Appeal No. 2001-1725
Application 09/009,536
declaration are said to “use the same soybean milk” (Examiner’s Answer, page 8, line
7).
By way of background, we note that our research reveals that legumes (including
soybeans) consist of an outer seed coat (testa or hull) and the embryo, with cotyledons
being the predominant structure of the latter. The seed coat may be removed to provide
cotyledons substantially free of seed coat or testa, that is, hulled legumes.2 The effect
of the cotyledon and its content upon flavor is well known. If the cotyledon is damaged
and its enzymes released, a beany or grassy flavor may be imparted into the food
products (US Patent 4,259,358, column 3, lines 27-32; US Patent 4,748,038, column 5,
line 42 et seq.).
The Examiner pointed out that “The recited use of ‘dehypocotyl’ soybeans has
no patentable bearing on the claimed invention, as it was a well-known common step in
the production of soybean milk in the art, whether specifically recited or not” (Examiner’s
Answer, page 8, lines 1-3)3. Thus, the Examiner has concluded that the hypocotyl is
usually removed from soybeans when preparing them for soy milk. However, the
Examiner has pointed us to no evidence in the record that supports this conclusion, and
efforts on our part to determine whether this is a “well-known common step” have
proved fruitless with the limited resources immediately available to us.
2 See Kirk-Othmer, Encyclopedia of Chemical Technology, Fourth Edition, Volume 22, pp. 591 et seq.,
“Soybeans and Other Oilseeds” (1997, John Wiley & Sons) and US Patent 4,259,358, Column 5, line 63
– column 6, line 4.
3 This is not the type of fact the PTO is free to take official notice of. See In re Spormann, 150 USPQ
449, 452 (CCPA 1966), In re Ahlert 424 F.2d 1088, 1091, 165 USPQ 418, 420-421 (CCPA 1970).
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