Ex Parte Kinney et al

Board of Patent Appeals and Interferences

Sep 15, 2010

10757667 (B.P.A.I. Sep. 15, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANTHONY JOHN KINNEY and GARY MICHAEL FADER
____________

Appeal 2010-001838
Application 10/757,667
Technology Center 1600
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Before DONALD E. ADAMS, DEMETRA J. MILLS, and
MELANIE L. McCOLLUM, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 22-24, the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-001838
Application 10/757,667

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STATEMENT OF THE CASE
The claims are directed to food. The claims have not been argued
separately and therefore stand or fall together. 37 C.F.R. § 41.37(c)(1)(vii).
Claim 24 is representative and is reproduced in the “Claims Appendix” of
Appellants’ Brief (App. Br. 11).
Claims 22-24 stand rejected under 35 U.S.C. § 102(b) as anticipated
by or, in the alternative, under 35 U.S.C. § 103(a) as obvious over
Trueblood2 or Staswick.3
We affirm.
ISSUE

Does the preponderance of evidence on this record support a finding
of anticipation or in the alternative a conclusion of obviousness?

FINDINGS OF FACT4
FF 1. Trueblood teaches “vegetable oil (food) prepared from soybean
seeds” (Ans. 5).
FF 2. “[S]oybean oil does not contain seed storage protein subunits like,
glycinin or β-conglycinin” (id.).
FF 3. Soybean oil obtained from the process set forth in the claim appears
to be identical to Trueblood’s soybean oil (id.).

2 Trueblood et al., US 4,267,118, issued May 12, 1981.
3 P. E. Staswick and N.C. Nielsen, Characterization of a Soybean Cultivar
Lacking Certain Glycinin Subunits, 223 ARCHIVES OF BIOCHEM. AND
BIOPHYS. 1-8 (1983).
4 The evidence submitted as part of Appellants September 9, 2009 Reply
Brief was not timely presented, was not entered into the record, and was not
considered in our deliberations (see December 7, 2009 Advisory Action).

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Application 10/757,667

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FF 4. Staswick teaches “soybean seeds having reduced levels of glycinin”
(Ans. 7).
FF 5. Staswick’s “soybean seed storage proteins with reduced levels of
glycinin would inherently constitute food” (id.).
FF 6. Staswick’s soybean seed storage proteins with glycinin levels
appears to be identical to the soybean seed storage proteins with reduced
glycinin levels obtained from the process set forth in the claim (id. at 7-8).
FF 7. The Kinney and Fader Declarations are presented in support of the
claimed invention (App. Br. 5; Kinney Dec. 5 6; Fader Dec. 6 3).
FF 8. “Soy protein products fall into three major groups. These groups are
based on protein content, and range from 40% to over 90%” (Soy Protein
Products7 3).
FF 9. Soy protein products “are: soy flours and grits, soy protein
concentrates and soy protein isolates” (id.).
FF 10. A “soy protein product such as soy flour would have at least 40%
protein” (App. Br. 6, citing Soy Flour8).
ANALYSIS
Appellants contend that “[c]laims 22-2[4] concern food comprising a
soy protein prepared from transgenic soybean seeds prepared according to
the methods recited therein” (App. Br. 5).

5 Kinney Declaration, executed June 29, 2001.
6 Fader Declaration, executed June 27, 2001.
7 Soy Protein Products, Characteristics, Nutritional Aspects and Utilization
3-6 (The Soy Protein Council, Washington, DC) (1987).
8 Soy Flour, www.soyfoods.org.
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Trueblood:
Trueblood “concerns a process for treating crude soybean oil to make
it a food or commercial grade quality” (App. Br. 6.; FF 1). Appellants
contend that a food-grade soybean oil is not a soy protein product because it
contains less than about 40% protein (App. Br. 6-7; Reply Br. 6-7). We are
not persuaded.
There is no requirement in claim 24 that the food comprise a soy
protein product (Cf. FF 9). Further, to the extent that a food within the scope
of the claim would include a soy protein product, there is no requirement in
the claim that a particular amount of soy protein product be included in the
food. Accordingly, while a soy protein product (i.e., soy flour) may contain
at least 40% soy protein there is no requirement in the claim that a food,
prepared from soy flour, contain at least 40% soy protein.

Staswick:
Appellants contend that “food of the instant invention comprising a
soy protein product as recited in the claims would be distinguishable by the
presence of the chimeric gene used to create the transgenic soybean plant
producing the seeds from which the soy protein products were obtained”
(App. Br. 8; Reply Br. 9). There is no evidentiary basis on this record to
support this contention.
CONCLUSION OF LAW
The preponderance of evidence on this record supports a finding of
anticipation or in the alternative a conclusion of obviousness. The rejection
of claim 24 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
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Application 10/757,667

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under 35 U.S.C. § 103(a) as obvious over Trueblood or Staswick is affirmed.
Claims 22 and 23 fall together with claim 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).

AFFIRMED

cdc

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