DMK Deutsches Milchkontor GmbHDownload PDFPatent Trials and Appeals BoardJun 19, 20202019004338 (P.T.A.B. Jun. 19, 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. 14/839,202 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. Appeal 2019-004338 Application 14/839,202 2 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 Appeal 2019-004338 Application 14/839,202 3 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 Appeal 2019-004338 Application 14/839,202 4 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). Appeal 2019-004338 Application 14/839,202 5 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 Appeal 2019-004338 Application 14/839,202 6 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. Appeal 2019-004338 Application 14/839,202 7 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. Appeal 2019-004338 Application 14/839,202 8 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. Appeal 2019-004338 Application 14/839,202 9 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 Copy with citationCopy as parenthetical citation