Ex Parte Barker et al

Board of Patent Appeals and Interferences

Jan 12, 2009

10476230 (B.P.A.I. Jan. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte LARRY D. BARKER, RONALD W. MARTENS,
and E. DONALD MURRAY
__________

Appeal 2008-5580
Application 10/476,230
Technology Center 1600
__________

Decided: January 12, 2009
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3-7, 11-14, 16-22, 24-27, 31, and 32.
We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-5580
Application 10/476,230

STATEMENT OF THE CASE
The claims are directed to a process for preparing a canola protein
isolate. Claim 1 is the only independent claim on appeal, and reads as
follows:
1. A process of preparing a canola protein isolate, which comprises:
(a) extracting a canola oil seed meal at a temperature of at least about
5°C using a food grade salt solution having an ionic strength of at least about
0.10 and a pH of about 5 to about 6.8 to cause solubilization of protein in
said oil seed meal and to form an aqueous protein solution having a protein
content of about 5 to about 30 g/L,
(b) separating the aqueous protein solution from residual oil seed
meal,
(c) increasing the protein concentration of said aqueous protein
solution to at least about 200 g/L while maintaining the ionic strength
substantially constant by using a selective membrane technique, to provide a
concentrated protein solution,
(d) diluting said concentrated protein solution into chilled water
having a temperature below about 15°C to cause the formation of protein
micelles,
(e) settling the protein micelles to form an amorphous, sticky,
gelatinous, gluten-like micellar mass, and
(f) separating the protein micellar mass from supernatant having a
protein content of at least about 100 wt% as determined by Kjeldahl nitrogen
x 6.25 on a dry weight basis; and
(g) processing the supernatant to recover additional quantities of
canola protein isolate therefrom.

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Application 10/476,230

The Examiner relies on the following references:
Jones US 4,158,656 Jun. 19, 1979
Murray (Murray ’086) US 5,844,086 Dec. 1, 1998
Murray (Murray ’076) US 6,005,076 Dec. 21, 1999

We reverse.
ISSUE
The Examiner concludes that claims 1, 3-7, 11-14, 16-22, 24-27, 31,
and 32 under 35 U.S.C. § 103(a) are obvious over the combination of
Murray ’076, Murray ’086, and Jones.
Appellants contend that neither of the teachings of the Murray
references, nor would the combination of references, as set forth by the
Examiner, render obvious the step of processing the supernatant to recover
additional quantities of canola protein isolate therefrom, to the ordinary
artisan.
Thus, the issue on Appeal is: Do the teachings of either of the Murray
references, or the references as combined, as set forth by the Examiner,
render obvious the step of processing the supernatant to recover additional
quantities of canola protein isolate therefrom, to the ordinary artisan?

FINDINGS OF FACT
FF1 “The present invention relates to improved methods for manufacturing
oil seed protein isolate, particularly a canola protein isolate.” (Spec. 1.)
FF2 According to the Specification, it has been discovered that significant
proportion of protein extracted in the prior art, such as that described in
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Application 10/476,230

Murray ’076 and Murray ’086, was lost as a result of discarding the
supernatant from the step of forming the protein micellar mass (PMM) (id. at
3).
FF3 Thus, according to the Specification, the present invention improves
the overall yield of protein extracted by recovering protein from the above
supernatant by concentrating it to remove impurities and then drying the
concentrate (id.).
FF4 The protein product obtained from the supernatant “generally has a
protein content (Nx6.25) of greater than 100% and is a novel canola protein
isolate product.” (Id.)
FF5 The Examiner rejects claims 1, 3-7, 11-14, 16-22, 24-27, 31, and 32
under 35 U.S.C. § 103(a) as being obvious over the combination of Murray
’076, Murray ’086, and Jones (Ans. 5).1
FF6 Both Murray patents2 are cited for teaching a method of preparing a
protein isolate from oil seed meal, such as canola oil seed (id. at 5).

1 We note that claims 1, 3-7, 11-14, 16-22, 24-27, 31, and 32 have also been
provisionally rejected under the judicially created doctrine of obviousness-
type double patenting as being unpatentable over claims 1 to 34 of
copending application USSN 10/137,391 (App. Br. 4; Ans. 3-4); which
rejection has not been presented for review on Appeal.
2 The disclosures of the Murray patents are essentially the same, and the
Examiner discusses the patents in the collective. Thus, we will focus our
analysis on Murray ’076.
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FF7 Jones is cited for teaching “that pigment removed from an oil seed
meal is beneficial because color is highly undesirable in many food
products.” (Id. at 6.)
FF8 According to the Examiner, the Murray patents do not “specifically
teach isolating additional protein from the supernatant at the end of their
extraction procedure.” (Id.)
FF9 The Examiner finds that Murray does teach “using ultrafiltration to
obtain the maximum amount of protein.” (Id. at 7 (citing Murray ’076, col.
5, ll. 12-26).)
FF10 The Examiner therefore concludes “it would be obvious to modify the
extraction of both Murrays [patents] to include additional purification of the
proteins by ultrafiltration of the supernatant. Motivation stems from a
reasonable expectation of increased protein yield.” (Id. at 7.)
FF11 Murray ’076 teaches a process of preparing a protein isolate, which
process comprises:
(a) extracting an oil seed meal having a fat content up to about
10 wt % of the meal with an aqueous food grade salt solution
having an ionic strength of at least about 0.2 and at a pH of
about 5 to about 6.8 at a temperature of about 15° to about 75°C
to cause solubilization of proteinaceous material and some fat
in the oil seed meal and to form a protein solution, (b)
separating the protein solution from residual oil seed meal,
which may be effected before or after step (c), (c) removing fat
from the protein solution to provide a defatted protein solution,
(d) increasing the protein concentration of the defatted protein
solution while maintaining the ionic strength thereof
substantially constant to form a concentrated defatted protein
solution, (e) diluting the concentrated defatted protein solution
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to an ionic strength below about 0.2 to cause the formation of
discrete protein particles in the aqueous phase in the form of
highly aggregated microscopic protein micelles, (f) settling the
protein micelles to form a mass of protein isolate at least
partially in the form of an amorphous sticky gelatinous, gluten-
like protein micellar mass, (g) separating the protein isolate
from supernatant liquid, and (h) drying the separated protein
isolate to provide a dried proteinaceous powder substantially
undenatured and having a protein content of at least about 90 wt
%.

(Murray ’76, col. 2, ll. 12-35.)
FF12 Specifically, as to step (f), Murray ’076 teaches that the
settled isolate, in the form of an amorphous, aggregated, sticky,
gelatinous, gluten-like protein mass, termed “protein micellar
mass”, or PMM, is separated from the residual aqueous phase,
such as by decantation of the residual aqueous phase from the
settled mass. The PMM may be used in the wet form or may be
dried, by any convenient technique, such as spray drying, freeze
drying or vacuum drum drying, to a dry form. The dry PMM
has a high protein content, usually in excess of about 90%
protein (calculated as kjeldahl Nx6.25), and is substantially
undenatured (as determined by differential scanning
calorimetry). The dry PMM isolated from the fatty oil seed
meal also has a low residual fat content, which may be below
about 1%.

(Id. at col. 6, ll. 27-39.)
FF13 As exemplified, the PMM is allowed to settle in a dilution vessel, the
upper diluting water was pumped off, and the precipitated viscous protein
mass was collected and spray dried (id. at col. 7, ll. 24-29).
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FF14 As to the section of Murray ’076 cited by the Examiner for teaching
ultrafiltration, that section teaches:
As is well known, ultrafiltration and similar selective
membrane techniques permit low molecular weight species to
pass therethrough while preventing higher molecular weight
species from so doing. The low molecular weight species
include not only the ionic species of the food grade salt but also
low molecular weight materials extracted from the source
material, such as, carbohydrates, pigments etc. The molecular
weight cut-off of the membrane is usually chosen to ensure
retention of substantially all of the proteins in the solution.
The elimination of low molecular weight species from
the extracted solution during the concentration step permits the
protein concentration to be increased without precipitation
thereof, well beyond the maximum concentration attainable
during the extraction step.

(FF9 (citing Murray ’076, col. 5, ll. 12-26).)
FF15 The section of Murray ’076 cited in FF14 only discusses ultrafiltration
generally, and does not discuss the supernatant from steps (f) and (g) of the
process of Murray ’076 (see FF11).
FF16 In fact, in the Examples, the ultrafiltration step was used to further
concentrate the clarified solution before steps (f) and (g) are performed (see,
e.g., Murray ’076 col. 7, ll. 12-18).

PRINCIPLES OF LAW
The question of obviousness is resolved on the basis of underlying
factual determinations including: (1) the scope and content of the prior art;
(2) the level of ordinary skill in the art; (3) the differences between the
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claimed invention and the prior art; and (4) secondary considerations of
nonobviousness, if any. Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
The Supreme Court has recently emphasized that “the [obviousness] analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR
Int’l v. Teleflex Inc., 127 S. Ct. 1727, 1741 (2007).
However, an invention “composed of several elements is not proved
obvious merely by demonstrating that each of its elements was,
independently, known in the prior art.” Id. at 1741. “Often, it will be
necessary . . . to look to interrelated teachings of multiple [references] . . .
and the background knowledge possessed by a person having ordinary skill
in the art, all in order to determine whether there was an apparent reason to
combine the known elements in the fashion claimed[.]” Id. at 1740-41.
“[T]his analysis should be made explicit” (id. at 1741), and it “can be
important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does” (id.).

ANALYSIS
Appellants argue that claim “differs from Murray in the requirement
for the recovery of additional quantities of canola protein isolate from the
supernatant.” (App. Br. 9.) Specifically, according to Appellants, “Murray
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is silent as to the possible presence of recoverable quantities of protein in the
supernatant,” and that in fact, Murray discards the supernatant (id.).
We conclude that Appellants have the better position. Both of the
Murray references discard the supernatant after the PMM is allowed to settle
(see, e.g., FF13). Neither reference discusses the possibility that their may
be additional protein in the discarded supernatant, and Jones does not
remedy that deficiency.
The section relied upon by the Examiner for providing a reason to
further process the supernatant to obtain additional protein merely relates to
the benefits of ultrafiltration generally (FF10 and FF11), and in fact when
Murray ’076 uses ultrafiltration, it is before the formation of the PMM (see
FF16). The Examiner has provided no additional evidence or scientific
reasoning as to why the ordinary artisan would have processed the
supernatant to recover additional quantities of canola protein isolate, and
thus has failed to meet the burden of setting forth a prima facie case of
obviousness.

CONCLUSIONS OF LAW
We therefore conclude that neither of the Murray references, or the
references as combined, as set forth by the Examiner, render obvious the
step of processing the supernatant to recover additional quantities of canola
protein isolate therefrom, to the ordinary artisan. We are thus compelled to
reverse the rejection of claims 1, 3-7, 11-14, 16-22, 24-27, 31, and 32 under
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35 U.S.C. § 103(a) as being obvious over the combination of Murray ’076,
Murray ’086, and Jones.

REVERSED

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SIM & MCBURNEY
6TH FLOOR
330 UNIVERSITY AVENUE
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