Ex Parte Pereyra et al

Patent Trial and Appeal Board

Mar 11, 2019

13414184 (P.T.A.B. Mar. 11, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/414,184 03/07/2012
110933 7590 03/11/2019
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Ricardo Pereyra
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.
CQKER.4039 2984
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/11/2019 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 TRIAL AND APPEAL BOARD
Ex parte RICARDO PEREYRA and WILLIAM MUTILANGI
Appeal2018-004627
Application 13/414, 184
Technology Center 1700
Before BEYERL YA. FRANKLIN, LINDA M. GAUDETTE, and
JEFFREY R. SNAY, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1-7, 9-11, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Pereyra3 in view of French4 and Inglett5. See Final 2; Appeal Br.
2. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 This Decision includes citations to the following documents: Specification filed
Mar. 7, 2012 ("Spec."); Final Office Action dated Jan 12, 2017 ("Final"); Appeal
Brief filed Aug. 11, 2017 ("Appeal Br."); and Examiner's Answer dated Jan. 24,
2018 ("Ans."). We have also considered the Reply Brief filed Mar. 26, 2018.
2 The Appellants identify the real party in interest as PepsiCo, Inc. Appeal Br. 2.
3 US 2010/0015306 Al, published Jan. 21, 2010.
4 US 2010/0316765 Al, published Dec. 16, 2010.
5 US 4,996,063, issued Feb. 26, 1991.
Appeal2018-004627
Application 13/414, 184
The invention relates to a method of making a low viscosity, whole grain,
flour slurry via enzymatic action for use, e.g., in high acid, ready-to-drink
beverages. Spec. ,r 1. The inventive method is said to provide a more cost-effective
and time-effective method for preparing a low viscosity, whole grain, flour slurry
than traditional methods, such as subjecting the flour slurry to a colloid mill and
adding an enzyme to the whole grain flour slurry. Id. ,r,r 4--5. Claim 1, the sole
independent claim on appeal, is reproduced below.
1. A method for preparing a low viscosity whole grain flour slurry
comprising the following steps to be performed in the order listed:
a) dispersing whole grain flour in water at a ratio of 1 :8 to 1 :20
at a temperature of 87 to 99 °C to obtain a flour-water mixture;
b) reducing the temperature of the flour-water mixture to 49-
71 °C·
'
c) adding alpha-amylase to reduce the viscosity of the flour-
water mixture to 40 to 60 cp when measured at about 70 °C, wherein
alpha-amylase is the only enzyme added to the mixture;
and
d) acidifying the flour-water mixture to reduce the pH of the
flour-water mixture to less than 5 and to obtain a low viscosity whole
grain flour slurry wherein about 50 percent of the flour contained in
the slurry has an average particle size of less than 91 microns.
Appeal Br. 38 (Claims Appendix).
The Examiner finds Pereyra discloses a method for preparing a low
viscosity, whole grain, flour slurry comprising steps that are substantially the same
as steps a) and d) of claim 1. Final 3 ( citing Pereyra ,r,r 9-15, 20, 21 ); see also
Pereyra, at [57], claim 1. Pereyra discloses the slurry may be used in a beverage to
provide "a healthy and easily consumable product with enhanced texture and
drinkability." Pereyra ,r 5. The Examiner finds Pereyra discloses that enzymes may
be used to reduce the viscosity of whole grain flour slurries, but a drawback of
2
Appeal2018-004627
Application 13/414, 184
using enzymes is their high cost. Final 3 ( citing Pereyra ,r,r 4--5). Pereyra discloses
another disadvantage of using enzymes is that they hydrolyze the flour, thereby
modifying its structure and causing the flour to lose its standard of identity as a
whole grain. Pereyra ,r 4.
French discloses "a method for preparing a highly dispersible whole grain
flour" (French ,r 2) that utilizes an enzyme to hydrolyze the flour (id. ,r 13). French
discloses that the standard of identity of the flour as a whole grain can be
maintained by adding "any enzyme that hydrolyzes the alpha 1-4 bonds on the
[amylopectin] molecule that makes up the starch portion of the whole grains," e.g.,
alpha amylase. Id. French discloses the hydrolyzed whole grain flour is highly
dispersible in liquid and has "an improved mouthfeel and improved consumer
acceptance." Id. ,r 5. The Examiner finds "one of ordinary skill in the art [would]
have modified Pereyra's step c and add[ed] only alpha amylase for benefits
disclosed ... by French." Final 4. The Examiner relies on Inglett for a teaching of
reducing the temperature of the flour-water mixture as recited in claim 1, step b),
finding Inglett discloses that "alpha amylase is treated (and thus activated) at 70-
100 degrees C." Id. at 5.
The Appellants argue the description of adding enzymes to a flour-water
slurry cited by the Examiner is not part of Pereyra' s inventive acidification
process. Appeal Br. 12. The Appellants contend there is no disclosure or
suggestion in Pereyra that an enzyme can be used in combination with an acidulant
to prepare a low viscosity, whole grain, flour slurry. Id. at 13.
The Appellants' argument is supported by the disclosure in Pereyra.
Compare Pereyra ,r 4 ("Adding an enzyme to the flour-water slurry to reduce the
viscosity is ... extremely disadvantageous .... "), with id. ,r 8 ("[T]he present
invention relates to a method for preparing a low viscosity whole grain flour slurry
3
Appeal2018-004627
Application 13/414, 184
by acidifying a flour-water slurry."). Although the Examiner has identified a
teaching in Pereyra of a method comprising claim 1, steps a) and d) (see Final 3
(citing Pereyra ,r,r 10-13)), we find no support for the Examiner's finding that
Pereyra discloses or suggests a method comprising a combination of claim 1, steps
a), c), and d), with the exception of the specified enzyme, alpha amylase (see Final
4). 6 The Examiner has failed to clearly identify any teaching or suggestion in the
prior art that would have prompted the ordinary artisan to add an enzyme to
Pereyra's acidification process; nor has the Examiner explained why the ordinary
artisan would have had a reasonable expectation of success in making such
modification. See Appeal Br. 11-13; see generally Ans. 9-18.
In conclusion, because the Appellants have argued persuasively that the
Examiner's conclusion of obviousness is based on improper hindsight reasoning,
we do not sustain the rejection of claims 1-7, 9-11, and 24.
REVERSED
6 We further note that the only methods in Pereyra that appear to include a "step c"
are the methods recited in claims 9 and 14, neither of which is a step of adding an
enzyme. Compare Final 4 (discussing modifying "Pereyra's step c" to use only an
alpha amylase), with Pereyra claim 9 (reciting "step c) adding at least one food-
grade ingredient selected from ... sweeteners, stabilizers" and Pereyra claim 14
("c) adding the low viscosity whole grain flour slurry to a beverage.").
4