Ex Parte Kowalczyk et alDownload PDFPatent Trial and Appeal BoardJun 8, 201812864897 (P.T.A.B. Jun. 8, 2018) Copy Citation 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 2 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 3 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 4 Copy with citationCopy as parenthetical citation