IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of: U.S. Patent No. 8,361 ,235
`
`IPR Case No.: To Be Assigned
`
`Filed: To Be Filed
`
`Issued: January 29, 2013
`
`Inventors:
`
`F osdick, Lawrence E.; Helstad, Scott; J asinski, Yauching W.; Zheng,
`Guo—hua
`
`Assignee: Cargill, Incorporated
`
`Title: LOW—VISCOSITY REDUCED—SUGAR SYRUP, METHODS OF
`
`MAKING, AND APPLICATIONS THEREOF
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`DECLARATION OF DR. WILLIAM S. YORK IN SUPPORT OF
`
`PETITION FOR INTER PARTES REVIEW UNDER 37 C.F.R § 42.100
`
`

`
`TABLE OF CONTENTS
`
`Overview ....................................................................................................... .. 1
`
`II.
`
`III.
`
`IV.
`
`VI.
`
`.0T“F’F3CF73?>
`
`3
`
`Qualifications ................................................................................................ .. 6
`
`My Understanding of Patent Law ................................................................. .. 7
`
`Subject Matter of the ‘235 Patent ................................................................. .. 8
`
`Level of Ordinary Skill in the Art ................................................................. .. 9
`
`Analysis of the References and the Claims of the ‘235 Patent ..................... .. 9
`
`State of the Art as of May 9, 2008 ................................................................ .. 9
`
`Basis of My Analysis with Respect to Anticipation ................................... .. 13
`
`Basis of My Analysis with Respect to Obviousness .................................. .. 14
`
`Claims 1, 2, 4, 6-9, and 11-17 are Anticipated by Verwaerde ................... .. 15
`
`Claims 1, 2, 4, 6-9, and 11-17 are Obvious over Verwaerde ..................... .. 23
`
`Claims 1, 2, 4, 6-9, and 11-17 are Obvious over
`
`Verwaerde in view of JP ‘596 .................................................................... .. 23
`
`Claims 1, 4, 6, 8, 11, 12, 14 and 15 are Anticipated by Ramsay ................ .. 24
`
`Claims 1, 4, 6, 8, 11, 12, 14 and 15 are Obvious over
`
`Ramsay in View ofJP ‘596 ......................................................................... .. 36
`
`Claims 16 and 17 are Obvious over Ramsay in view of JP ‘265 ............... .. 37
`
`5-4
`
`Claims 1, 4, 6, 8, 11, 12, 14 and 15 are Anticipated by JP ‘794 ................ .. 38
`
`Claims 1, 4, 6, 8, 11, 12, 14 and 15 are Obvious over
`JP ‘794 in View ofJP ‘596 .......................................................................... .. 43
`
`F‘
`
`.3
`
`.2
`
`TU
`
`In
`
`Claims 16 and 17 are Obvious over JP ‘794 in View of JP ‘265 ................ .. 44
`
`Claims 1, 2, 4, 6, 8, 9, 11, 12, 14 and 15 are Anticipated by JP ‘492 ........ .. 46
`
`Claims 1, 2, 4, 6, 8, 9, 11, 12, 14 and 15 are Obvious over
`
`JP ‘492 in view ofJP ‘596 .......................................................................... .. 53
`
`Claims 16 and 17 are Obvious over JP ‘492 in view ofJP i265 ................ .. 54
`
`Claims 1, 4, 6-8, and 11-15 are Anticipated by Abdullah ......................... .. 55
`
`Claims 1, 4, 6-8, and 1 1-15 are Obvious over
`
`Abdullah in view of JP ‘596 ....................................................................... .. 61
`
`Claims 16 and 17 are Obvious over Abdullah in View of JP ‘265 ............. .. 62
`
`Claims 1, 2, 4, 6, 8,9, 11, 12, 14 and 15 are Anticipated by lnglett .......... .. 63
`
`

`
`T. Claims 1, 2, 4, 6, 8,9, 11, 12, 14 and 15 are Obvious over
`
`Inglett in View of JP ‘596 ............................................................................ .. 69
`
`U. Claims 16 and 17 are Obvious over Inglett in View of JP ‘265 .................. .. 70
`
`VII. Conclusion .................................................................................................. .. 71
`
`Addendum 1. ......................................................................................................... .. 73
`
`Exhibit A ............................................................................................................... .. 78
`
`iii
`
`

`
`I, William S. York, declare as follows:
`
`I.
`
`Overview
`
`1.
`
`I am over the age of eighteen (18) and otherwise competent to make this
`
`declaration.
`
`I have been retained by RatnerPrestia LLP on behalf of Tate & Lyle for the
`
`above—captioned Inter Partes Review proceeding.
`
`I understand that this
`
`proceeding involves U.S. Patent No. 8,361,235 (“the ‘235 Patent”), Exhibit
`
`1001, entitled “Low—\/iscosity Reduced—Sugar Syrup, Methods of Making,
`
`and Applications Thereof.” I also understand that the ‘235 Patent resulted
`
`from U.S. Application No. 12/991,868 (“the ‘868 Application”), filed
`
`November 9, 2010, on behalf of Lawrence E. Fosdick, Scott Helstad,
`
`Yauching W. J asinski, and Guo—hua Zheng.
`
`It is also my understanding that
`
`the ‘235 Patent issued January 29, 2013, from the ‘868 Application, which
`
`was a national stage filing of PCT Application No. PCT/US2009/043488,
`
`filed May 11, 2009, which claimed the benefit of US. Provisional
`
`Application No. 61/127,023, which was filed on May 9, 2008.
`
`I
`
`additionally understand that the earliest possible priority date of the ‘235
`
`Patent is May 9, 2008, the filing date of the provisional application.
`
`I further
`
`understand that, according to USPTO records, the ‘235 Patent is currently
`
`assigned to Cargill, Incorporated.
`
`

`
`3.
`
`I have reviewed and am familiar with the ‘235 Patent and its prosecution
`
`history.
`
`4.
`
`I have reviewed and am familiar with the following patents and printed
`
`publications (hereinafter sometimes referred to as “the prior art references”
`
`or “the references”):
`
`i.
`
`U.S. Patent No. 4,445,938 to Verwaerde et al. (“Verwaerde”; Exhibit
`
`1002)
`
`Japanese Application JP 05-38265 (English translation)(“JP ‘265”;
`
`Exhibit 1004)
`
`iii.
`
`U.S. Patent Publication No. 2007/0116839 to Prakash et al.
`
`(“Prakash”; Exhibit 1005)
`
`iv.
`
`U.S. Patent No. 4,182,756 to Ramsay et al. (“Ramsay”; Exhibit 1006)
`
`Japanese Application JP H04—45794 (English translation)(“JP ‘794”;
`
`Exhibit 1008)
`
`vi.
`
`Japanese Application JP S58-l 70492 (English translation)(“JP ‘492”;
`
`Exhibit 1010)
`
`vii.
`
`viii.
`
`ix.
`
`U.S. Patent No. 3,654,082 to Abdullah (“Abdullah”; Exhibit 1011)
`
`U.S. Patent No. 5,266,467 to Inglett (“Inglett”; Exhibit 1012)
`
`Japanese Application JP S64—0l6596 (English translation)(“JP ‘596”;
`
`Exhibit 1014)
`
`

`
`X.
`
`Johnson, J. A., and R. Srisuthep. "Physical and chemical properties of
`
`oligosaccharides." Cereal Chem 52 (1975): 70-78 (“Johnson”;
`
`Exhibit 1016)
`
`xi.
`
`Hardie, David G., and David J. Manners. "A viscometric assay for
`
`pullulanase—type, debranching enzymes." Carbohydrate Research 36
`
`(1974): 207-210 (“Hardie”; Exhibit 1017)
`
`.
`
`I am familiar with the technology at issue as of the May 9, 2008 filing date
`
`of the provisional U.S. patent application from which the ‘235 Patent claims
`
`priority.
`
`.
`
`l have been asked to provide my technical review, analysis, insights, and
`
`opinions regarding the above-noted patents and printed publications that
`
`form the basis for the grounds of rejection set forth in the Petition for Inter
`
`Partes Review of the ‘235 Patent. In formulating my opinions, I have relied
`
`upon my experience in the relevant art and have considered the Viewpoint of
`
`a person of ordinary skill in the art (POSA) to which the subject patent
`
`pertains.
`
`.
`
`In my opinion, the relevant art in this case is polymer chemistry, and more
`
`specifically the polymer chemistry involving the chemical or enzymatic
`
`fragmentation of polymers, such as polysaccharides, to produce products
`
`with particular chemical and physical properties.
`
`

`
`The claimed subject matter is not new, according to my understanding, if a
`
`single prior art reference would have been understood by one skilled in the
`
`art to have fully disclosed the claimed subject matter.
`
`According to my understanding, the claimed subj ect matter would be invalid
`
`for obviousness if a person of ordinary skill in the relevant art would have
`
`found the claimed subject matter obvious in View of the prior art at the time
`
`the invention was made.
`
`10.
`
`As described in detail below and as summarized in the following table, a
`
`number of prior art references disclose compositions meeting the
`
`compositional limitations of many of the claims in the ‘235 Patent.
`
`ll.
`
`Furthermore, each of these references discloses sufficient information to
`
`permit one of ordinary skill in the art to produce compositions having
`
`essentially the same properties as those disclosed in the ‘Z35 Patent.
`
`

`
`Prior Art Reference
`
`Claims of the ‘Z35 Patent that
`
`Exhibit 1002 — Verwaerde (esp.
`Example 2, Table II, and Example
`III, Table VI)
`Exhibit 1006 - Ramsay (esp.
`Examples 9, 15 and 16)
`Exhibit 1008 — JP ‘794 (esp.
`Sample 2, Table 1; Sample 4,
`Table 2_; and Sample 6, Table 3)
`Exhibit 1010 — JP ‘492 (esp.
`Embodiment 3 with addition of
`
`pullulanase)
`Exhibit 101 1 — Abdullah (esp.
`Table VIII, third entry)
`
`Exhibit 1012 - Inglett (esp.
`Example 3C)
`
`have compositional syrup
`limitations disclosed in the Prior
`
`Art Reference
`
`1,2, 4, 6, 8, 9, 11 and 12
`
`1,4, 6, 8, 11 and 12
`
`1,4, 6, 8, 11 and 12
`
`1,2, 4, 6, 8, 9, 11 and 12
`
`1,4, 6-8, 11 and 12
`
`1,2, 4, 6, 8, 9, 11 and 12
`
`12.
`
`Notably, the prior art references listed in the above table do not disclose the
`
`viscosities of the syrup compositions referenced in the above table as
`
`measured under the conditions specified in the claims of the ‘235 Patent
`
`(100°F, 78% dry solids). However, because of their relatively low content of
`
`higher molecular weight oligosaccharides and polysaccharides, a person of
`
`ordinary skill in the art would have expected that these syrup compositions
`
`would have viscosities that are significantly lower than those of syrups
`
`characterized in the ‘235 Patent as “conventional syrups.”
`
`

`
`13.
`
`Therefore, the syrup compositions disclosed by the above-identified prior art
`
`references would almost certainly have had viscosities within the limits of
`
`the claims of the ‘235 Patent.
`
`14.
`
`To the extent that certain syrup properties set forth in the claims, such as
`
`viscosity or dextrose equivalent (DE), are not expressly disclosed in certain
`
`of these prior art references, such properties would have been necessarily
`
`present in the particular syrups which are disclosed in these prior art
`
`references since such syrups had carbohydrate compositions (i.e., saccharide
`
`profiles) which were the same as those recited in certain claims of the ‘Z35
`
`Patent.
`
`II.
`
`Qualifications
`
`15.
`
`I graduated from the University of Colorado in Boulder, Colorado, in 1978
`
`with a B.A. in Molecular, Cellular, and Developmental Biology and later
`
`graduated from the University of Georgia in Athens, Georgia, in 1996 with a
`
`Ph.D. in Biochemistry and Molecular Biology.
`
`16.
`
`1 have researched and followed the carbohydrate field for approximately 34
`
`years. In formulating my opinions set forth herein, I have relied upon my
`
`training, knowledge, and experience in the relevant art.
`
`17.
`
`My complete and current curriculum vita, which provides a comprehensive
`
`description of my academic and employment history, is attached hereto as
`
`Exhibit A. As an expert in the relevant field, I am qualified to provide an
`
`6
`
`

`
`opinion as to what a POSA would have understood, known, or concluded as
`
`of May of 2008.
`
`18.
`
`My work on this matter is being billed at a rate of $280 per hour, with
`
`reimbursement for actual expenses. My compensation is not contingent
`
`upon the outcome of this Inter Partes Review.
`
`III.
`
`My Understanding of Patent Law
`
`19.
`
`I have been informed by counsel that, as a legal matter, a patent claim is
`
`valid only if the subject defined in the claim is new and unobvious to one of
`
`ordinary skill in the art to which the claimed invention pertains.
`
`20.
`
`I also have been informed by counsel that anticipation of a claim requires
`
`that every element of a claim is disclosed expressly or inherently in a single
`
`prior art reference, arranged as in the claim. That is, the claimed subject is
`
`not new, according to my understanding, if a single prior art reference
`
`would have been understood by one skilled in the art to have fully disclosed
`
`the claimed subject matter.
`
`21.
`
`I have further been informed by counsel that for a claim to be considered
`
`obvious requires that the subject matter of the claim to have been obvious
`
`from the perspective of a person of ordinary skill in the relevant art, at the
`
`time the invention was made. In analyzing obviousness, I understand that it
`
`is important to understand the scope of the claims, the level of skill in the
`
`

`
`relevant art, the scope and content of the prior art, the differences between
`
`the prior art and the claims, and any secondary considerations.
`
`22.
`
`1 also understand that claims in an Inter Partes Review are given their
`
`broadest reasonable interpretation that is consistent with the patent
`
`specification.
`
`IV.
`
`Subject Matter of the ‘Z35 Patent
`
`23.
`
`The ‘235 Patent discloses low—viscosity reduced sugar syrups, methods of
`
`making such syrups, and uses of such syrups. Various embodiments of such
`
`syrups are described in the ‘235 Patent. The syrups which are claimed in
`
`claims 1-13 of the ‘Z35 Patent are generally characterized with respect to a)
`
`their content of mono— and di—saccharides, b) their content of
`
`oligosaccharides having a degree of polymerization of from about 3 to about
`
`14, C) their content of oligosaccharides and polysaccharides with a degree of
`
`polymerization of about at least 1 1, and (1) their viscosity as measured under
`
`certain conditions. Claims 7 and 13 of the ‘235 Patent additionally
`
`characterize the syrups with respect to their Dextrose Equivalent (DE) value.
`
`Claims 14 and 15 of the ‘235 Patent are directed to various types of products
`
`which comprise the aforementioned syrups. Claims 16 and 17 of the ‘235
`
`Patent concem products which further comprise a high potency sweetener.
`
`

`
`V.
`
`Level of Ordinary Skill in the Art
`
`24.
`
`I have been informed by counsel that a POSA is one who is presumed to be
`
`aware of all pertinent art, thinks along conventional wisdom in the art and is
`
`a person of ordinary creativity. In my opinion, a person of ordinary skill in
`
`this art is a person with a bachelor’s degree in polymer chemistry and at
`
`least five years experience in designing and implementing experiments
`
`related to the chemical or enzymatic fragmentation of polymers, such as
`
`polysaccharides, to produce products with particular chemical and physical
`
`properties, and to the characterization of the physical and chemical
`
`properties of the products so obtained.
`
`VI.
`
`Analysis of the References and the Claims of the ‘235 Patent
`
`A. State of the Art as of May 9, 2008
`
`25.
`
`As of May 9, 2008, syrups having carbohydrate compositions like those of
`
`the syrups claimed in the ‘235 Patent which comprised low to moderate
`
`amounts of mono— and di—saccharides, relatively high amounts of
`
`oligosaccharides (e.g., having a degree of polymerization of 3 to 11), and
`
`low to moderate amounts of higher molecular weight oligosaccharides and
`
`polysaccharides were well known in the art. This is evidenced by the
`
`disclosures of Verwaerde (Exhibit 1002), Ramsay (Exhibit 1006), JP ‘794
`
`(Exhibit 1008), JP ‘492 (Exhibit 1010), Abdullah (Exhibit 1011) and
`
`

`
`Inglett (Exhibit 1012), each of which issued or published more than one
`
`year prior to May 9, 2008, and thus are reflective of the state of the art prior
`
`to the earliest possible effective filing date of the ‘235 Patent. Moreover,
`
`such syrups were recognized in the art as being useful for the preparation of
`
`food products, pharmaceutical products and the like, as evidenced by the
`
`teachings of Verwaerde, Ramsay, JP ‘265 (Exhibit 1004), JP ‘794, JP ‘492,
`
`Abdullah and Inglett. Additionally, it was well known in the art to use
`
`syrups having the aforementioned compositional characteristics in
`
`combination with high potency sweeteners in food products and the like.
`
`This is evidenced by the disclosure of Verwaerde and JP ‘265, each of which
`
`published more than one year prior to May 9, 2008, and thus is reflective of
`
`the state of the art prior to the earliest possible effective filing date of the
`
`‘235 Patent.
`
`26.
`
`Additionally, as of May 9, 2008, persons in the field recognized that syrups
`
`having relatively low viscosities were advantageous and desirable and that
`
`high viscosity negatively affects the properties of the finished product for
`
`some applications. This is evidenced by the disclosure of JP ‘596. It was
`
`obvious to persons in the field that low viscosity syrups are easier to handle
`
`and process as a result of their lower viscosities. Moreover, it was known in
`
`the field by that date that the presence of higher molecular weight
`
`oligosaccharides and polysaccharides substantially contributed to the
`
`10
`
`

`
`Viscosity of syrups obtained by hydrolysis of starch. This knowledge had
`
`been widely and routinely applied in many laboratories to quantify the
`
`catalytic activity of enzymes that break down polysaccharides and to assess
`
`the biochemical mechanisms by which these enzymes operate, as taught by
`
`Hardie (Exhibit 1017). Specifically, it was well known that enzymes known
`
`as endo—acting glycosyl hydrolases break polysaccharides at sites in the
`
`interior of the polymer chain to produce fragments that each have
`
`significantly lower molecular weights than the untreated polysaccharide. It
`
`was well known that fragmentation of this type, by Virtue of the fact it
`
`significantly decreases the molecular weight of the polysaccharide, leads to a
`
`significant decrease in the Viscosity of the polysaccharide solution when as
`
`few as one bond per polysaccharide chain is broken. Viscosity
`
`measurements had thus been routinely used to distinguish fragmentation by
`
`endo-acting glycosyl hydrolases from fragmentation by so—called exo—acting
`
`glycosyl hydrolases, which typically remove mono~ or disaccharides from
`
`the end of the polymer chain. When an exo—acting glycosyl hydrolase
`
`catalyzes fragmentation at a site near the end of a polysaccharide chain, two
`
`molecules are produced, including a monosaccharide or Very small (typically
`
`disaccharide) oligosaccharide along with a polysaccharide whose molecular
`
`weight is Very similar to that of the initial polysaccharide.
`
`Since the
`
`molecular weight of the polysaccharide is not significantly changed by such
`
`11
`
`

`
`an event, fragmentation of a polysaccharide by an eXo—acting enzyme does
`
`not result in a significant decrease in the viscosity of the polysaccharide
`
`. solution until many mono— or oligosaccharides have been cleaved from the
`
`ends of the polysaccharide molecules such that their molecular weights have
`
`been significantly reduced. It was well known that such a reduction in the
`
`molecular weight of the polysaccharide and the resulting reduction in the
`
`viscosity of the polysaccharide solution requires many more fragmentation
`
`events when an eXo—acting enzyme (which does not efficiently reduce
`
`molecular weight) is the catalyst than when an endo—acting enzyme (which
`
`very efficiently reduces molecular weight) is the catalyst, allowing the
`
`analyst to use viscosity measurements to distinguish these two types of
`
`enzymes. The relationship between the molecular weight of an
`
`oligosaccharide and its contribution to the viscosity of a solution (syrup) was
`
`quantitatively assessed by Johnson in 1975 (Exhibit 1016), who showed that
`
`increasing the molecular weight (i.e., the degree of polymerization or DP) of
`
`an oligosaccharide results in a significant increase in the viscosity of the
`
`solution that contains it. Their quantitative data showed that each increase in
`
`the DP (e.g., increasing the DP from 9 to 10) leads to an increase in
`
`viscosity. Such effects are in keeping with common knowledge of persons
`
`of ordinary skill in the art, who appreciated that the viscosity of a syrup
`
`increases as its content of higher molecular weight oligosaccharides and
`
`12
`
`

`
`polysaccharides increases and that, conversely, the viscosity of a syrup is
`
`decreased by reducing the amount of higher molecular weight
`
`oligosaccharides and polysaccharides present as compared to other types of
`
`saccharides (i.e., mono— and di—saccharides and oligosaccharides having a
`
`low degree of polymerization). This is evidenced by the teachings of Hardie
`
`(Exhibit 1017), Johnson (Exhibit 1016), and Verwaerde (Exhibit 1002) and
`
`the disclosure of JP ‘S96 (Exhibit 1014).
`
`B. Basis of My Analysis with Respect to Anticipation
`
`27.
`
`It is my understanding that a reference anticipates a claim if it discloses
`
`(expressly or inherently) each and every element recited in the claim,
`
`arranged as in the claim, so as to enable one of skill in the art to make and
`
`use the claimed subj ect matter without the need for undue experimentation
`
`in light of the general knowledge available in the art. The factors that I have
`
`considered in determining whether a reference sets forth the elements of a
`
`claim in a sufficient manner such that a POSA could have made and used the
`
`claimed invention Without undue experimentation include: the breadth of the
`
`claim, the nature of the claimed subj ect matter, the state of the prior art, the
`
`level of one of ordinary skill, the level of predictability in the art, the amount
`
`of direction provided by the reference, the existence of Working examples,
`
`and the quantity of experimentation needed to make or use the invention
`
`claimed.
`
`I also understand that inherent anticipation does not require that
`
`13
`
`

`
`the prior art recognized that a composition described in a prior art reference
`
`have a certain characteristic. That is, I understand that a prior art disclosure
`
`of a composition anticipates a claim to the composition even when the prior
`
`art did not characterize or describe a property of the composition which is
`
`recited in the claim. Since a chemical composition and its properties are
`
`inseparable, if the prior art teaches a product which is compositionally the
`
`same as what is later claimed, the properties of that claimed composition
`
`were necessarily possessed by the composition disclosed in the priorart
`
`reference and the composition therefore cannot be considered novel, even if
`
`the properties had not previously been measured.
`
`C. Basis of My Analysis with Respect to Obviousness
`
`28.
`
`It is my understanding that once prior art is identified, an obviousness
`
`analysis involves comparing a claim to the prior art to determine whether the
`
`claimed subject matter would have been obvious to a POSA in light of that
`
`prior art, and in light of the general knowledge in the art. Further, I
`
`understand that obviousness can be established by combining or modifying
`
`the teachings of the prior art to achieve the claimed subject matter.
`
`I also
`
`understand that where there is a reason to modify or combine the prior art
`
`references to achieve the claimed subject matter, there must also be a
`
`reasonable expectation of success in order for obviousness to be found.
`
`Additionally, I understand that in an obviousness determination the entire
`
`14
`
`

`
`reference is considered, including portions that might dissuade a POSA from
`
`making or using the claimed subj ect matter. According to my
`
`understanding, one way to rebut a finding of obviousness is to present
`
`evidence of secondary considerations of non—obviousness, such as
`
`unexpected results, commercial success, long felt but unmet need, and the
`
`failure of others to achieve the claimed subject matter.
`
`D. Claims 1, 2, 4, 6-9, and 11-17 are Anticipated by Verwaerde
`
`29.
`
`Disclosure in Verwaerde
`Col. 4, lines 57-58.
`a Col. 6, line 65.
`Table II, DP1 & DP2 = 22%
`Table VI, DP1 & DP2 = 17%
`
`Claim 1 of the ‘235 Patent
`A syrup having a carbohydrate
`composition comprising:
`a. from about 10% to about 25% total
`mono— and di—saccharides on a dry
`weight basis;
`b. greater than 60% oligosaccharides on Table II, DP3 to DP10 = 62.5%
`a dry weight basis with a degree of
`Table VI, DP3 to DPl0 = 83%
`polymerization of from about 3 to about
`14;
`
`c. a viscosity not greater than about
`30,000 cPs at about 78% dry solids and
`about 100° F .; and
`
`Col. 1, lines 10-11 (“not too viscous”).
`Col. 2, lines 10-14 (“(DP higher thanl0)
`accounts for an increase in the
`
`W
`viscosity”). _
`d. less than about 18% oligosaccharides Table II, *DP11+ = 15.5%
`and polysaccharides on a dry weight
`Table VI, *DP1 1+ 2 0%
`basis with a degree of polymerization of
`about at least 11.
`
`* “DP11+” refers to glucose polymers having 11 or more sugar residues.
`
`30.
`
`The syrups described in Tables 11 and VI of Verwaerde each have a
`
`composition consistent with claim 1. With regard to part b) of claim 1,
`
`Tables 11 and VI of Verwaerde respectively describe compositions in which
`
`15
`
`

`
`components with DP3 to DP10 comprise 62.5% and 83%. This DP range is
`
`included within the range specified in part b) of claim 1 (DP3 to DPI4).
`
`Therefore, the compositions described in Tables 11 and V1 of Verwaerde
`
`contain at least 62.5% and 83%, respectively, components with DP3 to
`
`DP14, consistent with part b) of claim 1.
`
`31. A POSA would understand that Verwaerde also discloses the subject matter
`
`of dependent claims 2, 4, 6, 7, 14 and 16, each of which depends from claim
`
`1. The basis for my conclusions is summarized in the claim charts and
`
`further explained below.
`
`32.
`
`Claim 2 of the ‘235 Patent
`TThe syrup of claim 1, wherein the total
`mono— and di—saccharides is from about
`
`20% to about 25% on a dry weight basis
`and
`the viscosity is not greater than about
`15,000 cPs at about 78% dry solids and
`about 100° F.
`
`Disclosure in Verwaerde
`
`Table II, DP1 & DP2 = 22%
`
`Col. 1, lines 10-11 (“not too viscous”).
`Col. 2, lines 10-14 (“(DP higher than10)
`accounts for an increase in the
`
`Viscosity”).
`
`33.
`
`The syrup described in Table II of Verwaerde has a composition consistent
`
`with claim 2.
`
`16
`
`

`
`34.
`
`Claim 4 of the ‘235 Patent
`The syrup of claim 1, wherein greater
`than about 60% oligosaccharides on a
`dry weight basis with a degree of
`polymerization is from about 3 to about
`10.
`
`Disclosure of Verwaerde
`Table II, DP3 to DP10 = 62.5%
`Table VI, DP3 to DP10 = 83%
`
`35.
`
`The syrups described in Tables 11 and VI of Verwaerde each has a
`
`composition consistent with claim 4.
`
`36.
`
`Claim 6 of the ‘235 Patent
`The syrup of claim 1, wherein less than
`about 15% polysaccharides on a dry
`weight basis with a degree of
`polymerization is at least about 15.
`* “DP2l+” refers to glucose polymers having 21 or more sugar residues;
`
`Disclosure of Verwaerde
`Table II, *DP2l+ = 10.2%, DPl1 to
`DP20 = 5.3% [thus *DP1 1+ = 15.5%]
`
`Table VI, *DP11+ = nil
`
`I
`’
`‘
`l
`
`“DPl 1+” refers to glucose polymers having 11 or more sugar residues.
`
`37.
`
`Each of the syrups described in Tables 11 and VI of Verwaerde has a
`
`composition consistent with claim 6. The syrup described in Table II of
`
`Verwaerde contains only 15.5% glucose polymers with DPl l or higher.
`
`Furthermore, examination of the glucid distribution listed in Table 11 of
`
`Verwaerde certainly leads to the conclusion that more than 0.5% of those
`
`glucose polymers with DPl1 or higher have DPll to DPI4, leaving less
`
`than 15% of the glucose polymers with DP of at least 15.
`
`17
`
`

`
`38.
`
`Disclosure of Verwaerde
`Claim 7 of the ‘235 Patent
`The syrup of claim 1, having a DE from Table 11, DE = 34 (C01. 4, lines 53-56).
`about 20 to about 52.
`Table VI, DE > 27.0 (Col. 6, lines 56-
`68).
`g
`
`39.
`
`Each of the syrups described in Tables 11 and VI of Verwaerde has a
`
`composition consistent with claim 7. The syrup described in Table II of
`
`Verwaerde has a DB of 34 (C01. 4, lines 53-56). The syrup described in
`
`Table VI of Verwaerde was prepared (Col. 6, lines 56-68) from a
`
`hydrolysate with DE of 27.0 by removing some of the high molecular weight
`
`glucose polymers, which increased the relative amounts of low molecular
`
`weight glucose polymers in the product, thereby increasing the DE of this
`
`syrup to a value somewhat greater than 27. In fact, the DE of this product is
`
`readily calculated from its glucid distribution (Table VI of Verwaerde) to be
`
`31 using the method described by Johnson (Exhibit 1016).
`
`40.
`
`Disclosure of Verwaerde
`l
`Claim 14 of the ‘235 Patent
`A food product, beverage product, feed Abstract, last sentence.
`product, or pharmaceutical product
`Col. 3, lines 7-12.
`comprising the syrup of claim 1.
`
`41. Verwaerde teaches the advantages of using syrups generally described in
`
`the reference in the manufacture of food.
`
`18
`
`

`
`42.
`
`Claim 16 of the ‘235 Patent
`
`Disclosure of Verwaerde
`
`The food product, beverage product,
`feed product, or pharmaceutical product
`of claim 14 further comprising a high
`
`potency sweetener.
`
`Col. 7, lines 20-22, 38-44.
`
`43.
`
`Verwaerde teaches the manufacture of chewing—gum and sweets using
`
`hydrogenated forms of the syrups
`
`generally described in the reference in
`
`combination with saccharin (a high potency sweetener, as defined by the
`
`disclosure appearing at claim 7 and paragraph [0098], for example, of
`
`Prakash, Exhibit 1005).
`
`44.
`
`Claim 8 of the ‘235 Patent
`
`Disclosure in Verwaerde
`
`A syrup having a carbohydrate
`composition comprising:
`a. from about 10% to about 25% total
`
`mono— and di—saccharides on a dry
`WeishLbas.i§;2
`b. greater than 50% oligosaccharides on
`a dry weight basis with a degree of
`polymerization of from about 3 to about
`.._:.,
`7;
`c. a viscosity not greater than about
`30,000 CPS at about 78% dry solids and
`about 100° F .; and
`
`d. less than about 18% oligosaccharides
`and polysaccharides on a dry weight
`basis with a degree of polymerization of
`about at least 11.
`
`Col. 4, lines 57-58.
`
`Col. 6, line 65.
`Table 11, DP1 &" DP2 : 22%
`Table VI, DP1 & DP2 : 17%
`
`Table II, DP3 to DP7 = 54.1%
`
`Table VI, DP3 to DP7 = 74.2%
`
`Col. 1, lines 10-11 (“not too viscous”).
`Col. 2, lines 10-14 (“(DP higher than10)
`accounts for an increase in the
`
`viscosity”).
`Table II, *DP1 1+ = 15.5%
`
`Table VI, *DPl1+ = 0%
`
`* ”DP11+” refers to glucose polymers having 11 or more sugar residues.
`
`19
`
`

`
`45.
`
`Each of the syrups described in Tables II and VI of Verwaerde has a
`
`composition consistent with claim 8.
`
`46.
`
`A POSA would understand that Verwaerde also discloses the subject matter
`
`of dependent claims 9 and 11-13,
`
`15 and 17, each of which depends from
`
`claim 8.. The basis for my conclusions is summarized in the claim charts and
`
`further explained below.
`
`47.
`
`F
`
`(;_l_ain3V9 of the_w‘235 Patent
`_
`The syrup of claim 8, wherein the total
`mono- and di—saccharides is from about
`
`20% to about 25% on a dry weight basis
`and
`
`1
`
`Disclosure in VerWaer_de
`Table 11, DP1 & DP2 = 22%
`
`the Viscosity is not greater than about
`15,000 CPS at about 78% dry solids and
`about 100° F.
`
`T—Col. 1, lines 10-11 (“not too Viscous”).
`Col. 2, lines 10-14 (“(DP higher than10)
`accounts for an increase in the
`
`Viscosity”).
`
`48.
`
`The syrup described in Table 11 of Verwaerde has a composition consistent
`
`with claim 9.
`
`49.
`
`Clairn 11 of the ‘235 Patent
`The syrup of claim 8, wherein greater
`than about 20% oligosaccharides on a
`dry weight basis with a degree of
`polymerization is from about 3 to about
`4.
`
`Disclosure of Verwaerde
`
`Table II, DP3 & DP4 = 24.4%
`
`Table VI, DP3 & DP4 = 24%
`
`50.
`
`Each of the syrups described in Tables II and VI of Verwaerde has a
`
`composition consistent with claim 11.
`
`20
`
`

`
`51.
`
`Claim 12 of the ‘235 Patent
`
`Disclosure of Verwaerde
`
`The syrup of claim 8, wherein less than
`about 15% polysaccharides on a dry
`weight basis with a degree of
`polymerization is at least about 15.
`* “DP21+” refers to glucose polymers having 21 or more sugar residues;
`
`DP20 = 5.3% [thus DP11+ =15.5%]
`Table VI, *DP11+ = nil
`
`Table I1, *DP21+ = 10.2%, DP1l to
`
`“DP1 1+” refers to glucose polymers having 11 or more sugar residues.
`
`52.
`
`The syrup described in Table II of Verwaerde contains only 15.5% glucose
`
`polymers with DP1l or higher. Furthermore, examination of the glucid
`
`distribution listed in Table II of Verwaerde certainly leads to the conclusion
`
`that more than 0.5% of those glucose polymers with DP1 1 or higher have
`
`DP1 1 to DP14, leaving less than 15% ofthe glucose polymers with DP of at
`
`least 15. Thus, each of the syrups described in Tables 11 and VI of
`
`Verwaerde has a composition consistent with claim 12.
`
`53.
`
`Claim 13 of the ‘235 Patent
`The syrup of claim 8, having a DE from
`about 20 to about 52.
`
`Disclosure of Verwaerde
`Table 11, DE = 34 (C01. 4, lines 53-56).
`Table VI, DB > 27.0 (Col. 6, lines 56-
`68).
`
`54.
`
`Each of the syrups described in Tables 11 and VI of Verwaerde has a
`
`composition consistent with claim 13. The syrup described in Table VI of
`
`Verwaerde has a DE of 34 (C01. 4, lines 53-56). The syrup described in
`
`Table VI of Verwaerde was prepared (Col. 6, lines 56-68) from a
`
`hydrolysate with DB of 27.0 by removing some of the high molecular weight
`
`21
`
`

`
`glucose polymers, which increased t