Ex Parte Okamoto et al

Patent Trial and Appeal Board

Jul 30, 2013

11625487 (P.T.A.B. Jul. 30, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/625,487 01/22/2007 Takamitsu Okamoto SIP025 8560
32047 7590 07/31/2013
GROSSMAN, TUCKER, PERREAULT & PFLEGER, PLLC
55 SOUTH COMMERICAL STREET
MANCHESTER, NH 03101
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
07/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT AND TRIAL APPEAL BOARD
____________

Ex parte TAKAMITSU OKAMOTO, YUKIHIRO NOBUTA
and NOBUHIRO YAJIMA

____________

Appeal 2012-003076
Application 11/625,487
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-003076
Application 11/625,487

2
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1 through 14. We have jurisdiction under 35 U.S.C. § 6.
Appellants’ invention is directed to a method for producing a
fermented food or drink product. App. Br. 5. Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A method for producing a fermented food or drink product,
comprising:

adding a strain of lactic acid bacteria which belongs to Lactobacillus
brevis to a medium whose pH has been adjusted to 4.6 to 7.0, said medium
including: a vegetative raw material in an amount of 50% or more converted
to a juice thereof; and 0.2 to 2.0% by mass of malic acid or 2.0 to 20.0% by
mass of fructose;

fermenting said medium so that the pH of said medium becomes 4.3
or greater and less than 7.0 to obtain a fermented product which contains the
number of living cells of the Lactobacillus brevis of 1x108 cfu/ml or greater;
and

adjusting pH of said fermented product to 3.3 to 4.1 by using an acid
to prevent the change in the number of said living cells of Lactobacillus
brevis when storing said fermented product at 10°C for three weeks.

The Examiner relied on the following references in rejecting the
appealed subject matter:
Murao1 JP 03236741 A Oct. 22, 1991
Savard, Sciences Des Aliments 23: 273-283 (2003)2

1 We rely on the translation document PTO 11-2093 of the Murao reference
in our discussion of the rejection. The translation was made of record by the
Examiner on September 7, 2011.
Appeal 2012-003076
Application 11/625,487

3

Appellants, App. Br. 6, request review of the following
rejection from the Examiner’s final Office action mailed August 27,
2010:
Claims 1-14 stand rejected under 35 U.S.C. 103(a) as unpatentable
over Murao and Savard.
OPINION
The dispositive issue for this rejection is: Did the Examiner err in
determining that the combination of Murao and Savard would have led one
skilled in the art to a method for producing a fermented food or drink
product comprising the step of adjusting pH of the fermented product to 3.3
to 4.1 by using an acid to prevent the change in the number of said living
cells of Lactobacillus brevis when storing said fermented product at 10°C
for three weeks as required by the subject matter of independent claim 1?3
After thorough review of the respective positions provided by
Appellants and the Examiner, we answer in the negative and AFFIRM for
the reasons presented by the Examiner and add the following.
The Examiner found that Murao4 discloses a method for producing a
fermented drink product with decreased acidity and improved taste and
flavor comprising the steps of fermenting a fruit or vegetable medium

2 We rely on the translation document PTO 11-2092 of the Savard reference
in our discussion of the rejection. The translation was made of record by the
Examiner on September 7, 2011.
3 We will limit our discussion to independent claim 1. Appellants have not
argued the dependent claims separately. Accordingly, claims not argued
separately will stand or fall together with independent claim 1.
4 Both Appellants and Examiner refer to this reference as reference R1 in
their respective discussions. See Answer generally; see Appeal Brief
generally.
Appeal 2012-003076
Application 11/625,487

4
previously treated with a lactic bacteria capable of performing malolactic
fermentation. Ans. 5-6. The Examiner also found that Murao does not
disclose the pH adjustments and the viability of organisms upon storage of
the product. Id. at 6. The Examiner found that Savard5 teaches pH is a
limiting parameter for the introduction of viable cultures having potential
probiotic properties in fermented vegetable products. Id. at 7. The
Examiner additionally found that Savard discloses the growth and survival
of lactic acid bacteria, including Lactobacillus brevis, in a vegetable juice
medium with a viability loss of less than one log for cultures at 4oC for 30
days when the fermented vegetable juice has a pH of 3.65. Id. The
Examiner concluded that it would have been obvious to one skilled in the art
to modify the process of Murao to employ Lactobacillus brevis as the
fermenting organism and to adjust the pH of the fermented medium to the
values where the probiotics would have high survival rate under
refrigeration conditions to produce a fermented vegetable juice in which the
probiotic organism is viable during the storage period as disclosed by
Savard. Id. at 8.
Appellants argue that Savard discloses a viability loss in cultures
incubated for 30 days at 4oC in fermented vegetable juice at a pH of 3.65
while viable populations remained significantly higher during storage when
the pH of the fermented vegetable juice was adjusted to 6.5 at the beginning
of incubation. App. Br. 13. Appellants further argue that this disclosure
teaches away from the claimed invention and would suggest to one skilled in

5 Both Appellants and Examiner refer to this reference as reference R2 in
their respective discussions. See Answer generally; see Appeal Brief
generally.
Appeal 2012-003076
Application 11/625,487

5
the art that this higher pH would be desirable over the acidic pH to maintain
the number of living cells at the beginning of storage. App. Br. 13; Reply
Brief 5-6.
We are unpersuaded by Appellants’ arguments and agree with the
Examiner’s determination of obviousness. Ans. 7-9.
The subject matter of independent claim 1 seeks to maintain the
viability of cultures over a short term period (three weeks). Claim 1. Savard
discloses that its purpose is to verify if the acidity of the VJMF-A
(fermented juice medium) per se was the determining factor of the viability
of the cultures. Savard 13. As noted by both Appellants and the Examiner,
Savard recognizes that viable cultures in a fermented juice medium having
an acidic pH (3.65) survive with minimal loss for a short term period of 30
days.6 App. Br. 13; Ans. 6-7; Savard 11. Given this disclosure, one skilled
in the art would understand that a fermented medium having an acidic pH
would be acceptable to maintain viable cultures over a short term period.
Moreover, Savard’s disclosure of maintaining the viability of cultures for a
period of 30 days in an acidic fermented vegetable medium also provides a
teaching that such a technique may be used while accompanied by certain
disadvantages, such as increased mortality rates of the viable cultures after
the 30 day period. Savard 11. See, e.g., In re Gurley, 27 F.3d 551, 552-53
(Fed. Cir. 1994) (“We share Gurley’s view that a person seeking to improve
the art of flexible circuit boards, on learning from Yamaguchi that epoxy
was inferior to polyester-imide resins, might well be led to search beyond
epoxy for improved products. However, Yamaguchi also teaches that epoxy

6 We note that Figure 2’s central graph for Lactobacillus brevis does not
show a decrease in living cultures at a pH of 3.65. Savard 14.
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Application 11/625,487

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is usable and has been used for Gurley’s purpose.”). Furthermore, it is well
settled that the use of non-preferred embodiments of the prior art are obvious
to one of ordinary skill in the art. In re Burckel, 592 F.2d 1175, 1179
(CCPA 1979); In re Susi, 440 F.2d 442, 446 n.3 (CCPA 1971).
While Savard also discloses the use of neutralized fermented medium
to maintain the viability of cultures over an extended period beyond 30 days,
Appellants have not disputed that the use of an acidic fermented vegetable
medium to maintain the viability of cultures for a short term period (30 days)
is known to persons of ordinary skill in the art. A person of ordinary skill in
the art would have had sufficient knowledge of the prior art and skill to
utilize known techniques for obtaining the appropriate level of viable
cultures for the desired storage duration.
Accordingly, we affirm the Examiner’s rejection of claims 1-14 under
35 U.S.C. § 103(a) as unpatentable over Murao and Savard for the reasons
given above and presented by the Examiner.
ORDER
The rejection of claims 1-14 under 35 U.S.C. 103(a) as unpatentable
over Murao and Savard is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

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