Ex Parte Myllärinen et al

Patent Trial and Appeal Board

Jul 26, 2017

13318881 (P.T.A.B. Jul. 26, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/318,881 11/04/2011 Paivi Myllarinen GPK-227-182 4117
23117 7590 07/28/2017
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
WONG, LESLIE A
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/28/2017 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte PAIVI MYLLARINEN and KIRSI RAJAKARI1
Appeal 2017-000814
Application 13/318,881
Technology Center 1700
Before BEVERLY A. FRANKLIN, N. WHITNEY WILSON, and DEBRA
L. DENNETT, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the real party in interest as Valio Ltd., a corporation of
Finland.
Appeal 2017-000814
Application 13/318,881
Appellants request our review under 35 U.S.C. § 134 of the
Examiner’s decision rejecting claims 1—14 and 18—39. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A process for the preparation of a milk protein fraction
containing product, wherein the process comprises the following steps
- using a milk protein fraction produced by membrane filtration
consisting of ultrafiltration as the sole membrane filtration or by
chromatographic separation and having a protein content in the range of 65
to 95%, fat content less than 10% and carbohydrate content less than 15% of
the dry matter,
- optionally evaporating, condensing and/or enzyme-treating the milk
protein fraction with lactase,
- optionally heat-treating and/or microfiltering,
- modifying the protein of the milk protein fraction with a cross-
linking enzyme,
- adding at least one mineral, sweetener and/or fibre, when necessary,
- adding flavouring agents, if desired, and/or
- optionally further-treating and/or packaging the obtained product.
The Examiner relies on the following prior art references as evidence
of unpatentability:
STATEMENT OF THE CASE
Khorkova
Tervala
US 4,756,913
WO 2006/087409 A1
WO 2008/071841 A1
WO 2008/077071 A1
Jul. 12, 1988
Aug. 24, 2006
Jun. 19, 2008
Jun. 26, 2008
Myllarinen
Ur-Rehman
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Appeal 2017-000814
Application 13/318,881
THE REJECTIONS
1. Claims 11—14 and 34 are rejected under pre-AIA 35 U.S.C.
§103 (a) as being unpatentable over Khorkova.
2. Claims 1—14 and 18—39 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Tervala or Ur-Rehman in view of
Myllarinen.
ANALYSIS
We reverse each rejection essentially based upon Appellants’ stated
position in the record. We add the following for emphasis.
Rejection 1
The Examiner finds that Khorkova discloses a sour milk product
which is composed of proteins, milk and vegetable fats, lactose, dextrin
maltose, saccharose, water, bifidobacteria, ferrous sulfate and vitamins, A,
D2, E, C, Bi, EE, B3, B6, and PP. Khorkova, entire document, Abstract; Ans.
2. The Examiner states, inter alia, that the claimed protein content would
be obvious to that of Khorkova “as the same components are used”, and
does not refer specific amounts of protein taught by Khorkova. Id.
This logic utilized by the Examiner lacks requisite underpinnings in
support of aprima face case. The examiner bears the initial burden of
factually supporting any prima facie conclusion of obviousness. The key to
supporting any prima facie conclusion of obviousness under 35 U.S.C. § 103
is the clear articulation of the reason(s) why the claimed invention would
have been obvious. The Supreme Court in KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 418 (2007) noted that the analysis supporting a rejection under
35 U.S.C. § 103 should be made explicit. The Federal Circuit has stated that
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Appeal 2017-000814
Application 13/318,881
“rejections on obviousness grounds cannot be sustained with mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006); see also
KSR, 550 U.S. at 418.
Appellants explain how Khorkova’s protein content differs from the
claimed amount. Appeal Br. 14—15. Appellants also argue that proposed
changes would require extensive modification to the invention of Khorkova
for the reasons stated on pages 15—16 of the Appeal Brief.
On page 5 of the Answer, the Examiner responds by stating that the
amount of protein is within the skill of the art. Again, however, no apparent
reason is provided by the Examiner for modifying Khorkova’s amount of
protein to arrive at the claimed amount of protein. Knowledge alone is
insufficient rationale (e.g., stating that because such a modification was
within the knowledge of a person of ordinary skill in the art it would have
been obvious) when no evidence or explanation in the record that would lead
to the proposed modification is provided (as in the instant case). Appellants
validly make this point on page 1 of the Reply Brief.
In view of the above, we reverse Rejection 1.
Rejection 2
Appellants argue, inter alia, that the methods of claims 1 and 18 each
recite that the particular milk protein fraction produced by membrane
filtration consisting of ultrafiltration as the sole membrane filtration (or by
chromatographic separation), and the methods of claims 24 and 35 each
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Appeal 2017-000814
Application 13/318,881
recite that the particular milk protein fraction is the sole and only source for
milk-based proteins. Appeal Br. 8. Appellants argue that the applied art
does not suggest this claimed subject matter for the reasons set forth on
pages 8—11 of the Appeal Brief.
The Examiner responds by stating that these separation steps argued
by Appellants are not positively recited in the claims. Ans. 4.
In reply, Appellants argue that the Examiner’s claim interpretation is
in error. Reply Br. 1. Appellants reiterate that the methods of claims 1 and
18 each recite that the particular milk protein fraction is produced by
membrane filtration consisting of ultrafiltration as the sole
membrane filtration (or by chromatographic separation), and the methods of
claims 24 and 35 also recite that the particular milk protein fraction is the
sole and only source for milk-based proteins. Reply Br. 2.
We are in agreement with Appellants that the claims require a sole
milk protein source for the reasons stated in the record. As such, we also
agree with Appellants that the Examiner has not addressed this element of
the claims. To establish prima facie obviousness of a claimed invention, all
the claim limitations must be taught or suggested by the prior art. “When
determining whether a claim is obvious, an examiner must make a searching
comparison of the claimed invention, including all its limitations, with the
teaching of the prior art.” In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995).
In view of the above, we reverse Rejection 2.
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Appeal 2017-000814
Application 13/318,881
DECISION
Each rejection is reversed.
ORDER
REVERSED
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