IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`In the Inter Partes Review of: U.S. Patent No. 8,361,235
`
`Patent Filed: November 9, 2010
`
`Patent Issued: January 29, 2013
`
`Inventors:
`
`Fosdick, Lawrence E. ; Helstad, Scott; Jasinski, Yauching W.; Zheng,
`Guo—hua
`
`Assignee: Cargill, Incorporated
`
`Title: LOW—VISCOSITY REDUCED~SUGAR SYRUP, METHODS OF
`
`MAKING, AND APPLICATIONS THEREOF
`
`Submitted via Electronic Filing
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`
`P.O. Box 1450
`
`Alexandria, VA 22313-1450
`
`PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,361,235
`
`On behalf of Tate & Lyle Americas LLC (“Petitioner”) and in accordance
`
`with 35 U.S.C. § 311 and 37 C.F.R. § 42.100, interpartes review is respectfully
`
`requested for claims 1, 2, 4, 6-9 and 11-17 of U.S. Patent No. 8,361,235 (“the ‘235
`
`Patent”), a copy of which is attached hereto as Exhibit 1001.
`
`

`
`TABLE OF CONTENTS
`
`Overview of the ‘235 Patent ......................................................................... .. 1
`
`II.
`
`III.
`
`Overview of the Prosecution History of the ‘235 Patent .............................. .. 1
`
`Overview of Challenge and Relief Requested .............................................. .. 3
`
`IV.
`
`Claim Construction ....................................................................................... .. 7
`
`Level of Ordinary Skill in the Art................................................................. .. 8
`
`VI.
`
`There is a Reasonable Likelihood that at least One Claim
`
`of the ‘235 Patent is Unpatentable ................................................................ .. 9
`
`?>
`
`P3
`
`0
`
`Legal Principles ............................................................................................................ .. 9
`
`Summary of Unpatentability Arguments ............................................................. .. 10
`
`Ground 1 — Claims 1, 4, 6, 8, ll, 12, 14 and 15 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Ramsay. .............. .. 14
`
`Ground 2 — Claims 1, 4, 6, 8, 11, 12, 14 and 15 are unpatentable
`under 35 U.S.C. § lO3(a) as obvious over Ramsay in view of JP ‘596. ..... .. 19
`
`Ground 3 - Claims 16 and 17 are unpatentable under
`35 U.S.C. § 103(a) as obvious over Ramsay in View ofJP ‘265. .................. .. 20
`
`Ground 4 — Claims 1, 2, 4, 6-9 and 11-17 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by Verwaerde. ......... .. 22
`
`Ground 5 — Claims 1, 2, 4, 6-9 and 11-17 are
`unpatentable under 35 U.S.C. § lO3(a) as obvious over Verwaerde. ........... .. 27
`
`Ground 6 - Claims 1, 4, 6, 8,11,12,14 and 15 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by JP ‘794. ............... .. 28
`
`Ground 7 — Claims 1, 4, 6, 8, 11, 12, 14 and 15 are unpatentable
`under 35 U,S.C. § 103(a) as obvious over JP ‘794 in View of JP ‘596. ....... .. 32
`
`Ground 8 — Claims 16 and 17 are unpatentable under
`35 U.S.C. § 103(a) as obvious over JP ‘794 in view ofJP ‘265. ................... .. 33
`
`Ground 9 — Claims 1, 2, 4, 6, 8, 9,11,12,14 and 15 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by JP ‘492. ............... .. 34
`
`Ground 10 — Claims 1, 2, 4, 6, 8, 9,11,12,14 and 15 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over JP
`‘492 in View ofJP ‘596. ........................................................................................... .. 38
`
`Ground 11 — Claims 16 and 17 are unpatentable under
`35 U.S.C. § lO3(a) as obvious over JP ‘492 in View ofJP ‘265. ................... .. 39
`
`

`
`Ground 12 - Claims 1, 4, 6-8 and 11-15 are unpatentable
`under 35 U.S.C. § l02(b) as anticipated by Abdullah. ..................................... .. 40
`
`Ground 13 - Claims 1, 4, 6-8 and 11-15 are unpatentable
`under 35 U.S.C. § l03(a) as obvious from Abdullah in view of JP ‘596. n3n 43
`
`Ground 14 — Claims 16 and 17 are unpatentable under
`35 U.S.C. § l03(a) as obvious from Abdullah in view of JP ‘265. ............... .. 44
`
`Ground 15 — Claims 1, 2, 4, 6, 8,9,11,12,14 and 15 are
`unpatentable under 35 U.S.C. §102(b) as anticipated by Inglett. .................. .. 45
`
`Ground 16 - Claims 1, 2, 4, 6, 8, 9,11,12,14 and 15 are
`unpatentable under 35 U.S.C. § 103(a) as obvious over Inglett
`in view ofJP ‘596. ..................................................................................................... ,. 47
`
`Ground 17 — Claims 16 and 17 are unpatentable under
`35 U.S.C. § lO3(a) as obvious over Inglett in View of JP ‘265. ..................... .. 48
`
`Payment of Fees under 37 C.F.R. § 42.103 ................................................ .. 49
`
`Mandatory Notices under 37 C.F.R. § 42.8(a)(1) ....................................... .. 49
`
`Real Party—in—Interest under 37 C.F.R. § 42.8(b)(1) ......................................... .. 49
`
`Related Matters under 37 C.F.R. § 42.8(b)(2) .................................................... .. 49
`
`Lead and Back—up Counsel under 37 C.F.R. § 42.8(b)(3) ............................... .. 50
`
`Service of Information under 37 C.F.R. § 42.8(b)(4) ....................................... .. 50
`
`Certification of Grounds for Standing ........................................................ .. 51
`
`Conclusion .................................................................................................. .. 51
`
`iii
`
`

`
`List of Exhibits
`
`Exhibit 1001 —— U.S. Patent No. 8,361,235 to Fosdick et al. (“the ‘235
`
`Patent”)
`
`Exhibit 1002 — U.S. Patent No. 4,445,938 to Verwaerde et al.
`
`(“Verwaerde”)
`
`Exhibit 1003 — Japanese Application JP 05-38265 (“JP ‘265”)
`
`Exhibit 1004 — Certified English translation of Exhibit 1003.
`
`Exhibit 1005 — U.S. Publication No. 2007/0116839 to Prakash et al.
`
`(“Prakash”)
`
`Exhibit 1006 — U.S. Patent No. 4,182,756 to Ramsay et al. (“Ramsay”)
`
`Exhibit 1007 ~— Japanese Application JP H04-45794 (“JP ‘794”)
`
`Exhibit 1008 —~ Certified English translation of Exhibit 1007
`
`Exhibit 1009 — Japanese Application JP S58-170492 (“JP ‘492”)
`
`Exhibit 1010 - Certified English translation of Exhibit 1009
`
`Exhibit 1011 - U.S. Patent No. 3,654,082 to Abdullah (“Abdullah”)
`
`Exhibit 1012 — U.S. Patent No. 5,266,467 to Inglett (“lnglett”)
`
`Exhibit 1013 — Japanese Application JP S64—016596 (“JP ‘596”)
`
`Exhibit 1014 — Certified English translation of Exhibit 1013
`
`Exhibit 1015 — Declaration of Dr. William S. York
`
`Exhibit 1016 — Johnson, J .A., and R. Srisuthep. “Physical and chemical
`
`properties of oligosaccharides.” Cereal Chem 52 (1975): 70-78
`
`(“Johnson”)
`
`Exhibit 1017 — Hardie, David G., and David J . Manners. “A Viscometric
`
`assay for pullulanase—type, debranching enzymes.” Carbohydrate
`
`Research 36 (1974): 207-210 (“Hardie”)
`
`iv
`
`

`
`I.
`
`Overview of the ‘235 Patent
`
`The ‘235 Patent discloses loW—viscosity reduced—sugar syrups, methods of
`
`making such low—viscosity reduced-sugar syrups, and uses of such syrups. Exhibit
`
`1 001, Abstract. Various embodiments of such syrups, which have different
`
`characteristics with respect to their viscosity, their content of mono—saccharides,
`
`di—saccharides, oligosaccharides, and polysaccharides, and/or their Dextrose
`
`Equivalent (DE) value, are also described. Exhibit 1001, Col. 1, line 60, to Col. 2,
`
`line 48.
`
`II.
`
`Overview of the Prosecution History of the ‘Z35 Patent
`
`The ‘235 Patent issued January 29, 2013, from Application No. 12/991,868,
`
`which was a national phase filing of International Application No.
`
`PCT/US2009/043488, filed May 11, 2009. The ‘235 Patent also claims priority
`
`from U.S. Provisional Application No. 61/127,023, filed May 9, 2008.
`
`Application No. 12/991,868 was filed as a national phase application of the
`
`above~referenced International Application on November 9, 2010. A Preliminary
`
`Amendment was simultaneously submitted in which claims 2-78 of the
`
`International Application were cancelled, leaving only original independent claim
`
`1, which was not amended. An Information Disclosure Statement was submitted
`
`by the Applicant on March 2, 2011, listing a total of nine documents (including
`
`

`
`U.S. Patent No. 4,445,938 to Verwaerde et al., corresponding to Exhibit 1002
`
`submitted herewith). A non—f1nal Office Action was mailed by the United States
`
`Patent and Trademark Office (USPTO) on September 8, 2011, wherein claim 1
`
`was rejected as obvious over the disclosure of Norman et al., U.S. Pat. No.
`
`6,287,826. The Office Action was accompanied by a copy of the listing of
`
`documents submitted by the Applicant on March 2, 2011, signed by the Examiner.
`
`Following a telephone interview with the Examiner on February 6, 2012, the
`
`Applicant responded to the Office Action on February 8, 2012, by cancelling claim
`
`1 and presenting new claims 79-95.
`
`A first Notice of Allowance was subsequently mailed by the USPTO on
`
`April 12, 2012. The Notice of Allowance contained the Examiner’s statement of
`
`reasons for allowance. Rather than paying the issue fee, however, the Applicant
`
`filed a Request for Continued Examination (RCE) on June 15, 2012, which
`
`included an Information Disclosure Statement (IDS). The IDS listed a single
`
`document (Inglett, U.S. Pat. No. 5,266,467, corresponding to Exhibit 1012 of this
`
`Petition). No claim amendments were presented. A second Notice of Allowance
`
`was subsequently mailed by the USPTO on September 24, 2012. The second
`
`

`
`Notice of Allowance contained the Examiner’s statement of reasons for
`
`allowance.1
`
`The issue fee was paid on December 21, 2012 and the ‘235 Patent
`
`subsequently issued. A Request for Certificate of Correction was submitted on
`
`March 18, 2013 and subsequently approved on April 30, 2013 (no changes to the
`
`claims were made). Two related applications claiming common priority with the
`
`‘235 Patent (Application No. 13/724,902, filed on December 21, 2012, and
`
`Application No. 13/835,330, filed on March 15, 2013), are currently pending.
`
`III. Overview of Challenge and Relief Reguested
`
`Pursuant to 37 C.F.R. §§ 42.22(a)(1) and 42.104(b)(1)—(2), Petitioner
`
`challenges claims 1, 2, 4, 6-9 and 11-172 of the ‘235 Patent and requests
`
`cancellation of said claims based on one or more of the grounds set forth herein.
`
`1 Although the Examiner briefly commented on Inglett, Petitioner respectfully
`
`submits that the Examiner clearly failed to appreciate the relevance of this prior art
`
`reference to the subject matter of at least claims 1, 2, 4, 6, 8, 9, 11 and 14—17, for
`
`the reasons set forth in detail herein.
`
`2 Petitioner notes that the remaining claims of the ‘235 Patent (claims 3, 5 and 10)
`
`do not further limit the claims from which they depend, in violation of the
`
`requirements of 35 U.S.C. §112(d).
`
`

`
`More specifically, Petitioner requests cancellation of claims 1, 2, 4, 6-9 and 11-17,
`
`the challenged claims of the ‘235 Patent, as unpatentable under 35 U.S.C §§ 102
`
`and 103. Dr. William S. York’s declaration attached hereto (Exhibit 1015)
`
`supports the grounds in this Petition showing that there is a reasonable likelihood
`
`that Petitioner will prevail with respect to at least one of the challenged claims and
`
`that each of the challenged claims is not patentable.
`
`A detailed statement of the reasons for the relief requested is set forth in §
`
`VI below.
`
`Petitioner relies on the following patents and printed publications, none of
`
`which were considered during examination of the ‘235 Patent except where noted:
`
`0 Exhibit 1002 — U.S. Patent No. 4,445,938 to Verwaerde et al.
`
`(“Verwaerde”), which issued (published) on May 1, 1984, and hence is
`
`prior art against the ‘235 Patent under 35 U.S.C. § 102(b).3
`
`3 During examination of the ‘235 Patent, a copy of Verwaerde was submitted by
`
`the Applicant in an Information Disclosure Statement on March 2, 2011.
`
`However, the Examiner did not apply Verwaerde as a reference against the
`
`pending claims and did not comment on Verwaerde in any way. Petitioner
`
`respectfully submits that the Examiner clearly failed to appreciate the relevance of
`
`Verwaerde to the subject matter of claims 1, 2, 4, 6-9 and 1 1-17, for the reasons set
`
`forth herein.
`
`

`
`Exhibit 1003 — Japanese Application JP 05-38265 (“JP ‘265”), which
`
`published February 19, 1993, and hence is prior art against the ‘235
`
`Patent under 35 U.S.C. § 102(b).
`
`Exhibit 1004 —~ Certified English translation of Exhibit 1003.
`
`Exhibit 1006 — U.S. Patent No. 4,182,756 to Ramsay et al. (“Ramsay”),
`
`which issued (published) on January 8, 1980, and hence is prior art
`
`against the ‘235 Patent under 35 U.S.C. § 102(b).
`
`Exhibit 1007 — Japanese Application JP H04—45794 (“JP ‘794”), which
`
`published on February 14, 1992, and hence is prior art against the ‘235
`
`Patent under 35 U.S.C. § 102(b).
`
`Exhibit 1008 —— Certified English translation of Exhibit 1007.
`
`Exhibit 1009 — Japanese Application JP S58-170492 (“JP ‘492”), which
`
`published on October 7, 1983, and hence is prior art against the ‘235
`
`Patent under 35 U.S.C. § 102(b).
`
`Exhibit 1010 — Certified English translation of Exhibit 1009.
`
`Exhibit 1011 — U.S. Patent No. 3,654,082 to Abdullah (“Abdullah”),
`
`which issued (published) on April 4, 1972, and hence is prior art against
`
`the ‘235 Patent under 35 U.S.C. § 102(b).
`
`

`
`0 Exhibit 1012 — U.S. Patent No. 5,266,467 to Inglett (“Inglett”), which
`
`issued (published) on November 30, 1993, and hence is prior art against
`
`the ‘235 Patent under 35 U.S.C. § 1O2(b)4.
`
`0 Exhibit 1013 — Japanese Application JP S64—Ol6596 (“JP ‘596”), which
`
`published on January 1, 1989, and hence is prior art against the ‘235
`
`Patent under 35 U.S.C. § lO2(b).
`
`0 Exhibit 1014 — Certified English translation of Exhibit 1013.
`
`Each of the patents and printed publications pertain to the same field of
`
`endeavor, namely, syrups containing carbohydrates (i.e., aqueous solutions of
`
`sugars or starch hydrolysates).
`
`In support of the proposed grounds for unpatentability, this Petition is
`
`accompanied by a declaration of technical expert Dr. William S. York (Exhibit
`
`1015), which explains what the above—mentioned patents and printed publications
`
`would have conveyed to a person of ordinary skill in the art.
`
`4 During examination of the ‘235 Patent, a copy of Inglett was submitted by the
`
`Applicant in an Information Disclosure Statement on June 15, 2012. Petitioner
`
`respectfully submits that the Examiner clearly did not appreciate the relevance of
`
`Inglett to the subject matter of at least claims 1, 2, 4, 6, 8, 9, 11, 12 and 14-17, for
`
`the reasons set forth in detail herein.
`
`

`
`IV. Claim Construction
`
`Pursuant to 37 C.F.R. § 42.100(b), and solely for purposes of this inter
`
`partes review, Petitioner construes the claim language of the ‘235 Patent such that
`
`the claims are given their broadest reasonable interpretation in light of the
`
`specification of the ‘235 Patent. Petitioner notes that several of the terms which
`
`appear in the claims are expressly defined or otherwise discussed in the ‘235
`
`Patent. These terms include “dextrose equivalent (DE),” “DP—N,” “degree of
`
`polymerization,
`
`rnonosaccharide,” “disaccharide,
`
`oligosaccharide,”
`
`37
`
`CC
`
`37
`
`66
`
`“polysaccharide,” “dry solids,
`
`syrup,” and “viscosity.” Exhibit 1001, col. 3,
`
`77
`
`66
`
`lines 12-26; col. 3, lines 51-58; col. 4, lines 13-14. Petitioner construes the
`
`aforementioned claim terms in accordance with their meaning as expressly set
`
`forth in the ‘235 Patent.
`
`The following additional claim term is construed as follows:
`
`C
`
`‘High Potency Sweetener”
`
`The ‘235 Patent discusses “high potency sweeteners” in Example 33 (C01.
`
`34) and indicates that “[h]igh potency sweeteners are often added to foods and
`
`beverage in very small quantities to achieve the desired sweetness.” Exhibit 1001,
`
`cal. 34, lines 55-57. Rebiana is the only substance specifically identified as a
`
`“high potency sweetener” in the ‘235 Patent. Exhibit 1001, cal. 34, line 60.
`
`

`
`A “high potency sweetener” is understood by persons in the field to mean a
`
`substance having a taste which is more intense in sweetness than a sugar such as
`
`table sugar (sucrose), glucose or fructose on an equal weight basis. This
`
`understanding is evidenced by Prakash (Exhibit 1005, 1] [0038]), as discussed in
`
`Dr. York’s Declaration (Exhibit 1015, 1] 43). The claim term “high potency
`
`sweetener” should therefore be construed to mean a substance which has a
`
`sweetness intensity, on an equal weight basis, higher than that of a sugar such as
`
`sucrose, glucose or fructose.
`
`V.
`
`Level of Ordinafl Skill in the Art
`
`A person of ordinary skill in the art (POSA) is presumed to be aware of all
`
`the pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. With respect to the ‘235 Patent, a POSA would have had
`
`knowledge of the scientific and patent literature as of May 9, 2008, concerning
`
`sweetener syrups which contain mono-, di—, oligo- and/or polysaccharides and
`
`which are prepared by hydrolysis of starch. As confirmed by the accompanying
`
`Declaration of Dr. William S. York (Exhibit 1015, fll 24), a POSA in this art would
`
`have a bachelor’s degree in polymer chemistry and at least five years of experience
`
`in designing and implementing experiments related to a) the chemical or enzymatic
`
`fragmentation of polymers, such as polysaccharides, to produce products with
`
`

`
`particular chemical and physical properties, and b) the characterization of the
`
`physical and chemical properties of the products so obtained.
`
`VI. There is a Reasonable Likelihood that at least One Claim of the
`6
`
`235 Patent is Unpatentable
`
`A.
`
`Legal Principles
`
`For the reasons set forth in detail hereafter, the challenged claims are
`
`anticipated and/or obvious under 35 U.S.C. §§102 and 103, respectively. “To
`
`anticipate a claim, a prior art reference must disclose every limitation of the
`
`claimed invention, either explicitly or inherently.” In re Schreiber, 128 F.3d 1473,
`
`1477 (Fed. Cir. 1997). Even if a claim is not anticipated, the claim is still invalid if
`
`it would have been obvious to a person of ordinary skill in the pertinent art at the
`
`time the claimed invention was made. 35 U.S.C. §103.
`
`As will be addressed in more detail hereafter, the challenged claims recite
`
`certain viscosity characteristics of the syrups which are the subject of the ‘235
`
`Patent.
`
`In particular, the claims set forth limitations on the maximum viscosity the
`
`syrups may have as measured under a particular set of test conditions. None of the
`
`prior art references relied on in this Petition expressly characterize the viscosities
`
`of the syrups described therein under such conditions. However, “[w]here claimed
`
`and prior art compositions are identical or substantially identical in structure or
`
`composition, or are produced by identical or substantially identical processes, a
`
`primafacie case of either anticipation or obviousness has been established.”
`
`9
`
`

`
`MPEP § 21 12.01(I), citing In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433
`
`(CCPA 1977). “[T]he discovery of a previously unappreciated property of a prior
`
`art composition, or of a scientific explanation for the prior art’s functioning, does
`
`not render the old composition patentably new to the discoverer.” Atlas Powder
`
`Co. v. Ireeo Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999).
`
`There is no requirement that a person of ordinary skill in the art would have
`
`recognized the inherent disclosure at the time of invention, but only that the subject
`
`matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva
`
`Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)
`
`B.
`
`Summary of Unpatentability Arguments
`
`Ramsay (Exhibit 1006), Verwaerde (Exhibit 1002), JP ‘794 (Exhibit 1008),
`
`JP ‘492 (Exhibit 1010), Abdullah (Exhibit 101]) and Inglett (Exhibit 1012) each
`
`disclose one or more examples of specific syrups having carbohydrate
`
`compositions expressly meeting all of the compositional limitations of independent
`
`claims 1 and 8, as well as the limitations of one or more of the syrup composition
`
`claims which depend from those claims, when such claims are given their broadest
`
`reasonable interpretation.
`
`None of these references expressly measured and reported the viscosities of
`
`the disclosed syrups under the test conditions specified in the ‘235 Patent claims
`
`(about 78% dry solids, about 100° F). However, since the viscosities of syrups are
`
`10
`
`

`
`directly determined by their compositions, the Viscosity limitations of these claims
`
`are inherently met by the syrups disclosed in the aforementioned prior art
`
`references as a natural consequence of such prior art syrups being compositionally
`
`indistinguishable from the syrups defined by at least claims 1 and 8 of the ‘235
`
`Patent.
`
`Additionally, as set forth in the Declaration of Dr. William S. York (Exhibit
`
`1015, 1] 81-10], Addendum), a syrup prepared in accordance with the examples of
`
`Ramsay and meeting the syrup compositional limitations of many of the
`
`challenged claims of the ‘235 Patent has been proven to have a Viscosity at about
`
`lO0°F and about 78% dry solids that is significantly lower than the maximum
`
`viscosities permitted by such claims. This means that one or more of the syrups
`
`disclosed by Ramsay fall within the scope of, and thus anticipate, the challenged
`
`claims of the ‘235 Patent.
`
`Accordingly, a person of ordinary skill in the art considering these claims
`
`of the ‘235 Patent in light of the prior art would have understood that each of the
`
`aboVe—mentioned references anticipates at least independent claims l and 8.
`
`To the extent the Viscosity limitations of the ‘235 Patent claims are arguably
`
`not inherently anticipated by the references, selecting a syrup to have a Viscosity
`
`no greater than the maximum viscosities recited in the ‘235 Patent claims (i.e.,
`
`falling within the Viscosity ranges defined by the claims) would have been obvious
`
`ll
`
`

`
`to a person of ordinary skill in the art in view of the recognized processing
`
`advantages afforded by reduced sugar, reduced viscosity syrups, as evidenced by
`
`JP ‘596 (Exhibit 1014). Such person would have had ample motivation to prepare
`
`syrups having viscosities no greater than about 30,000 cPs (as specified in claims 1
`
`and 8) or no greater than about 15,000 cPs (as specified in claims 2 and 9) at about
`
`78% dry solids and about 100° F, in View of the art—recognized beneficial
`
`characteristics of lower viscosity syrups. Verwaerde and JP ‘596 confirm that
`
`workers in the field knew and appreciated that the viscosity of a syrup increases as
`
`its content of high molecular weight polysaccharide increases and that the syrup
`
`viscosity could therefore be advantageously lowered by reducing the amount of
`
`polysaccharide present.
`
`Accordingly, the viscosity of a syrup was recognized in the art, at the time
`
`the priority application of the ‘235 Patent was filed, to be a direct result of the
`
`polysaccharide content of the syrup, i.e., the amount of polysaccharide in a syrup
`
`was acknowledged to be a result—effective variable. Varying the viscosity of a
`
`syrup was known to lead to changes in the processability of the syrup, with lower
`
`viscosities being associated with easier handling. A person ordinarily skilled in
`
`the art would have been motivated to pursue lower viscosity syrups and thus would
`
`have found it obvious to control or vary the polysaccharide content of the prior art
`
`syrups of Ramsay, Verwaerde, JP ‘794, JP ‘492, Abdullah and/or Inglett in order
`
`12
`
`

`
`to attain a desirably low viscosity, e.g., to arrive at a syrup having a viscosity equal
`
`to or less than about 30,000 cPs at about 78% dry solids and about 100° F as
`
`recited in claims 1 and 8 of the ‘235 Patent. The ‘235 Patent does not present any
`
`evidence indicating that syrups having viscosities lower than the maximum
`
`viscosities recited in the claims have unexpected or surprising characteristics as
`
`compared to syrups having somewhat higher viscosities. Additionally, the ‘235
`
`Patent does not provide any evidence that controlling the viscosity of a syrup to be
`
`below the stated maximum, rather than somewhat higher than the recited
`
`maximum viscosity, is in some way critical or important. Nor was any such
`
`evidence submitted during examination of the ‘235 Patent. In sum, the ‘235
`
`Patent’s prosecution history is devoid of any evidence of secondary indicia of
`
`nonobviousness that would overcome the strong primafacie showings of
`
`obviousness set forth herein. In any event, secondary indicia of nonobviousness
`
`cannot rebut a showing of anticipation.
`
`Claims 14 and 15 depend from claims 1 and 8, respectively, and are directed
`
`to food, beverage, feed or pharmaceutical products comprising the syrup of claim 1
`
`or 8. Verwaerde, Ramsay, JP ‘794, JP ‘492, Abdullah and Inglett each additionally
`
`teach that the syrups described therein are useful ingredients in food, beverage
`
`and/or pharmaceutical products, thus anticipating or rendering obvious the subject
`
`l3
`
`

`
`matter of dependent claims 14 and 15 of the ‘235 Patent when such claims are
`
`given their broadest reasonable interpretation.
`
`Claims 16 and 17 depend from claims 14 and 15, respectively, and are
`
`directed to products of claim 14 or 15 which further comprise a high potency
`
`sweetener. Verwaerde teaches the preparation of food products using the syrups
`
`described therein in combination with saccharin, a high potency sweetener. JP
`
`‘265 discloses that it was known in the art to use syrups similar to those taught by
`
`Verwaerde, Ramsay, JP ‘794, JP ‘492, Abdullah or Inglett (i.e., syrups containing
`
`low amounts of mono—, di— and polysaccharides, but relatively high amounts of
`
`oligosaccharides) in combination with high potency sweeteners to prepare foods,
`
`drinks and medicines. Dependent claims 16 and 17 therefore would have been at
`
`least obvious to a person of ordinary skill in the art at the time the priority
`
`application of the ‘235 Patent was filed.
`
`C.
`
`Ground 1 - Claims 1, 4, 6, 8, 11, 12, 14 and 15 are
`unpatentable under 35 U.S.C. § 102(b) as anticipated by
`Ramsay.
`
`Examples 9, 15 and 16 of Ramsay (Exhibit I006) disclose glucose polymer
`
`solutions which each have a carbohydrate composition meeting the syrup
`
`compositional limitations from each of claims 1, 4, 6, 8, 11, 12, 14 and 15 as
`
`explained in detail in Dr. York’s Declaration (Exhibit 1015, 1] 62-68, 71-76). The
`
`syrups of Examples 9, 15 and 16 would each inherently have had a viscosity
`
`14
`
`

`
`meeting the limitations recited in these claims, as fiirther evidenced by Dr. York’s
`
`Declaration (Exhibit 1015, ‘H 80~]01).
`
`The relevance of each of Examples 9, 15 and 16 of Ramsay to independent
`
`claims 1 and 8 of the ‘235 Patent is summarized in the following claim charts,
`
`wherein the disclosure of Ramsay is in italics below the preamble and each
`
`element of the claim:
`
`Claim 1
`
`1. A syrup having a carbohydrate composition comprising:
`Examples 9, 15 and I 6 ofRamsay describe solutions in water ofglucose polymer
`mixture products. Col. 8, line 44, to Col. 9, line 10.
`
`a. from about 10% to about 25% total mono- and di-saccharides on a dry
`
`weight basis;
`The solution ofstarch hydrolysate obtained in Example 9 ofRamsay after
`fractionation had a glucose polymer mixture distribution containing 2.6 %
`glucose and 8.8 % maltose, for a total of] 1.4 % mono- and di—saccharides. Col.
`7, lines 54-55.
`
`The aqueous solution obtained in Example 15 ofRamsay had a glucose polymer
`mixture distribution containing 2.0 % glucose and 8.4 % maltose, for a total of
`10.4 % mono- and di—saccharides. Col. 8, lines 53-54.
`
`The aqueous solution obtained in Example 16 ofRamsay had a glucose polymer
`mixture distribution containing 2.0 % glucose and 8.4 % maltose, for a total of
`15.5 % mono- and di—saccharides. Col. 9, lines 3-4.
`
`b. greater than 60% oligosaccharides on a dry weight basis with a degree
`of polymerization of from about 3 to about 14;
`The solution ofstarch hydrolysate obtained in Example 15 ofRamsay after
`fractionation had a glucose polymer mixture distribution containing 12.6%
`maltotriose, 10.0% maltotetraose, 8. 0% maltopentaose, I 7.4% maltohexaose,
`18.1% maltoseptaose, 8.9% maltooctaose, 5.1% maltononaose, and 2.8%
`
`15
`
`

`
`maltodecaose, for a total of 82.9% oligosaccharides having a degree of
`polymerization offlom 3 to 10. Col. 7, lines 55-58.
`
`The aqueous solution obtained in Example 15 ofRamsay had a glucose polymer
`mixture distribution containing 13.4% maltotriose, 10.5% maltotetraose, 8. 7%
`maltopentaose, 1 7.3% maltohexaose, 16.4% maltoseptaose, 7.4% maltooctaose,
`4.2% maltononaose, and 2.8% maltodecaose, for a total of 80. 7%
`oligosaccharides having a degree ofpolymerization offrom 3 to 10. Col. 8, lines
`54-5 7.
`
`The aqueous solution obtained in Example 16 ofRamsay had a glucose polymer
`mixture distribution containing 16.8% maltotriose, 12.2% maltotetraose, 8.5%
`maltopentaose, 16. 6% maltohexaose, 14.5% maltoseptaose, 5.9% maltooctaose,
`3.2% maltononaose, and 1.9% maltodecaose, for a total of 79.6%
`oligosaccharides having a degree ofpolymerization offrom 3 to 10. Col. 9, lines
`4~ 7.
`
`c. a viscosity not greater than about 30,000 cPs at about 78% dry solids
`and about 100°F.; and
`A syrup prepared in accordance with the examples ofRamsay and having a
`composition very similar to that ofExamples 9, 15 and 16 ofRamsay was found to
`have a viscosity of2352 cPs at about 78% dry solids and about 100°F. See Exhibit
`1015, 1] 81-88.
`
`d.
`
`less than about 18% oligosaccharides and polysaccharides on a dry
`weight basis with a degree of polymerization of about at least 11.
`The solution ofstarch hydrolysate obtained in Example 9 ofRamsay after
`fractionation comprised 5. 7% “1 1-13 glucose units. ” Col. 7, line 59. Since the
`total amount of the components listed equals 100%, the solution did not comprise
`any component having more than 13 glucose units. Thus, the solution obtained in
`Example 15 contained a total of 5. 7% oligosaccharides and polysaccharides with
`a degree ofpolymerization ofat least 11.
`
`The aqueous solution obtained in Example 15 ofRamsay had a glucose polymer
`mixture distribution of 8.8% “1 1 -25 glucose units” and 0.7% “glucose units
`greater than 25. ” Thus, the aqueous solution obtained in Example 15 contained a
`total of 9.5 % oligosaccharides and polysaccharides with a degree of
`polymerization ofat least 1]. Col. 8, lines 58-59.
`
`The aqueous solution obtained in Example 16 ofRamsay had a glucose polymer
`
`16
`
`

`
`mixture distribution of 4.5 % “11—25 glucose units” and 0. 7% “glucose units
`greater than 25. ” Thus, the aqueous solution obtained in Example 16 contained a
`total of5.2 % oligosaccharides andpolysaccharides with a degree of
`polymerization ofat least 1]. Col. 9, lines 7~8.
`
`8. A syrup having a carbohydrate composition comprising:
`Examples 9, 15 and 16 ofRamsay describe solutions in water ofglucose polymer
`mixture products. Col. 8, line 44, to Col. 9, line 10.
`
`Claim 8
`
`a. from about 10% to about 25% total mono- and di-saccharides on a dry
`
`Weight basis;
`The solution ofstarch hydrolysate obtained in Example 9 ofRamsay after
`fractionation had a glucose polymer mixture distribution containing 2.6 %
`glucose and 8.8 % maltose, for a total of] 1.4 % mono- and di—saccharides. Col.
`7, lines 54-55.
`
`The aqueous solution obtained in Example 15 ofRamsay had a glucose polymer
`mixture distribution containing 2.0 % glucose and 8.4 % maltose, for a total of
`10.4 % mono- and di—saccharides. Col. 8, lines 53-54.
`
`The aqueous solution obtained in Example 16 ofRamsay had a glucose polymer
`mixture distribution containing 2.0 % glucose and 8.4 % maltose, for a total of
`15.5 % mono- and di—saccharides. Col. 9, lines 3-4.
`
`h. greater than about 50% oligosaccharides on a dry weight basis with a
`degree of polymerization of from about 3 to about 7; and
`The solution ofstarch hydrolysate obtained in Example 9 ofRamsay after
`fractionation had a glucose polymer mixture distribution containing 12.6%
`maltotriose, 10. 0% maltotetraose, 8. 0% maltopentaose, 1 7.4% maltohexaose, and
`18.1% maltoseptaose, for a total of66. 1% oligosaccharides having a degree of
`polymerization offrom 3 to 7. Col. 7, lines 55—58.
`
`The aqueous solution obtained in Example 15 ofRamsay had a glucose polymer
`mixture distribution containing 13.4% maltotriose, 10.5% maltotetraose, 8. 7%
`maltopentaose, 17.3% maltohexaose, and 16.4% maltoseptaose, for a total of
`66.3% oligosaccharides having a degree ofpolymerization offrom 3 to 7. Col. 8,
`lines 54-5 7.
`
`17
`
`

`
`The aqueous solution obtained in Example I 6 ofRamsay had a glucose polymer
`mixture distribution containing 16.8% maltotriose, 12.2% maltotetraose, 8.5%
`maltopentaose, 16.6% maltohexaose, and 14.5% maltoseptaose, for a total of
`68.6% oligosaccharides having a degree ofpolymerization offirom 3 to 7. Col. 9,
`lines 4~ 7.
`
`c. a viscosity not greater than about 30,000 cPs at about 78% dry solids and
`about 100° F.;
`A syrup prepared in accordance with the examples ofRamsay and ha