Ex Parte Anderson et al

Patent Trial and Appeal Board

Dec 23, 2014

12205330 (P.T.A.B. Dec. 23, 2014)

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.
12/205,330 09/05/2008 Keith Steve Anderson CFLAY.00472 6638
110933 7590 12/24/2014
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
12/24/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KEITH S. ANDERSON, ERIC R. BOUDREAUX, DAVID B.
EMERSON, PHILLIP S. FRAZIER, and GLENN S. PRATT
____________

Appeal 2013-003841
Application 12/205,3301
Technology Center 1700
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
SHEILA F. McSHANE, Administrative Patent Judges.

McSHANE, Administrative Patent Judge.

DECISION ON APPEAL
The Appellants seek our review under 35 U.S.C. § 134(a) of a final
decision of the Examiner to reject claims 1–10, 12, 13, and 26–31. Claims
11, 14–18 and 32–33 were cancelled, and claims 19–25 were withdrawn.  
We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.

1 According to Appellants, the Real Party in Interest is Frito-Lay North
America, Inc. (Appeal Brief filed October 22, 2012, hereafter “App. Br.”).
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BACKGROUND
The claims of the invention are related to a method for direct injection of a
liquid additive as part of a food manufacturing process (Specification, hereafter
“Spec.,” ¶ 0002; App. Br. 3).
Claim 1 is the only independent claim that is the subject of appeal. All of
the other claims are dependent. Claim 1 is reproduced from page 11 of the Appeal
Brief (Claims App’x) as follows, with emphasis added to the relevant claim
limitation:
1. A method for the direct injection of a liquid additive into a dough-based
product, said method comprising the steps of:

a) providing a concentrated liquid additive, wherein said concentrated
liquid additive comprises a liquid matrix having no chlorinated water
and further wherein said concentrated liquid additive comprises
asparaginase;

b) adding said concentrated liquid additive directly to dough
ingredients; and

c) mixing said concentrated liquid additive into said dough ingredients
to form an asparagine deficient dough, wherein if any additional water
is necessary to form the dough, the additional water is added to the
dough ingredients via a different stream than the concentrated liquid
additive, and further wherein said mixing comprises a grinding step.

REJECTIONS
The Examiner previously rejected claims 1–10, 12, 13, and 26–33 under
35 U.S.C. § 103(a) as unpatentable on multiple grounds over various combinations
of prior art references including Teras2, Ciesarova3, and Bandy4 (Examiner’s

2 US Patent Application Publication 2004/0265429 A1, published December 30,
2004.
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Answer entered November 21, 2012, hereinafter “Ans.,” 3; Final Office Action
entered July 17, 2012, hereafter “Final Act.,” at 2–12).
Appellants seek our review of all of the rejections, except for claims 32 and
33 that were canceled by Appellants concurrently with the filing of the Appeal
Brief and are not presented for review on appeal. Appellants’ argument on the
appeal of the rejections of all the dependent claims, that is, claims 2–10, 12, 13,
and 26–31, is limited to and contingent upon whether claim 1 is found to be
nonobvious (App. Br. 8–9). Therefore, we confine our discussion to claim 1.

ISSUES
The Examiner found that Teras disclosed preparing corn based food
products having reduced levels of acrylamide, where the enzyme asparaginase
could be added to the corn-based food material at any suitable stage of processing
(Final Act. 2–3, citing Teras, ¶¶ 0001, 0028 and 0037). Teras further disclosed
that the asparaginase enzyme could be added in the form of a solution (e.g.
dissolved in water), that could be added to dough ingredients before, during, or
after grinding, mixing, extruding, or sheeting (id. at 3, citing Teras at ¶¶ 0034 and
0093). The Examiner acknowledged that Teras did not disclose the water source in
the aqueous solution of asparaginase (id. at 0003).
The Examiner combined the teachings of Teras with Ciesarova, where
Ciesarova disclosed the use of asparaginase for the mitigation of acrylamide
formation in industrially processed and home-cooked high heat treatment potato

3 Zuzana Ciesarová, Eugene Kiss, and Petra Boegl, Impact of L-asparaginase on
Acrylamide Content In Potato Products, 45 J. of Food and Nutrition Research, No.
4 at 141–146 (2006).
4 US Patent 6,036,354, issued on March 14, 2000. 
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Application 12/205,330

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products, and where the enzyme treatment was prepared by dissolving enzyme
powder in deionized water (id., citing Ciesarova at p. 142). The enzyme
pretreatment of Ciesarova was then applied to wet dough (id., citing Ciesarova at
pp. 142–144). Also, the Examiner noted that while Teras did not expressly
disclose a problem with the use of non-chlorinated water, it still taught that the
asparaginase enzyme could be prepared by adding it to water or another liquid
(Ans. at 4, citing Teras at ¶¶ 0063 and 0067).
The Examiner concluded that based upon the findings that Teras and
Ciesarova similarly taught adding an aqueous solution of asparaginase to dough
ingredients in order to reduce acrylamide content in heat processed foods, that one
of ordinary skill in the art would use the deionized water taught in Ciesarova to
prepare the asparaginase aqueous solution disclosed by Teras with the expectation
of successfully preparing a functional product (id.).
Appellants base the appeal on the issue of whether the two references, Teras
and Ciesarova, were properly combined to support a finding of obviousness.5
Appellants contend that the mere fact that the references are in the same field of
endeavor, absent more, is insufficient to support a case of obviousness (App. Br. at
6). Appellants note that the Examiner admits that “Teras does not disclose the
water source in the aqueous solution of asparaginase,” further arguing that “not
only does Teras not teach or suggest the claimed limitation of using non-
chlorinated water, it doesn’t even recognize there is a problem with doing so” (Id.
at 7). Appellants assert, therefore, that one skilled in the art, upon reading Teras,
“would have no reason to go looking for the deionized water of Ciesarova” (Id.).

5 Appellants note that the same arguments concerning Teras and Ciesarova also
apply to the references in view of Bandy (App. Br. at 6), so there are no separate
arguments presented by Appellants on Bandy, nor will any be addressed here.  
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Appellants point to a discovery of the instant invention that “[c]ertain
characteristics of drinking water, for example, the presence of chlorine, reduces the
activity of the asparaginase enzyme to a point where it is not useful in a
commercial setting for the production of food” (Id. at 6). Appellants refer to the
testing conducted and disclosed at Table 1 (Spec. at ¶ 0019) that found “the corn
masa sample mixed with the deionized asparaginase solution had about one tenth
the asparagine level of the corn masa mixed with the drinking water” (id. at 7), in
support of their argument. Appellants also point out that Ciesarova is mainly
limited to reporting on the results of test runs from the laboratory, where virtually
all basic laboratory experiments were designed to test the activity of compounds
using deionized water under laboratory conditions in order to minimize the
influence of any contaminants that might be present in the water (id. at 7–8).
Appellants argue that this is the only reason deionized water was used for the
asparaginase solution preparation in the experiments of Ciesarova, and no
comparative testing was performed therein on activity for tap water versus
deionized water. Appellants therefore assert that there would be no motivation to
substitute the deionized asparaginase solution of Ciesarova into the method of
Teras (id. at 8).
Appellants also contend that Ciesarova does not disclose the source of the
water used to make a wet dough (id.). Based upon this, Appellants argue that
Ciesarova therefore failed to appreciate the importance of the use of non-
chlorinated water (id.), and that the Examiner impermissibly picked and chose
parts of this prior art (Reply Br. at 1–2). Applicants further contend that if the
water added to the wet dough under Ciesarova was chlorinated, then that taught
away from claim 1, which added deionized water only to the dough ingredients.

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ANALYSIS
A claimed invention is not patentable if the subject matter of the claimed
invention would have been obvious to a person having ordinary skill in the art.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The combination of
familiar elements according to known methods is likely to be obvious when it does
no more than yield predictable results. Id. at 416. In determining whether
obviousness is established by combining the teachings of the prior art, “the test is
what the combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). When
considering obviousness of a combination of known elements, the operative
question is thus “whether the improvement is more than the predictable use of
prior-art elements according to their established functions.” Id.
The Examiner does not point to any findings beyond that the teachings of
Teras and Ciesarova disclosed using asparaginase for the mitigation of acrylamide
formation in food products and that the process should work with the combination
of the references in support of obviousness of claim 1.
In the instant invention, testing was performed and data reported on samples
of corn masa using deionized water and, alternatively, drinking water from a
municipal water supply system, (Spec. at ¶¶ 0017–0019), which was believed to
contain forms of chlorine. The table below contains that data.
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Table 1. Asparagine level in corn masa using enzyme with drinking water
and deionized water. Spec. at page 8.

The results of the testing indicated that the resulting level of asparagine was
highly dependent on the type of water used in the testing. The presence of chlorine
in the drinking water “reduces the activity of the asparaginase enzyme to a point
where it is not useful in a commercial setting for the production of food” (Spec. at
¶ 0018), and, more specifically, the test data showed that “masa sample mixed with
the deionized asparaginase solution had about one tenth the asparagine level of the
corn mesa mixed with the drinking water” (Id. at ¶ 0020). These results form an
important underlying basis for the invention. Therefore, we understand the
Appellants’ position, based on the arguments in the Appeal Brief (App. Br 6–8)
and the written description, to be that the use of “a liquid matrix having no
chlorinated water,” as recited in claim 1, provides results that would not have been
expected or predicted by one of ordinary skill in the art.
We find that the comparative testing that was performed to determine the
effect of the dilution water type and contact time is evidence of the importance of
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the use of non-chlorinated (deionized) water rather than municipal water for the
food processing method of injection of a liquid additive that included asparaginase
into dough ingredients of claim 1. We find that the results of the testing further
demonstrated that significant improvement of the process occurred with the use of
deionized water, that is, there was an approximate ten-fold improvement in the
process compared to the use of municipal water with chlorine as the dilution water.
Given the findings of significant improvements afforded by the use of deionized
water, we also find that these results would have been considered to be important
to one of skill in the art, and would have been unexpected in view of the prior art.
Accordingly, the preponderance of the evidence of record weighs in favor of
a conclusion that the subject matter of claim 1 would not have been obvious to a
person of ordinary skill in the art in view of the cited references We, therefore,
reverse the Examiner's obviousness rejection of claim 1, and the dependent claims,
over those references.

SUMMARY
For the above reasons, the Examiner’s rejections of claims 1–10, 12, 13, and
26–31 are reversed.

REVERSED

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