Ex Parte Asayama et al

Patent Trial and Appeal Board

Jun 22, 2018

13248438 (P.T.A.B. Jun. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/248,438 09/29/2011 Nobuyoshi Asayama
38834 7590 06/26/2018
WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
8500 Leesburg Pike
SUITE 7500
Tysons, VA 22182
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P6000USOO 5167
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/26/2018 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):
patentmail@whda.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOBUYOSHI ASAY AMA, JUNICHI URAKAMI, and
Y ASUYUKI T AKAISHI
Appeal2017-007277
Application 13/248,438
Technology Center 1700
Before JAMES C. HOUSEL, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL 1
Pursuant to 35 U.S.C. § 134(a), Appellants2 appeal from the
Examiner's decision finally rejecting claims 1 and 6-10. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Our decision refers to the Specification ("Spec.") filed September 29,
2011, Appellants' Appeal Brief ("Appeal Br.") filed November 15, 2016, the
Examiner's Answer ("Ans.") dated February 1, 2017, and Appellants' Reply
Brief ("Reply Br.") filed April 3, 2017.
2 According to Appellants, the real party in interest is Matsutani Chemical
Industry Co., Ltd. (Appeal Br. 2.)
Appeal2017-007277
Application 13/248,438
STATEMENT OF THE CASE
The invention relates to a bakery product and method of producing
this bakery product, wherein the product has a soft and moist texture,
sweetly dissolves in the mouth3 ("kutidoke"), a favorable flavor, and is well
risen (Spec. 1 ). Appellants disclose that the bakery product uses cereal flour
as a main raw material and the addition of sugar is essential for stably
producing bread (id. at 1, 5---6). Appellants further disclose that sugar is
known to not only promote fermentation by yeast and stabilizing the dough,
but also to form various aromatic substances and affect flavor in the process
of producing bread (id. at 6). Thus, Appellants teach, by selecting the sugar
to be added, the texture, taste, and browning property can be improved (id.).
In order to achieve a bakery product having a soft, moist texture and sweetly
dissolves in the mouth, Appellants blend a rare sugar-containing isomerizes
sugar syrup or a rare sugar with raw material flour (id. at 7). Appellants
further teach that the rare sugar can be at least D-psicose and/or D-allose (id.
at 8).
Claim 1, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the subject matter on appeal.
1. A method of producing a bakery product, comprising:
obtaining raw material flour by blending (i) sugars which
comprise at least D-psicose, D-allose and an assimilable sugar,
(ii) yeast and (iii) cereal flour as a main raw material
producing the bakery product from the raw material
flour; and
assimilating at least part of the assimilable sugar by the
yeast in the production of the bakery product,
wherein the D-psicose-and D-allose are blended in an
amount of from 0.1 to 100 parts by mass based on 100 parts by
3 Apparently, the Japanese term for this property is "kutidoke." Spec. 1.
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Application 13/248,438
mass of the main raw material flour, and
wherein the bakery product is bread.
Independent claim 8 similarly recites a method of producing a bakery
product including the additional step of isomerizing D-glucose, D-fructose,
or isomerized com syrup with an alkali to obtain a rare sugar-containing
isomerized sugar syrup containing at least D-psicose, D-allose, and an
assimilable sugar and less than 60 mass% of sugars other than D-glucose
and D-fructose.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103(a):
1. Claims 1, 6, and 7 as unpatentable over Ishigaki4 in view of
Young, 5 Fleury Rey, 6 and Shah; 7
2. Claims 8-10 as unpatentable over Ishigaki in view ofDoner, 8
Wolfrom, 9 Young, and Fleury Rey;
3. Claims 1, 6, and 7 as unpatentable over Scallet 10 in view of
Fleury Rey, Young, and Shah; and
4. Claims 8-10 as unpatentable over Scallet in view of Wolfrom,
Young, and Fleury Rey.
4 Ishigaki et al., US 6,183,787 Bl, issued February 6, 2001 ("Ishigaki").
5 Young et al., US 4,650,686, issued March 17, 1987 ("Young").
6 Fleury Rey, US 2010/0233330 Al, published September 16, 2010.
7 Shah et al., US 2003/0044513 Al, published March 6, 2003 ("Shah").
8 Landis W. Doner, Isomerization of D-Fructose by Base: Liquid-
Chromatographic Evaluation and the Isolation of D-Psicose, 70:2
CARBOHYDRATE RESEARCH 209-16 (1979) ("Doner").
9 M. L. Wolfrom and J. N. Schumacher, The Action of Alkali on D-Fructose,
77 J. AM. CHEM. Soc. 3318-23 (1955) ("Wolfrom").
10 Scallet et al., US 3,285,776, issued November 15, 1966 ("Scallet").
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ANALYSIS
The dispositive issue before us in this appeal is whether Appellants
have established significant, unexpected results for the claimed invention
sufficient to outweigh the evidence of obviousness applied by the Examiner.
After review of the opposing positions articulated by Appellants and the
Examiner and the evidence of obviousness adduced by the Examiner in light
of the countervailing Specification evidence presented by Appellants, we
determine that Appellants' arguments and evidence are insufficient to
outweigh the evidence of obviousness marshalled by the Examiner. Thus,
Appellants have not identified reversible error in the Examiner's
obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011).
Appellants argue the rejections and the claims together (see Appeal
Br. 3-10; Reply Br. 2-5). We, therefore, select claim 1 as representative;
claims 6-10 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2016).
Appellants primarily argue that, based on experimental data presented
in the Specification, the sweetly dissolving-in-mouth or kutidoke property of
bread according to the invention is an unexpected result (Appeal Br. 3-10;
Reply Br. 2-5). Appellants urge that this property is readily understood
from the Specification which presents data from sensory examinations
designed and conducted by experts (Reply Br. 4). Specifically, Appellants
assert that Table 3 provides the definition and ranging of the dissolving-in-
mouth property based on how easily the produced bread can dissolve in the
mouth (Appeal Br. 4). Appellants further assert that a comparison is
presented between a plain bread according to the invention (Example 1) and
a comparative plain bread (Comparative Example 1) (id.). The Example 1
bread uses a rare sugar-containing isomerized sugar syrup including D-
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psicose and D-allose as non-assimilable sugars and D-glucose and D-
fructose as assimilable sugars, while the Comparative Example 1 bread uses
a conventional sugar source typically containing glucose and fructose in the
ratio of 51 :43 (id.). Appellants contend that while the comparative example
bread ranked only a "2" in dissolving property, the inventive example
ranked a "4" indicating that the inventive bread surprisingly provided nicely
soft and dissolving-in-mouth properties (id.). Appellants also direct our
attention to similar results in Table 7 with regard to butter rolls (id.).
Appellants further argue that Young is directed to a dual-textured
cookie having a chewy region made of dough containing reducing or
crystallization-resistant sugars and a crisp region made of dough containing
sucrose or readily crystallizable sugars (Appeal Br. 5). Appellants contend
that Young discloses that psicose and allose provide a chewy, less crisp
texture in cookies, not bread (id. at 6-7). Appellants further contrast a
chewy texture from an easily dissolving or melting in the mouth texture (id.
at 7-8). Moreover, Appellants argue that because Young at best discloses
the opposite effect of psicose and allose in the case of cookies, i.e., chewy
texture, from that taught in the Specification, i.e., a property of easily
dissolving or melting in the mouth (id. at 9). As such, Appellants contend
that there is no articulated reason why the ordinary artisan would pick and
choose psicose and allose to make bread (id.).
Appellants' arguments are not persuasive of reversible error in the
Examiner's findings or conclusion of obviousness. At the outset,
Appellants' position is that it would not have been obvious to modify either
Ishigaki or Scallet to include psicose and allose sugars in the bread dough to
arrive at a bread that has a sweetly dissolving in the mouth or kutidoke
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property. Appellants do not challenge the Examiner's findings as to the
applied prior art nor do Appellants challenge the Examiner's justification for
modifying Ishigaki and Scallet to take advantage of the use of crystallization
resistant sugars, including psicose and allose, as taught by Young. Indeed,
as the Examiner notes (Ans. 19), the motivation for the combination need
not be the same as Appellants' motivation. KSR Int 'l Co. v. Teleflex Inc.,
550 U.S. 398, 419 (2007) ("In determining whether the subject matter of a
patent claim is obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective reach of the
claim. If the claim extends to what is obvious, it is invalid under§ 103.").
"[A ]ny need or problem known in the field of endeavor at the time of
invention and addressed by the patent can provide a reason for combining
the elements in the manner claimed." Id. at 420. "[T]he motivation in the
prior art to combine the references does not have to be identical to that of the
applicant to establish obviousness." In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996). "As long as some motivation or suggestion to combine the
references is provided by the prior art taken as a whole, the law does not
require that the references be combined for the reasons contemplated by the
inventor." In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). Instead,
Appellants are asserting that the claimed method would not have been
obvious over these references because the Specification discloses
unexpected results.
The burden of establishing that unexpected results support a
conclusion of nonobviousness rests with the Appellants. In re Huang, 100
F.3d 135, 139 (Fed. Cir. 1996). "[W]hen unexpected results are used as
evidence of nonobviousness, the results must be shown to be unexpected
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compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d
388, 392 (Fed. Cir. 1991). "[I]t is not enough to show that results are
obtained which differ from those obtained in the prior art: that difference
must be shown to be an unexpected difference." See In re Klosak, 455 F.2d
1077, 1080 (CCP A 1972). Additionally, the relied-upon results must be
commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325,
1329-31 (Fed. Cir. 2003). "Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for 'it is the view of
[the CCPA] that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support."' See In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting
In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)). Finally, "it is well settled that
unexpected results must be established by factual evidence. 'Mere argument
or conclusory statements in the specification does not suffice."' See In re
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) ("Attorney's argument in a brief cannot take the place of
evidence.").
In explaining the Specification evidence, Appellants fail to direct our
attention to any disclosure therein or evidentiary showing elsewhere in the
record demonstrating that these results would have been unexpected to one
of ordinary skill in the art, nor do we find any. Pearson, 494 F.2d at 1405.
We note that Appellants disclose that the addition of sugar is expected to
provide a bread whose whole inner part becomes soft, has an improved soft
texture, a sweet improved taste, and an improved browning property (Spec.
6). In addition, Appellants disclose that the interaction between D-psicose
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and albumin in the process of producing a bakery product "is expected that
an unexpected effect of the interaction of such a low-molecular weight
monosaccharide may be obtained" (id. at 6-7).
In addition, we note that Appellants disclose only two examples of
bread products within the scope of the claimed invention, a plain bread and a
butter roll, using a solution containing a specific rare sugar-containing
isomerized sugar syrup in an amount of 7 0 wt%., wherein the syrup was
obtained by isomerizing an isomerized a glucose:fructose syrup (51 :43) at
30% (w/v) with an alkali, specifically 0.1 M NaOH solution, resulting in a
mixed sugar liquid containing D-glucose (44%), D-fructose (32%), D-
psicose (6%), and other rare sugars including D-allose (6%) (Spec. 27-28).
These examples use a specific amount of a single cereal flour, hard wheat,
relative to a single amount of rare sugars (Tables 1 and 5). However,
Appellants' claims recite very broad ranges of rare sugars relative to any
cereal flour. Appellants fail to present evidence or persuasive technical
reasoning establishing that any asserted improved result would have been
expected over the entire range of amounts of rare sugars relative to any
cereal flour. In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011)
("If an applicant demonstrates that an embodiment has an unexpected result
and provides an adequate basis to support the conclusion that other
embodiments falling within the claim will behave in the same manner, this
will generally establish that the evidence is commensurate with scope of the
claims."). In addition, as the Examiner notes (Ans. 11, 14), the claims do
not recite the property of sweetly dissolving-in-mouth or kutidoke which
forms the basis of Appellants' assertion of unexpected results. Therefore,
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Appellants' assertion of unexpected results is not commensurate in scope
with the claims.
The Examiner finds that Appellants have not defined this property and
that whether something dissolves well or poorly in the mouth is a subjective
assessment (id. at 12). However, the mere fact that the disclosed results
reflect an assessment that may be subjective is not alone sufficient to reject
the results. Rather, the results, whether objective or subjective, should
provide an objective basis for comparison between the inventive subject
matter and the closest prior art. In this instance, the Examiner has not
established that Appellants' results do not provide an objective basis for
comparison. Nor has the Examiner established that the evaluation criteria
set forth in Table 3 is not sufficiently specific as to provide such objective
basis.
The Examiner also finds that Young's teaching of chewy texture was
not to be indicative of a rubbery texture, but to contrast this texture with a
crisp texture provided by crystallizable sugars (id. at 15-16). Moreover, the
Examiner finds that because Young discloses the same sugars for the same
purpose and used in the same way as now claimed, "it would have been
obvious that the sugars would have had the same effect when used in bread
as described by the Appellants" (id. at 13). As such, the Examiner considers
any alleged distinction between Young's disclosure of chewy and less crisp
and Appellants' kutidoke property as not relevant to the obviousness
determination (id. at 14).
These findings are directed to whether Appellants' results are actually
unexpected. However, the Examiner has not established that Young
provides an indication that a chewy, less crisp texture is likely the same as
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Appellants' kutidoke property. Although the Examiner finds that Young
discloses the same sugars for the same purpose and used in the same way as
claimed, this is simply incorrect. If this were so, Young would be applied,
not in combination with Ishigaki or Scallet, but alone in an anticipatory
rejection.
The Examiner also finds that because both Ishigaki' s and Scallet' s
methods, as modified in view of Young, result in the same method as recited
in claim 1, including the use of psicose and allose as sugars in the production
of bakery products including bread, the effect of these sugars in the bread
product is "not so unexpected" (Ans. 11 ). Further, because the breads of
both Ishigaki and Scallet, as modified in view of Young, would include the
same sugars as in claim 1, the Examiner finds this bread would have the
same properties as the bread of the claimed invention (id.).
This position is contrary to decisions from our reviewing court, which
hold that it is improper for the Office to require Appellants' compare the
claimed invention to itself. That the result of a proposed combination would
be a repeat of results asserted to be unexpected is not the standard for
evaluating whether proffered results are significant and unexpected.
Millennium Pharms., Inc. v. Sandoz Inc., 862 F.3d 1356, 1368 (Fed. Cir.
201 7) ("Unexpected results are shown in comparison to what was known,
not what was unknown.") Appellants need only compare the results of the
claimed invention to the closest prior art. Honeywell Int 'l Inc. v. Mexichem
Amanco Holding S.A. DEC. V., 865 F.3d 1348, 1355 (Fed. Cir. 2017)
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("unexpected properties may cause what may appear to be an obvious
composition to be nonobvious").
Though the Examiner erred in determining this evidence was not
sufficient to demonstrate unexpected results on the basis that the property
evaluated was not defined and was subjective and on the basis that the
proposed combinations would necessarily possess the asserted property, we
hold such errs to be harmless. As set forth above, Appellants' assertion of
unexpected results fails because Appellants neither establish that these
results are commensurate in scope with the claims nor that these results
would have been unexpected by those of ordinary skill in the art. In
weighing the totality of the evidence and arguments before us in this appeal,
we determine that a preponderance of the evidence favors the Examiner's
conclusion that the invention claimed herein would have been obvious to
one of ordinary skill in the art. Accordingly, we sustain each of the
Examiner's obviousness rejections.
DECISION
Upon consideration of the record, and for the reasons given above and
in the Examiner's Answer, the decision of the Examiner rejecting claims 1
and 6-10 under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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