WISCONSIN ALUMNI RESEARCH FOUNDATION

Patent Trials and Appeals Board

Jul 2, 2021

2020004682 (P.T.A.B. Jul. 2, 2021)

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.
13/800,068 03/13/2013 Scott A. Rankin 09820510-P130152US01 6030
60961 7590 07/02/2021
Intellectual Property Dept./DeWitt LLP
Wisconsin Alumni Research Foundation
2 East Mifflin Street,
Suite #600
Madison, WI 53703-2865
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/02/2021 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):
IP-DOCKET@dewittllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SCOTT A. RANKIN
__________

Appeal 2020-004682
Application 13/800,068
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, LINDA M. GAUDETTE, and
JANE E. INGLESE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
The Appellant1 filed an appeal under 35 U.S.C. § 134(a) from an Examiner’s
decision finally rejecting claims 1–17 under 35 U.S.C. § 103(a) as unpatentable
over Reddy.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. The Appellant identifies the real party in interest as Wisconsin Alumni
Research Foundation. Appeal Brief dated February 27, 2020 (“Appeal Br.”), at 2.
2 US 6,406,724 B1, to Reddy et al., issued June 18, 2002 (“Reddy”).
Appeal 2020-004682
Application 13/800,068

2

The claims on appeal are directed to a method of inhibiting browning in
aged cheeses by adding, during the manufacture of the cheese, an amount of a
reducing agent which is effective to inhibit methylglyoxal-mediated browning of
the cheese.
The Appellant discloses that
[t]he process will work with any type of cheese, but is particularly
beneficial for use with the relatively harder, low-moisture cheeses
typically used for grating or shredding. These types of cheese
include, but are not limited to Asiago, Grana Padano, Parmigiano-
Reggiano (i.e., Parmesan), and Pecorino Romano cheeses. Other
cheese types that benefit from the present method include Edam,
Cheddar, Red Leicester, and Cheshire cheeses.
Spec. 11, ll. 24–29.
Representative claim 1 is reproduced below from the Claims Appendix to
the Appeal Brief.
1. A method to inhibit browning in aged cheeses, the method
comprising adding to a cheese during its manufacture an amount of a
reducing agent, wherein the amount is effective to inhibit
methylglyoxal-mediated browning of the cheese, then aging the
cheese, wherein the cheese is selected from the group consisting of
Asiago, Grana Padano, Parmesan, and Romano.
Appeal Br., Claims Appendix 1 (emphasis added).
B. DISCUSSION
The Examiner finds Reddy discloses a method of adding a sulfur compound,
such as L-glutathione, to Parmesan cheese. Final Act. 3.3 The Examiner finds the
sulfur compound disclosed in Reddy corresponds to the claimed reducing agent4

3 Final Office Action dated July 25, 2019.
4 The Appellant’s claim 8 depends from claim 1 and recites that “the reducing
agent is selected from the group consisting of glutathione . . . .” Appeal Br.,
Claims Appendix 1.
Appeal 2020-004682
Application 13/800,068

3

and is “added to the cheese in an amount of from about 0.01% to 1.00% by weight
of the composition” which “overlaps the claimed range of about 1 to 100 µg per
gram recited in claims 2–5 and 9–12, and 14–17.” Final Act. 3. The Examiner
finds that “[t]he addition of [the] sulfur compound would naturally inhibit
browning.” Final Act. 3.
The Appellant argues that Reddy “is directed to a flavoring system, not an
anti-browning system.” Appeal Br. 8. More specifically, the Appellant argues that
Reddy adds glutathione as a fermentation substrate to make a sulfury-cheddar
flavor component, not a cheese within the scope of claim 1,5 and the glutathione is
consumed during fermentation. Appeal Br. 5–6 (citing Reddy, col. 11, l. 53–col.
12, l. 17).
The Appellant’s argument is persuasive of reversible error. The Examiner
finds that the sulfur compounds disclosed in Reddy “are provided to create redox
equilibrium conditions which facilitate flavor production by the generation of
desirable sulfur flavor compounds.” Final Act. 3 (citing Reddy, col. 13, ll. 15–30).
Indeed, Reddy discloses that
[t]he sulfur-containing substrates are added to assist in the production
of sulfur compounds important in cheddar, especially sharp cheddar,

5 The Appellant argues that “the specific types of cheese recited in the claims [i.e.,
Asiago, Grana Padano, Parmesan, and Romano] are defined by law” and the
Appellant has “explicitly stated on the record that [it is] using the cheese types
recited in the claims as those cheese types are defined by law.” Appeal Br. 4. The
Appellant also argues that “the claims necessarily incorporate the legally defined
process steps required to yield [the claimed] cheese.” Id. We note that the
Appellant does not direct us to any portion of the original disclosure stating that
the cheeses recited in the claims on appeal (i.e., Asiago, Grana Padano, Parmesan,
and Romano) are used according to their legal definitions. Nonetheless, it is not
necessary to address the Appellant’s argument in view of our reasons for reversing
the Examiner’s decision.
Appeal 2020-004682
Application 13/800,068

4

flavor development. Preferred sulfur-containing substrates include
L-methionine, L-glutathione, L-cysteine, and mixtures thereof. . . .
The tri-peptide L-glutathione . . . and the amino acid L-cysteine, in
addition to serving as substrates, also act as processing aids to create
redox equilibrium conditions which facilitate flavor production by the
generation of desirable sulfur flavor compounds . . . . Hydrolysis of
L-glutathione to free amino acids by microbial enzymes is expected
during the fermentation period.
Reddy, col. 12, l. 66–col. 13, l. 14.
Reddy discloses that the flavor component is subsequently “added to the
milk substrate used to produce the cheese.” Reddy, col. 4, ll. 14–17 (emphasis
added); see also Reddy, col. 5, ll. 2–4 (disclosing that “[t]he present flavoring
system is especially adapted for incorporation into a cheese or dairy base to
produce cheese products”). According to Reddy, further hydrolysis may occur
during incorporation of the flavor component into the cheese base and “expected
levels of L-glutathione in the final cheese product (i.e., the flavored cheese product
produced with the present cheese flavor system) are less than about 10 ppm.”
Reddy, col. 13, ll. 14–19 (emphasis added).
Claim 1 recites that a reducing agent is added to a cheese during its
manufacture in an amount “effective to inhibit methylglyoxal-mediated browning
of the cheese.” Appeal Br., Claims Appendix 1. The Examiner finds Reddy
discloses adding L-glutathione to a cheese in an amount of from about 0.01% to
1.00% by weight, which is said to overlap the range of about 1 to 100 µg per gram
recited in claims 2–5, 9–12, and 14–17. Final Act. 3. Reddy, however, discloses
that the sulfur-containing substrates, such as L-glutathione, are used in an amount
of about 0.01% to about 1% to prepare the flavor component, not the cheese itself.
Reddy, col. 11, ll. 53–67.
Appeal 2020-004682
Application 13/800,068

5

As discussed above, the sulfury-cheddar flavor component in Reddy is
prepared by, inter alia, fermenting L-glutathione. See Reddy, col. 13, ll. 12–14
(disclosing that “[h]ydrolysis of L-glutathione to free amino acids by microbial
enzymes is expected during the fermentation period”); see also Appeal Br. 5
(arguing that glutathione is consumed during fermentation). On this record, the
Examiner has failed to show, in the first instance, that Reddy’s flavor component,
when added to a milk substrate to produce cheese, would have been expected to
comprise a sufficient amount of L-glutathione to inhibit browning of the cheese as
recited in claim 1. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“the
examiner bears the initial burden . . . of presenting a prima facie case of
unpatentability”). For that reason, the obviousness rejection of claims 1–17 is not
sustained.
C. CONCLUSION
The Examiner’s decision is reversed.
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–17 103(a) Reddy 1–17

REVERSED