Ex Parte Kowalczyk et al

Patent Trial and Appeal Board

Jun 8, 2018

12864897 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/864,897 08/12/2010
2352 7590 06/12/2018
OSTROLENK FABER LLP
1180 A VENUE OF THE AMERICAS
NEW YORK, NY 10036-8403
FIRST NAMED INVENTOR
hrg Kowalczyk
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.
P/2107-382 8981
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
pat@ostrolenk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JORG KOWALCZYK and
STEPHAN HAUSMANNS 1
Appeal2017-007603
Application 12/864,897
Technology Center 1700
Before BRADLEY R. GARRIS, A VEL YN M. ROSS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's rejection under 35 U.S.C. § 103(a) of claims 1, 2, 7-10, 12, and
15 as unpatentable over Sugitani (EP 0 483 755 Bl published/issued Jan. 10,
1996) in view of Nakakura (US 2005/0208192 Al published Sept. 22,
2005). We have jurisdiction under 35 U.S.C. § 6.
We REVERSE.
1 Siidzucker Aktiengesellschaft Mannheim/Ochsenfurt is identified as the
real party in interest (App. Br. 2).
Appeal2017-007603
Application 12/864,897
Appellants claim a process for continuously producing a fermented,
sweet, reduced-cariogenic beverage directly out of a sucrose-containing
substrate wherein "the sucrose present in the substrate is converted
enzymatically into a trehalulose mixture having a residual sucrose content of
from 10 to 70% by weight of total sugars" (sole independent claim 1).
A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A process for continuously producing a fermented,
sweet, reduced-cariogenic beverage directly out of a sucrose-
containing substrate, wherein
a) the sucrose-containing substrate is brought into contact
with a trehalulose-forming system at a temperature of from 10
to 30°C and a pH of from 5 to 7, and permitted to ferment such
that the sucrose present in the substrate is converted
enzymatically into a trehalulose mixture having a residual
sucrose content of from 10 to 70% by weight of total sugars,
based on the weight of the sugars present in the sucrose-
containing substrate, wherein the trehalulose-forming system is
an immobilized system or a non-immobilized system and
wherein said immobilized or non-immobilized system is a
trehalulose-forming enzyme or a trehalulose-forming . .
microorgamsm,
b) the resulting material from step (a), following such
fermentation, is filtered to separate the trehalulose mixture from
the trehalulose-forming system to obtain the trehalulose mixture
as the beverage and,
c) without carrying out any further concentration or
purification of the beverage, at least one nonsweetening
beverage additive is added to the beverage to obtain the
fermented, sweet, reduced-cariogenic beverage.
In rejecting claim 1, the Examiner correctly finds that Sugitani
discloses a method for making trehalulose syrup "ha[ ving] a residual sugar
[i.e., sucrose] content of 1 % (e.g., see Table 1 on pg. 8)" (Nonfinal Action
(mailed March 18, 2016) 4). Further concerning residual sugar/sucrose
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Appeal2017-007603
Application 12/864,897
generally, the Examiner states that "it would have been obvious to one
skilled in the art that the level of residual sugar will depend on how far along
the reaction was allowed to process and how much sugar you started with"
(id.).
Significantly, however, the Examiner fails to embellish this finding
and statement with any articulated reasoning having rational underpinning to
support a conclusion that it would have been obvious for one having
ordinary skill in this art to modify Sugitani' s residual sucrose content of 1 %
to be within the 10 to 70% range of claim 1. See In re Kahn, 441F.3d977,
988 (Fed. Cir. 2006) ("there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness").
Appellants convincingly argue that the Examiner identifies nothing in
either Sugitani or Nakakura that would teach or suggest modifying the
residual sucrose content of Sugitani so as to be within the claim 1 range
(App. Br. 7).
In the Answer, a "restatement" of the rejection is presented wherein
the Examiner finds that "[a] 1 to 15% sucrose solution is used [by Sugitani]
(pg. 6, lines 18-20)[, and] [t]hus, any sucrose not processed is residual
sugar, which overlaps the claimed range of 10-70%" (Ans. 2).
Appellants reply to this finding by correctly pointing out that the
Sugitani disclosure identified by the Examiner relates to the amount of
sucrose used as a carbon source in Sugitani's process (Reply Br. 7).
That is, the disclosure of"l to 15% (w/v)" (Sugitani p. 6, 1. 20)
concerns the amount of sucrose present as a carbon source at the beginning,
not the end, of Sugitani's process. Therefore, contrary to the Examiner's
apparent belief, the disclosed range of 1 to 15% is the initial, not the
residual, amount of sucrose. For this reason, the record contains no support
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Appeal2017-007603
Application 12/864,897
for the Examiner's above finding that Sugitani discloses a range of residual
sucrose "which overlaps the claimed range of 10-70%" (Ans. 2).
In summary, we reverse the § 103 rejection of the claims on appeal
because the Examiner fails to provide any persuasive evidence that Sugitani
teaches or would have suggested a residual sucrose content of from 10 to
7 0% by weight of total sugars as required by claim 1.
The decision of the Examiner is reversed.
REVERSED
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