The Quaker Oats Company

Patent Trials and Appeals Board

May 3, 2021

2020003338 (P.T.A.B. May. 3, 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.
15/077,670 03/22/2016 Khushal Brijwani 2189-292461 9413
23644 7590 05/03/2021
Barnes & Thornburg LLP (CH)
P.O. Box 2786
Chicago, IL 60690-2786
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
Patent-ch@btlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KHUSHAL BRIJWANI, GARY CARDER,
YONGSOO CHUNG, URSULA VANESA LAY MA,
JOHN SCHUETTE, and WESLEY TWOMBLY
____________

Appeal 2020–003338
Application 15/077,670
Technology Center 1700
____________

Before JEFFREY T. SMITH, CHRISTOPHER C. KENNEDY, and
MERRELL C. CASHION, JR., Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21 and 47–70. 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. Appellant identifies the real party in interest as PepsiCo,
Inc. Appeal Br. 3.
Appeal 2020–003338
Application 15/077,670

2
Appellant’s invention generally relates to processes for forming
products and compositions including hydrolyzed starch and fiber for
providing benefits such as reduced viscosity and better mouthfeel, in
combination with benefits of unhydrolyzed starch and fiber, such as those
found in whole grains and others. Spec. ¶ 2, 4. Claim 1 illustrates the
invention and is reproduced below.
1. A composition comprising:
hydrolyzed material made by hydrolyzing starch and fiber to a
controlled extent in at least one material selected from the group
consisting of at least a portion of grain and at least a portion of pulse,
thereby providing the hydrolyzed material;

wherein the hydrolyzed material comprises hydrolyzed starch and
hydrolyzed fiber;

wherein the hydrolyzed starch consists of all starch in the
hydrolyzed material and wherein the hydrolyzed starch comprises
hydrolyzed starch molecules that have been reduced in molecular weight
so that the hydrolyzed starch molecules have not been converted to non–
starch molecules;

wherein the average molecular weight of the hydrolyzed starch
molecules in the hydrolyzed material is from 0.10 to 0.80 of the average
molecular weight of unhydrolyzed starch molecules in the at least one
material;

wherein the hydrolyzed fiber consists of all fiber in the hydrolyzed
material, and wherein the hydrolyzed fiber comprises hydrolyzed fiber
molecules that have been reduced in molecular weight so that the
hydrolyzed fiber molecules have not been converted to non–fiber
molecules; and

wherein the average molecular weight of the hydrolyzed fiber
molecules in the hydrolyzed material is from 0.10 to 0.80 of the average
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molecular weight of unhydrolyzed fiber molecules in the at least one
material.

Appeal Br. 21 (Claims App.).

Appellant requests review of the following rejections:
I. Claims 1–21 and 47–70 are rejected under 35 U.S.C. § 112(b)
as being indefinite for failing to particularly point out and distinctly claim
the subject matter of the invention.

II. Claims 1–21 and 47–70 are rejected under 35 U.S.C. § 103 as
unpatentable over Likimani et al. (J. Food Sci., published Jan. 1991) in view
of Lehtomaki et al. (US Patent 8,742,095 B2, issued June 3, 2014).

III. Claims 67–68 are rejected under 35 U.S.C. § 103 as
unpatentable over Likimani, Lehtomaki, and further in view of Hagiwara et
al. (US Patent 5,346,890, issued Sept. 13, 1994) and Zimmerman et al. (US
Patent 5,514,387, issued May 7, 1996).

OPINION
After review of the respective positions the Appellant provides in the
Appeal and Reply Briefs and the Examiner provides in the Final Action and
the Answer, we REVERSE the Examiner’s rejection of claims 1–21 and 47–
70 under 35 U.S.C. § 112(b) and we REVERSE the Examiner’s prior art
rejections of claims 1–21 and 47–70 under 35 U.S.C. § 103 for the reasons
Appellant presents. We add the following.2

REJECTION UNDER § 112(b) – Indefiniteness

2 We limit our discussion to independent claim 1.
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The text of 35 U.S.C. § 112 (b) requires “[t]he specification shall
conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the inventor or a joint inventor regards as
the invention.” “As the statutory language of ‘particular[ity]’ and
‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Thus, the test for determining the question of
indefiniteness may be formulated as whether the claims “set out and
circumscribe a particular area with a reasonable degree of precision and
particularity.” In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). With regard
to the reasonableness standard, one must consider the language in the
context of the circumstances. Packard, 751 F.3d at 1313. Language is an
imprecise method of drawing boundaries delineating patent rights, thus
unreasonable precision cannot be demanded. Id. On the other hand, the
claims must notify the public of what they are excluded from making and
using. Id. For this reason, while exact precision is not required, an applicant
is required to use language as precise as the subject matter reasonably
permits. Id.
Claim 1 recites (1) “wherein the hydrolyzed starch comprises
hydrolyzed starch molecules that have been reduced in molecular weight so
that the hydrolyzed starch molecules have not been converted to non-starch
molecules” and (2) “wherein the average molecular weight of the
hydrolyzed starch molecule in the hydrolyzed material is from 0.10 to 0.80
of the average molecular weight of unhydrolyzed starch molecules in the at
least one material.”
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The Examiner determines claim 1 is indefinite because the first
recitation of claim 1 noted above recites the exclusion of “non–starch
molecules” from the hydrolyzed starch while, at the same time, the second
recitation recites that non-starch molecules are present. Final Act. 4.
According to the Examiner, the contradictory recitations raise an
indefiniteness issue in claim 1 because the second recitation “implies that the
average molecular weight of the hydrolyzed starch molecules is from 10% to
80% of the unhydrolyzed starch molecules… [and] any average molecular
weight below 100% of the average molecular weight of the unhydrolyzed
starch may be considered as the extent of hydrolysis” and is an indication
that “non-starch molecules exist in the hydrolyzed starch.” Id.
Appellant argues the Examiner disregards the limitation of
hydrolyzing starch “to a controlled extent” and reads into the claim the total
hydrolysis resulting in non–starch molecules. Appeal Br. 9. Appellant argues
the average molecular weight of the starch molecules is reduced to a fraction
of the original molecular weight by selective reduction of the starch
molecules to the smallest molecules which still constitute starch and are not
converted to non–starch, such as sugars. Appeal Br. 10. Appellant further
argues the presence of hydrolyzed starch and the absence of non–starch
molecules are not mutually exclusive. Reply Br. 2.
We do not sustain the Examiner’s rejection. The Specification
describes for example the starch molecules have an average molecular
weight that can vary from 3.42 x l06 Dalton to 1.37 x l06 Dalton. Spec. ¶
138. The Specification further states:
[I]n Table 16 it is evident that the average molecular weight of the
starch can be reduced to any value in the range from the starting value
(e.g., 3.873xl06 Dalton) to the listed hydrolyzed value (e.g., 1.729 xl06
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Dalton). As another example, individual components (e.g., HMW-
amylopectin, LMW-amylopectin, and amylase) within the starch can
be similarly reduced in molecular weight to any value in a range
whose endpoints are selected from the listed values. Additionally,
even lower molecular weights can be achieved, as long as the starch
molecules are not converted to non-starch molecules.

Spec. ¶ 138.

Thus, the limitation of hydrolyzing the starch and fiber “to a
controlled extent” is further defined by the reduction in the average
molecular weight of each set forth in the claim. As explained by Appellant
and described in the Specification, the hydrolysis of the starch and fiber
molecules will necessarily result in starch and fiber molecules which have a
reduced molecular weight and therefore when hydrolysis is performed to a
certain extent non–starch molecules and non–fiber molecules will not result.
Accordingly, we reverse the Examiner’s indefiniteness rejections
under 35 U.S.C. §112(b) for claims 1–21 and 47–70 for the reasons
Appellant presents and we give above.

REJECTION UNDER 35 U.S.C. § 103
In view of the Examiner’s rejection of claim 1 under 35 U.S.C.
§112(b), the Examiner sets forth the interpretation of claim 1 as a
composition “comprising whole grain and/or pulse wherein starch and fiber
have been minimally hydrolyzed”. Final Act. 5.
We refer to the Examiner’s Final Office Action and the Answer for a
complete statement of the rejection of claim 1. Final Act. 6–8; Ans. 6–8.
Briefly, the Examiner finds Likimani teaches a composition including
corn and soybeans hydrolyzed using α–amylase, and the starch component is
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minimally hydrolyzed, which causes a decrease in viscosity and comprises
an insignificant concentration of low molecular weight sugars. Final Act. 7.
The Examiner finds Likimani is silent to an enzyme resulting in fiber
hydrolysis. Final Act. 6. The Examiner relies on Lehtomaki teaching the
combination of α–amylase and β–glucanase to hydrolyze fiber in a
composition comprising starch, such as oat bran, to decrease the molecular
weight of the beta–glucan by breaking it up by means of the enzymes in a
controlled manner. Final Act. 6–7.
The Examiner determines that since Likimani and Lehtomaki disclose
various processing conditions (enzymes and concentrations, reaction times,
composition moisture content), these are result effective variables that would
be optimized for any grain/pulse mixture without undue experimentation.
Final Act. 7. The Examiner also determines it would have been obvious to
one of ordinary skill in the art to minimally hydrolyze the starch for any
grain/pulse mixture using α–amylase so the resulting product may be
dispersed in aqueous media with reduced viscosity compared to an untreated
mixture, and so the resulting product may be recognized as a whole
grain/pulse product. Final Act. 7–8.
Appellant argues Likimani teaches the hydrolysis of starch was so
extensive the viscosity, which is a proxy for the extent of hydrolysis,
decreased substantially, and thus non–starch molecules such as glucose and
other molecules are therefore present. Appeal Br. 15–16, Reply Br. 3, 5.
Appellant further argues the rejection does not articulate motivation to
reduce the extensive hydrolysis of starch taught by Likimani to the claimed
degree. Appeal Br. 16.
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In the Answer, the Examiner argues the rejection is not anticipation
but obviousness from optimizing various result effective variables to obtain
any degree of hydrolysis, as Likimani indicates additional studies for
optimization of extrusion conditions are needed. Ans. 10, 13, 20–21.
Appellant’s argument is persuasive of reversible error in the
Examiner’s determination of obviousness.
As the Examiner acknowledges in the rejection, Likimani’s disclosed
hydrolysis results in non–starch molecules being present. Final Act. 7.
While the Examiner concludes the optimization of the various parameters is
within the ambit of one of ordinary skill in the art, the general allegation that
it is possible to optimize numerous result effective variables to any degree
does not establish a technical basis for one to seek or obtain a low hydrolysis
of the starch and fiber molecules such that no non–starch and non–fiber
molecules would be present.
Accordingly, we reverse the prior art rejection of claims 1–21 and 47–
70 under 35 U.S.C. § 103 for the reasons Appellant presents and those we
provide above.

DECISION SUMMARY

In summary:

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21, 47–70 112(b) Indefiniteness 1–21, 47–70
1–21, 47–70 103 Likimani and
Lehtomaki
1–21, 47–70
67–68 103 Likimani,
Lehtomaki,
67–68
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Hagiwara, and
Zimmerman
Overall
Outcome
1–21, 47–70

REVERSED