis in the process” at issue).
Appellant also argues, without elaboration, that a skilled artisan would
not have combined these references. Appeal Br. 16, 17. We are not
persuaded first and foremost because such bare assertions do not serve as
persuasive arguments for patentability. See Microstrategy Inc. v. Business
Objects Am., 238 F. App’x 605, 610 (Fed. Cir. 2007) (“The recitation of the
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applicable law, however, does not prevent the waiver of an argument unless
that recitation is accompanied by an explanation of how the law applies to
the facts of the particular case.”). We are not persuaded also because
Appellant’s arguments do not address the Examiner’s rationale in support of
the rejection. Compare Appeal Br. 16, 17, with Final Act. 3–4 (explaining,
for example, that a skilled artisan would have combined Moeller and
Nagasawa with Tossavainen based on Tossavainen’s teaching at paragraphs
14, 15, 60, and 62, the Nagasawa’s teaching 1:16–22 and 2:44–54, as well as
Moeller’s teaching at 1:25–31).
The rejection of claims 1, 2, 9, 11, 13, 14, 16–18, 22, and 24 is
sustained as a result.
Claims 7 & 21
Claim 7 depends from claim 1 and additionally recites “wherein the
reverse osmosis (step b) is carried out at a temperature in the range from
about 10 to about 55°C.” Claim 21 depends from claim 17 (which recites the
identical steps (a) to (d) as claim 1) and recites the same.
The Examiner cites Etzel for the teaching that reverse osmosis may
take place at “temperatures less than 40°C.” Final Act. 12 (citing Etzel ¶ 4).
Appellant, on the other hand, argues that Etzel “criticize[s] a variety of
isolation techniques such as reverse osmosis” and therefore teaches away
from the recited reverse osmosis step. Appeal Br. 18.
Under the proper legal standard, a reference will teach away
when it suggests that the developments flowing from its
disclosures are unlikely to produce the objective of the
applicant’s invention. A statement that a particular combination
is not a preferred embodiment does not teach away absent clear
discouragement of that combination.

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Syntex (U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005)
(citations omitted). In this case, Etzel states that processes such as reverse
osmosis usually result in about 80% purity in protein isolation. Etzel ¶ 8
(cited in Appeal Br. 18). Etzel also states that such “techniques also change
the protein profile of the resulting isolate so that it no longer mimics that of
the original milk product.” Etzel ¶ 8 (cited in Appeal Br. 18).
The claim language at issue, however, does not require any particular
protein isolation purity or protein profile. The Examiner relies on
Tossavainen as disclosing reverse osmosis but finds that Tossavainen does
not disclose that reverse osmosis is performed at a temperature within the
claimed range. See Final Act. 12 (explaining that because Tossavainen does
not provide specific operating conditions of reverse osmosis, “[t]o the extent
performing the reverse osmosis at room temperature would not simply be
obvious in light of the lack of any particular preferred temperature, a skilled
practitioner would be motivated to consult Etzel et al. to confirm an
appropriate reverse osmosis temperature”). The Examiner merely cites Etzel
to show that the recited temperature range for reverse osmosis was known in
the art at the time of Appellant’s invention. Final Act. 12; Ans. 19. Appellant
has not identified error in the Examiner’s fact finding, nor the Examiner’s
rationale in support of the rejection. We sustain the rejection of claims 7 and
21 as a result.
Claims 3 & 19
Claim 3 depends from claim 1 and additionally recites “wherein the
ultrafiltration (step a) is carried out at a temperature in the range from about
12 to about 20°C.” Claim 19 depends from claim 17 (which recites identical
steps (a) to (d) as claim 1) and recites the same.
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Appellant repeats the argument that both Tikanmaki and Tossavainen
“relate to the production of lactose-free milk but has nothing to do with the
production of colorless vat milk and the production of riboflavin as claimed
herein.” Appeal Br. 20. As analyzed supra, this argument is unpersuasive to
show that Tikanmaki or Tossavainen is non-analogous art.
Appellant’s remaining argument that a skilled artisan would not have
combined Tikanmaki and Tossavainen because they use hydrolysis at
different stages of the process is also unpersuasive. From the outset, the
argument is unsupported by evidence. Such “[a]ttorneys’ argument is no
substitute for evidence.” Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed.
Cir. 1989). The argument is unpersuasive also because it is not within the
scope of the open-ended claim which does not exclude hydrolysis. Finally,
Appellant has failed to explain, in any detail, why the alleged timing of
hydrolysis in Tikanmaki and Tossavainen would have discouraged one of
ordinary skill from the combination proposed by the Examiner.
The rejection of claims 3 and 19 is sustained based on the foregoing.
Remaining Claims
With regard to claims 6, 10, 15, 20, and 23, Appellant argues no more
than the additional references do not “cure the deficiencies” of those cited
for claim 1. Appeal Br. 20–21. For the reasons discussed above, there are no
deficiencies that require curing by the additional references. We accordingly
sustain the rejections of claims 6, 10, 15, 20, and 23. See 37 C.F.R.
§ 41.37(c)(1)(vii).
CONCLUSION
The Examiner’s rejections are affirmed.

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More specifically,
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 9, 11,
13, 14, 16–
18, 22, 24
103 Tossavainen,
Nagasawa, Moeller,
and Carver
1, 2, 9, 11,
13, 14, 16–
18, 22, 24

3, 19 103 Tossavainen,
Nagasawa, Moeller,
Carver, Tikanmaki
3, 19
6, 20 103 Tossavainen,
Nagasawa, Moeller,
Carver, Holst
6, 20
7, 21 103 Tossavainen,
Nagasawa, Moeller,
Carver, Etzel
7, 21
10, 23 103 Tossavainen,
Nagasawa, Moeller,
Carver, Koizumi
10, 23
15 103 Tossavainen,
Nagasawa, Moeller,
Carver, Norris
15
Overall
Outcome:
1–3, 6, 7,
9–11, 13–
24

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED