Ex Parte Knudsen et al

Patent Trial and Appeal Board

Apr 6, 2017

13132765 (P.T.A.B. Apr. 6, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/132,765 08/23/2011 S0ren Knudsen 01130-0002-00US 7686
110041 7590 04/10/2017
MoNeill Ranr PT T C
EXAMINER
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1662
NOTIFICATION DATE DELIVERY MODE
04/10/2017 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):
amelia, baur @ mcneillbaur. com
docketing @ mcneillbaur. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte S0REN KNUDSEN, GUSTAV HAMBRAEUS,
LENE MOLSKOV BECH, STEEN BECH SORENSEN,
BIRGITTE SKADHAUGE, KLAUS BREDDAM, and OLE OLSEN
Appeal 2016-007956
Application 13/132,7651
Technology Center 1600
Before DEMETRA J. MILLS, ELIZABETH A. LaVIER, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.
LaVIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek review of the
Examiner’s rejection of claims 1, 2, 4, 5, 7, 12, 13, 19, 26, 27, 30, 34, 42, 43,
51—53, and 55—59. We have jurisdiction under 35 U.S.C. § 6(b). For the
reasons set forth below, we REVERSE.
1 Appellants state the real parties in interest are Carlsberg Breweries A/S of
Kobenhavn V, Denmark, and Heineken Supply Chain B.V. of Amsterdam,
Netherlands.
Appeal 2016-007956
Application 13/132,765
BACKGROUND
The Specification describes barley and barley-derived beverages with
“notably reduced levels of both dimethyl sulfide (DMS) and/or its precursor
S-methyl-L-methionine (SMM), or lacking one or preferably both of said
compounds,” and methods relating thereto. Spec. 1:9—11. The Specification
explains that “the methionine (Met)-S-methyltransferase (MMT) enzyme
catalyzes the transfer of a methyl group from S-adenosyl-methionine
(AdoMet) to Met, forming SMM.” Id. at 2:7—8.
Claim 12 is illustrative:
12. A barley plant, or part thereof, wherein the barley plant
carries a mutation in the gene encoding methionine-S-
methyltransferase (MMT) that causes a total loss of MMT
function.
Appeal Br. 20 (Claims Appendix).
REJECTION MAINTAINED ON APPEAL
Claims 1, 2, 4, 5, 7, 12, 13, 19, 26, 27, 30, 34, 42, 43, 51-53, and 55-
59 stand rejected under 35 U.S.C. § 103(a) as unpatentable over McElroy,2
Kocsis,3 Bisgaard-Frantzen,4 Douma,5 and Pimenta.6 Ans. 2.
2 McElroy & Jacobsen, What’s Brewing in Barley Biotechnology?, 13
Biotechnology 245 (1995).
3 Kocsis et al., Ins ertional Inactivation of the Methionine S-
Methyltransferase Gene Eliminates the S-Methylmethionine Cycle and
Increases the Methylation Ratio, 131 Plant Physiology 1808 (2003).
4 Bisgaard-Frantzen et al., US 2006/0057684 Al, published Mar. 16, 2006.
5 Douma et al., US 6,660,915 B2, issued Dec. 9, 2003.
6 Pimenta et al., S-Adenosyl-L-Methionine:L-Methionine S-
Methy transfer as e from Germinating Barley, 118 Plant Physiology 431
(1998).
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Appeal 2016-007956
Application 13/132,765
DISCUSSION
Appellants argue, inter alia, that the prior art provided no motivation
to make a total loss of function MMT mutant in barley because prior art
production methods of reducing DMS concentration in beer (such as those
described in Bisgaard-Frantzen) were sufficient to achieve DMS levels
below the reported sensory threshold for DMS, i.e., about 25—50 ppb, to
avoid the undesirable sulfury flavor associated with DMS. See Appeal Br.
14 (discussing Bisgaard-Frantzen 10, Table 7; Spec. 2:1—2 (citing
Meilgaard* 7)), 18 (discussing Spec. Examples 1,7; Bech Decl.8 5—6). In
contrast, the null-MMT malt described in the Specification generated beers
with 4 ppb DMS. Spec. 57:6—9 (Example 7). Appellants also rely on Dr.
Bech’s Declaration, and related disclosures in the Specification, to show that
Appellants discovered, unexpectedly, that even at levels below the known,
reported sensory threshold, DMS can mask a desirable estery flavor in beer.
See Appeal Br. 18 (discussing Spec. Examples 1,7; Bech Decl. 5—6); see
also Bech Decl. 17. Thus, according to Appellants:
reduction of DMS levels to below 20 pp[b], as recited for the
beverages of claim 1, may have a[ positive] impact on flavor
that was not realized prior to the invention, namely, an increase
in estery score. As such beverages are prepared from the plants
of claim 12, this unexpected result applies to all of the rejected
claims.
Id.
1 Meilgaard, Prediction of Flavor Differences between Beers from Their
Chemical Composition, 30 J. Agric. Food Chem. 1009 (1982).
8 Declaration of Lene Bech, PhD (March 6, 2015).
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Appeal 2016-007956
Application 13/132,765
The Examiner’s findings include a general discussion of a desire in
the prior art to “reduce DMS levels” to yield “a reduction in the off-flavors
of beer,” and that the ordinarily skilled artisan “would expect even lower
levels of DMS to be achieved” by combining the references as claimed.
Non-Final Action 7; see also Ans. 10 (finding “the prior art acknowledges
that DMS levels lead to off-flavor in beer”). Further, the Examiner
maintains that “the claimed DMS levels necessarily arise from making a
barley that carries a mutation causing a total loss of function of MMT
function.” Ans. 16; see also id. at 11.
We find that Appellants have the better position. The Examiner does
not cite evidence or explain why a general motivation in the prior art to
reduce DMS levels in beer would extend beyond the reported sensory
threshold for DMS, i.e., beneath 25—50 ppb. Or, as Appellants put it, “one
would not have expected any further improvement in flavor” (Reply Br. 11)
from further reductions of DMS levels beyond the threshold. The
motivation for combining the references articulated by the Examiner is, as
far as we can discern, based solely on a desire to reduce off-flavors imparted
by DMS. See Non-Final Action 7; Ans. 10. Because the prior art taught that
DMS could not be tasted at levels beneath 25—50 ppb, and the prior art
already taught methods for achieving DMS levels around this threshold,
some evidence in the prior art and/or analysis to support a motivation for
further reduction in DMS to levels below 20 ppb provided by the Examiner
was needed to reject the claims. Cf. KSR Int 7 Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (“[I]t 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.”). This is especially
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Appeal 2016-007956
Application 13/132,765
the case in view of the evidence of unexpected results in the Specification
(Spec. 51 and Examples) (as supported by the Bech Declaration || 7, 8),
which we also find persuasive on this record, of the role of low levels of
DMS below 20 ppb in unexpectedly masking desirable estery flavors in a
beverage from a barley plant.
CONCLUSION
The rejection of claims 1, 2, 4, 5, 7, 12, 13, 19, 26, 27, 30, 34, 42, 43,
51—53, and 55—59 is reversed.
REVERSED
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