Ex Parte Ling

Patent Trial and Appeal Board

Oct 31, 2016

12564744 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/564,744 0912212009
38598 7590 11/02/2016
ANDREWS KURTH KENYON LLP
1350 I STREET, N.W.
SUITE 1100
WASHINGTON, DC 20005
FIRST NAMED INVENTOR
HAIBOLING
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.
2003-001 9031
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/02/2016 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):
DCIPDOCKETING@andrewskurth.com
PTODC@andrewskurth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte HAIBO LING
Appeal2016-000614
Application 12/564,744
Technology Center 1700
Before CATHERINE Q. TIMM, A VEL YN M. ROSS, and
DEBRA L. DENNETT, Administrative Patent Judges.
DENNETT, Administrative Patent Judge.
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134 from a rejection of claims
1---6, 8, 10, and 21. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 In our Opinion below we reference the Declaration of Haibo Ling filed
April 22, 2013 ("Ling Deel.") in Application No. 12/564,762, the Non-final
Action mailed December 5, 2014 ("Non-final Act."), the Appeal Brief filed
February 27, 2015 ("App. Br."), the Examiner's Answer mailed August 14,
2015 ("Ans."), and the Reply Brief filed October 13, 2015 ("Reply Br.").
2 Appellant identifies the real party in interest as Beijing Yihecun
Technology Co., Ltd. App. Br. 3.
Appeal2016-000614
Application 12/564,744
The claims are directed to a direct-acidified milk beverage that
maintains a high viable cell count at ambient temperature for one to six
months and a process for preparing same. Claim 1, reproduced below with
the disputed limitation underlined, is illustrative of the claimed subject
matter:
1. A process of preparing direct-acidified milk beverage
with high viable cell count, comprising:
adjusting pH value of a non-fermented milk beverage to
4.0-4.5 to obtain an acidified milk beverage;
sterilizing said acidified milk beverage; and
adding concentrated culture, concentrated frozen culture
or freeze dried culture of Lactobacillus rhamnosus ATCC
53103 together with 0.01-5% wt of growth promoting factors to
said acidified milk beverage under aseptic condition to produce
a final product,
wherein said final product can be stored for 1-6 months
under ambient temperature with a viable cell count of
Lactobacillus rhamnosus ATCC 53103 of at least 105 cfu/ml
milk beverage,
wherein said growth promoting factors are selected from
one or more of glucose, fructose, galactose, arabinose, ribose,
mannose, rhamnose, fucose, tagatose, sucrose, maltose,
cellobiose, trehalose, melizitose, gentiobiose, galactitol,
mannitol, sorbitol, inositol, gluconic acid, salicin, aescine,
arbutin, amygdalin and acetylglucosamine, and wherein said
growth promoting factors can be added together with milk base
before sterilization or with Lactobacillus rhamnosus A TCC
53103 under aseptic condition.
App. Br. 21 (Claims App'x).
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Application 12/564,744
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Igoe US 4,169,854 Oct. 2, 1979
Germond, et al., WO 01/88150 Al Nov. 22, 2001
("Germond")
Grosso and Favaro-Trindade, Stability of Free and Immobilized
Labtobacillus acidophilus and Bifidobacterium lactis in Acidified
Milk and of Immobilized B. lactis in Yoghurt, 35 Brazilian J.
Microbio. 151 (2004) ("Grosso")
REJECTIONS
Claims 1---6, 8-10, and 21 stand rejected under 35 U.S.C. § 103(a) as
obvious over Grosso in view of Germond and Igoe. Non-final Act. 3.
OPINION
Appellant argues claims 1---6, 8-10, and 21 as a group. We select
claim 1 as representative for deciding the issues on appeal for that group.
Combining Grosso with Germond
The primary reference asserted by the Examiner is Grosso. Grosso
teaches adding probiotic bacteria Lactobacillus acidophilus or
Bifidobacterium lactis immobilized in calcium alginate beads to sterilized
milk and sterilized milk that has been acidified by the addition of 4N lactic
acid in order to achieve pH values of 5.0, 4.4, and 3.8. Grosso p. 152, right
column. The acidified, cultured milk is stored at 7°C for 28 days. Id.
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Application 12/564,744
According to Grosso, free and immobilized B. lactis and L. acidophilus
presented a good survival rate in milk and acidified milk. Id. at Abstract.
The Examiner acknowledges that Grosso does not teach L. rhamnosus
ATCC 53103 as a pro biotic, but finds that Germond teaches the use of lactic
acid bacteria that are deficient in using lactose as a carbon source in food
products for improved shelf life and maintenance of the organism. Non-
Final Act. 4--5. According to the Examiner, Germond teaches that it is
desirable to use the Lactobacillus rhamnosus ATCC 53103 strain as a
probiotic and that it does not metabolize lactose. 3 Id. at 5. Germond also
teaches, per the Examiner, production of acidified milk products with strains
of bacteria that exhibit the same properties (i.e., usefulness as a pro biotic and
inability to metabolize lactose). Id. Thus, the Examiner concludes that one
of ordinary skill in the art at the time of the invention would have found it
obvious to combine L. rhamnosus ATCC 53103, as taught in Germond, with
the teachings of Grosso. Id.
Appellant urges that Grosso's objective was to find a way to prolong
the viability of B. lactis and L. acidophilus in acidified milk cultures and in
fermented yogurt containing a starter culture, but was only concerned with the
survival of probiotics at refrigeration temperatures. App. Br. 11. Appellant
3 Appellant disputes that Germond discloses this information. App. Br. 12,
Reply Br. 3--4. To be exact, Germond teaches the desirability of preparing a
food product containing lactose by using a lactic acid bacterium having
probiotic properties and that does not use lactose as a carbon source such
that no lactic acid is produced (Germond p. 1, 11. 6-10, p. 3, 11. 19-26), that
the bacterial species L. rhamnosus is one of six species identified as
"preferable" for such preparation (id. at p. 3, 11. 19-29), and specifically
identifies L. rhamnosus ATCC 53103 as a pro biotic (id. at p. 2, 11. 10).
Thus, Germond teaches the desirability of using L. rhamnosus, but not
specifically the particular strain ATCC 53103, as a pro biotic.
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Appeal2016-000614
Application 12/564,744
suggests that Grosso uses an acidified milk beverage only as a starting point
to test the survival of encapsulated L. acidophilus or B. lactis, and that the
reference is not concerned with the means for creating an acidified milk
product. Id. Appellant proposes that Grosso did not address the long term
storage and viability of L. rhamnosus ATCC 53103 in refrigerated yogurt
cultures, let alone at room temperature for one to six months with a viable cell
count of L. rhamnosus ATCC 53103 of at least 105 cfu/ml milk beverage, and
that at the time of the invention, there was no indication that the bacteria
would survive for extended periods at ambient temperatures in an acidified
milk product. Id. at 9, 11.
Appellant portrays Germond's disclosure of L. rhamnosus ATCC
53103 as a "minor background teaching" that is unrelated to the disclosures
or other objectives in either Grosso or Germond. Id. at 12 (emphasis in
original). Appellant charges that the Examiner does not sufficiently explain
why it would have been obvious for one of ordinary skill in the art at the
time of the invention to add the pro biotic of Germond to Grosso' s culture,
emphasizing the limited description of the particular pro biotic. Id. at 12.
Appellant further contends that Germond teaches away from
employing probiotics unable to metabolize lactose, arguing that such
teaching away disqualifies Germond as a reference in an obviousness. App.
Br. 12 (citing Germond at p. 3, 11. 10-12 ("it is a desired trait that the
microorganisms should assist in degradation of factors in gut, when lactose
containing food material is incorporated"); see also Reply Br. 5.
We find Appellant's position unavailing. For an obviousness
rejection, a reference is prior art for all that it teaches. Beckman Instruments
Inc. v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989) ("Even if a
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Appeal2016-000614
Application 12/564,744
reference discloses an inoperative device, it is prior art for all that it
teaches."). Grosso teaches adding a species of pro biotic Lactobacillus to
acidified, sterilized, non-fermented milk, and storing it at 7°C for 28 days.
Grosso p. 152, right column. One of ordinary skill in the art at the time of
the invention would have found it obvious to substitute another
Lactobacillus species, such as L. rhamnosus or the particular strain L.
rhamnosus ATCC 53103, as taught by Germond for the Lactobacillus in
Grosso, as both references teach successful use of Lactobacillus to provide
probiotic milk based products. Id.; Germond p. 3, 11. 14--30, p. 4, ln. 30-p.
5, ln.3.
The Examiner pointed out that Germond found that lactic acid
bacteria deficient in using lactose as a carbon source, such that no lactic acid
is produced, acidify and maintain the quality of the food products to which
such these bacteria are added, and this results in an improved shelf life and
maintenance of the organism. Non-Final Act. 5 (citing Germond pg. 3, lines
5-15 and pg. 5, lines 1-5, Ex. 4). The properties of L. rhamnosus ATCC
53103 are inherent to and inseparable from the strain. See Non-Final Act.
10. The Examiner has produced adequate motivation for one or ordinary
skill in the art at the time of the invention to combine the teachings of
Grosso and Germond. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418
(2007) (precise teachings directed to the claimed subject matter are not
required where the Examiner's explanation of the reasons a person of
ordinary skill in the art would have had to combine the prior art teachings is
sufficient when an allowance is made for "the inferences and creative steps
that a person of ordinary skill in the art would employ."); see also In re
Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) ("As long as some motivation
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Application 12/564,744
or suggestion to combine the references is provided by the prior art taken as
a whole, the law does not require that the references be combined for the
reasons contemplated by the inventors."); Cross Med. Prods., Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
("One of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.").
Review of the totality of Germond clarifies that its statement that "it is
a desired trait that the microorganisms should assist in degradation of factors
in gut, when lactose containing food material is incorporated" (page 3, lines
10-12) is not a suggestion to avoid use of probiotics unable to metabolize
lactose. Rather, Germond clearly and unmistakably teaches using Lactic
acid bacterium having probiotic properties and being "deficient in using
lactose as a carbon source" but "still capable to translate the jJ-
galactosidase gene." Id. at p. 1, 11. 6-8 (emphasis added). Germond does
not "teach away."
Appellant's argument that there would have been no reasonable
expectation of success in combining the teachings of Grosso and Germond
fares no better. See App. Br. 14. Appellant urges that Grosso indicates a
lack of predictability for achieving a successful combination with Germond,
due to "Grosso' s results highlighting the problems and lack of survivability
of Grosso' s microencapsulated probiotics in the lactobacilli-containing
fermented milk beverage upon storage at 7°C." Id. (emphasis in original).
In fact, Grosso discloses that B. lactis and L. acidophilus in both free and
immobilized forms presented satisfactory rates of survival in milk and
acidified milk. ... The results showed that both microorganisms can be
added to milk and acidified milk because their population was only slightly
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Application 12/564,744
affected during storage." Grosso Abstract. Grosso discloses that the
presence of a traditional bacterial culture in yogurt is harmful to survival of
B. lactis (id.), but this result is of no consequence to the matter before us.
Combining Igoe with Grosso and Germond
Igoe teaches preparing a direct acidified yogurt using milk, common
food acids such as lactic acid, and 0 to 18% optional sweeteners such as
glucose, fructose, sucrose, maltose, and a thickener. Igoe col. 1, 11. 36-62.
Therefore, according to the Examiner, it would have been obvious to one of
ordinary skill in the art at the time of the invention to add glucose or maltose
as a sweetener to the product of Grosso and Germond. Non-Final Act. 6.
The Examiner urges that "the fact that Appellant has recognized another
advantage (shelf life) which would flow naturally from following the
suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious." Ans. 9 (citing Ex parte Obiaya,
227 USPQ 58, 60 (BP AI 1985 ).
Appellant argues that "the gist of Igoe' s invention is to provide a
means to 'prepar[e] yogurt which does not require fermentation'," thus
combining Igoe's non-microbial yogurt teachings with the microbial milk
beverage teachings in Grosso and Germond makes no sense and relies on
hindsight. App. Br. 16 (emphasis in original). Per Appellant, "the only
reason that Igoe adds 'growth promoting factors', such as glucose, is for the
purpose of optionally adding a carbohydrate sweetener," thus there is no
suggestion of any need to additionally include a sweetener in Grosso's
method. Id. (emphasis in original).
Appellant's position notwithstanding, the reason for combining
references does not have to be identical to that of the applicant in order to
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Application 12/564,744
establish obviousness. See Jn re Kemps, 97 F.3d 1427, 1430 (Fed. Cir.
1996). "As long as some motivation or suggestion to combine the references
is provided by the prior art taken as a whole, the law does not require that
the references be combined for the reasons contemplated by the inventor."
In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also PerfectWeb
Techs., Inc. v. InfoUSA, Inc. 587 F.3d 1324, 1329 (Fed. Cir. 2009) (an
analysis of obviousness "may include recourse to logic, judgment, and
common sense available to the person of ordinary skill that do not
necessarily require explication in any reference or expert opinion"). Here,
the Examiner provides the motivation of adding a sweetener in the form of
glucose or maltose, both identified as growth promoting factors in claim 1,
as disclosed in Igoe, to the process resulting from the combination of Grosso
and Germond. Ans. 9. Such motivation is sufficient to support the
combination of references. See KSR, 550 U.S. at 419--420:
In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed
purpose of the patentee controls. What matters is the objective
reach of the claim. If the claim extends to what is obvious, it is
invalid under § 103. . . . . The first error of the Court of
Appeals in this case was ... holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve.
Secondary considerations of non-obviousness
Appellant attempts to rebut the Examiner's conclusion of obviousness
with evidence of secondary considerations of non-obviousness. App. Br. 17.
Appellant relies on the Declaration of Haibo Ling as evidence of the failure
of others, long-felt by unsolved need, and unexpected results. Id. at 17-18.
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Application 12/564,744
The Ling Declaration, filed in a different application, 4 makes
statements about "the key features of the claimed invention." The Ling
Declaration does not mention a direct-acidified milk beverage or a process
for making same, which is the subject of the present invention. The
declaration provides no data on what was tested or how it was tested. The
declaration therefore does not provide persuasive evidence of failure of
others, long-felt by unsolved need, or unexpected results that support
patentability of claim 1.
After reviewing the evidence as a whole, we determine that the
Examiner did not reversibly err in rejecting claims 1---6, 8-10, and 21
DECISION
For the above reasons, the Examiner's rejection of claims 1---6, 8-10,
and 21 is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a) (1) (iv) (2015).
AFFIRMED
4 See Ling Deel. identifying the serial number of the application at issue is
12/564,762, as opposed to the present application serial number, which is
12/564,744.
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