Derwin G. Hawley et al.

Patent Trials and Appeals Board

Mar 19, 2020

13985712 - (D) (P.T.A.B. Mar. 19, 2020)

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.
13/985,712 12/16/2013 Derwin G. Hawley 9610-101421-US 8386
109813 7590 03/19/2020
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
03/19/2020 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DERWIN G. HAWLEY, EDWARD D. HOWEY,
WILLIAM H. CLEAVER, LYNN C. HAYNES, DESIREE S. BRAMBLE,
NING ZHOU, BIN ZHAO, TIMOTHY S. HANSEN,
DOMENICO R. CASSONE, and SARWAT GABRIEL
____________

Appeal 2019-002504
Application 13/985,712
Technology Center 1700
____________

Before JEFFREY T. SMITH, MERRELL C. CASHION, JR., and
JANE E. INGLESE, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–15, 17, 18, 49, and 50. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. The real party in interest is Intercontinental Great Brands
LLC and whose parent corporation is Intercontinental Brands LLC, whose
parent corporation is Mondelez Global LLC, whose parent corporation is
Mondelez International, Inc. (Appeal Br. 3).
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STATEMENT OF THE CASE
Appellant’s invention is generally directed to a method of production
of a stabilized whole grain flour that is less susceptible to rancidity
development and has increased shelf stability than whole grain flours
produced by conventional methods. (Appeal Br. 10). Claim 1 illustrates the
subject matter on appeal and is reproduced below:
1. A method for the production of stabilized whole grain flour
comprising:
a) milling whole grains to obtain a separate endosperm fraction,
a separate fine bran and germ fraction, and a separate coarse
bran and germ fraction, wherein said endosperm fraction has a
particle size distribution of 0% by weight greater than 500
microns and less than or equal to about 20% by weight greater
than 210 microns and an ash content of about 0.5 wt. % to
about 0.6% wt. %, said fine bran and germ fraction has a
particle size distribution of less than or equal to about 15% by
weight greater than 500 microns and less than or equal to about
40% by weight greater than 210 microns and an ash content
between 0.6 wt. % and about 2.0 wt. %, and said coarse bran
and germ fraction has a particle size distribution of at least 75%
by weight greater than 500 microns, from about 10% to about
25% by weight having a particle size between 149 microns and
500 microns and less than or equal to about 10% by weight
having a particle size of less than 149 microns and an ash
content of above 2 wt. %,

b) grinding said separate coarse bran and germ fraction without
grinding said fine bran and germ fraction to obtain a ground
coarse bran and germ fraction having a particle size
distribution of less than or equal to about 15% by weight
greater than 500 microns and less than or equal to about 40%
by weight greater than 210 microns,

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c) combining and stabilizing said fine bran and germ fraction
and said ground coarse bran and germ fraction to obtain a
stabilized fine bran and germ fraction having a particle size
distribution of less than or equal to about 15% by weight
greater than 500 microns and less than or equal to about 40%
by weight greater than 210 microns, and

d) combining said stabilized fine bran and germ fraction with
said endosperm fraction to obtain a stabilized whole grain flour
having: a particle size distribution of 0% by weight of particles
greater than 500 microns, from about 5% to about 15% by
weight of particles greater than 250 microns, from about 10% to
about 20% by weight of particles greater than 210 microns, less
than or equal to about 25% by weight of particles greater than
149 microns but less than 250 microns, and from about 65% to
about 85% by weight of particles sized less than 149 microns,

wherein said fine bran and germ fraction is from 3% by weight
to 15% by weight, and a lipase activity of less than 250
units/gram (U/g) of the stabilized whole grain flour, where a
unit is a number of micromoles of 4-methylumbelliferyl
heptanonate hydrolyzed per hour per gram.

Appellant requests review of the Examiner’s rejection of claims 1–15,
17–18, and 49–50 under 35 U.S.C. § 103(a) as unpatentable over Gingras et al.
(US 2009/0155439 A1, published June 18, 2009) (“Gingras”) in view of Sanchez
et al. (EP 2 127 525 A1, published December 2, 2009) (“Sanchez”). (Appeal Br.
9; Final Act. 2–5).

OPINION
Upon consideration of the evidence in this appeal record in light of the
respective positions the Examiner and Appellant advance, we determine that
Appellant has not identified reversible error in the Examiner’s determination
that the applied prior art would have rendered the subject matter recited in
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claims 1–15, 17, 18, 49, and 50 obvious to one of ordinary skill in the art
within the meaning of 35 U.S.C. § 103(a). Accordingly, we sustain the
Examiner’s § 103(a) rejection of the above claims for the reasons set forth in
the Final Action and the Answer. We add the following.
Appellant initially argues Gingras and Sanchez do not disclose or
suggest a method of production of a stabilized whole grain flour resulting in
a particle size distribution of the final flour as recited in claim 1.2 (Appeal
Br. 11–12.)
Appellant’s argument lacks persuasive merit for the reasons provided
by the Examiner. (See statement of the rejection in the Answer and Final
Act.)
The Examiner determines the combination of Gingras and Sanchez
would have suggested to a person of ordinary skill in the art a method of
production of a stabilized whole grain flour resulting in a particle size
distribution of the final flour as required by independent claim 1. (Final Act.
2–5.) The Examiner finds Gingras discloses a method of forming stabilized
whole grain flour comprising milling wheat into the endosperm stream and
the bran/germ stream. (Final Act. 2; Gingras ¶¶13, 28, 33.) Gingras
discloses stabilization of bran material is achieved by inactivation of lipase
enzyme in the bran/germ fraction. (Gingras ¶ 51.) The Examiner finds
Gingras fails to disclose grinding the coarse bran fraction, the endosperm
fraction, the final bran and germ fraction to have the particle size distribution
as required by independent claim 1. (Final Act. 2.) The Examiner finds

2 Appellant presents substantive arguments addressing claims 1–15, 17, 18,
49, and 50 together. Appeal Br. 10. We limit our discussion to independent
claim 1 as representative of the subject matter on appeal.
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Sanchez discloses a process for forming wheat flour including a bran
fraction and an endosperm fraction. (Final Act. 3). The Examiner also finds
that Sanchez separates the bran fraction into a fine bran portion having
particles measuring about 200 microns and a coarse bran portion that is
pulverized to a mean particle size of about 180 microns and then combining
the two bran portions to form a single bran component with a particle size of
80–200 microns. (Final Act. 3; Sanchez ¶¶ 28–38.) The Examiner
specifically states:3
The objective of Leo et al [Gingras] is form a whole
wheat flour composition wherein the bran/germ fraction is
stabilized so that the drawbacks of storage instability attributed
by the bran/germ portion are avoided. Leo et al [Gingras] teach
the bran/germ portion can be separated into fine and coarse
fractions. It would have been obvious to one skilled in the art to
ground the coarse fraction as taught by Sanchez et al so that all
the separated fractions can have fine particle sizes when they
are combined to form a whole grain flour composition. If the
fine fraction already has a small particle size, it does not have to
be ground again as taught by Sanchez. While Sanchez et al do
not disclose the specific percentages and the sizes within the
percentages as claimed, they teach an exemplified composition
of whole grain with exemplified appropriate particle sizes. It
would have been within the skill of one in the art to obtain
specific amounts in specific size ranges depending on the
degree of fineness and lacking of grittiness mouthfeel desired.
Such parameter can readily be determined by one skilled in the
art through routine experimentation. While Sanchez et al do not
teach[] dividing the coarse fraction into first and second
fraction, it would have been within the skill of one in the art to
do so to ensure obtaining the desired sizes. In grinding and
milling whole grain, it is well known to repeat the grinding and
classifying operation to obtain the desired fractions and sizes.

3 We note that the Examiner misidentifies Gingras as Leo et al. in the noted
quotation.
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(Final Act. 4.)
It is well settled that the disclosure of a range in the prior art which
substantially overlaps a claimed range is generally sufficient in and of itself
to render the claimed range prima facie obvious. See In re Woodruff, 919
F.2d 1575, 1578 (Fed. Cir. 1990); In re Wertheim, 541 F.2d 257, 262 (CCPA
1976); In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974). This is
especially true here, where one having ordinary skill in the art would have
been led to a method for the production of a stabilized whole grain flour
wherein the flour has been separated into an endosperm fraction and course
and fine bran fractions as suggested by the combination of Gingras and
Sanchez and as determined by the Examiner. (Ans. 9.)
It is also well settled that where patentability is predicated upon a
change in a condition of a prior art composition, such as a change in size,
concentration or the like, the burden is on the applicant to establish with
objective evidence that the change is critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellant argues the claimed method reduces the release of oxidizing
enzymes such as lipase and lipoxygenase which are released as a result of
fine particle grinding or milling and contribute to the development of
rancidity. (Appeal Br. 13)
Appellant’s argument is not persuasive because this is the same
objective achieved by the deactivation of the enzymes disclosed by Gingras.
(Gingras ¶ 51.)
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Appellant argues the Examiner has not properly considered the
Declaration of inventor Lynn C. Haynes filed under 37 C.F.R. § 1.132 filed
on June 14, 2017 (hereinafter, “Haynes I”). Appellant argues this
declaration establishes
that the claimed three separate fractions and the claimed
particle size distributions in each of the fractions are critical to
the resulting measurable stability of the flour, and that the
presently claimed method would not be obvious to one of
ordinary skill in the art by the combination of Gingras and
Sanchez as proposed in the Office Action.

(Appeal Br. 12)
We have considered Haynes I, but do not find it persuasive of
establishing patentability of the appealed subject matter. Although factual
evidence is preferable to opinion testimony, such testimony is entitled to
consideration and some weight so long as the opinion is not on the ultimate
legal conclusion at issue. While an opinion as to a legal conclusion is not
entitled to any weight, the underlying basis for the opinion may be
persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA 1962). Some
weight may be given to a persuasively supported statement of one skilled in
the art on what was not obvious to him (see In re Lindell, 385 F.2d 453, 456
(CCPA 1967) and In re Weber, 341 F.2d 143 (CCPA 1965)). Here,
Declarant Haynes has provided an opinion as to why the Examiner’s
rejection is improper. Declarant Haynes indicates disagreement with the
Examiner’s position that applicant has not established criticality or
unexpected results with respect to the claimed three separate fractions and
particle sizes. (Haynes I ¶ 5.) Declarant Haynes provides a discussion of the
inventive method developed including the reduction and lipase activity
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achieved. (Haynes I ¶¶ 6–9.) Declarant Haynes provides an opinion
explaining why the rejection (office action) is improper. (Haynes I ¶¶ 10–
18.) However, Declarant Haynes has not directed us to other evidence to
support the opinion presented.
Appellant argues the Examiner has not properly considered the
Declaration of inventor Lynn C. Haynes filed under 37 C.F.R. § 1.132 filed
on August 6, 2018 (hereinafter, “Haynes II”). (App. Br. 12–20).
We have considered the Haynes II declaration, but do not find the
evidence presented commensurate in scope with the claimed invention.
Specifically, the Declaration does not show the size distribution of the
samples. The declarant has indicated the comparison was of flours produced
by the method of claim 1 compared to those that would have been expected
by the proposed combination of Gingras and Sanchez. (Haynes II ¶ 9.)
The declaration fails to provide specific information as to the
compositions, including particle sizes, resulting from the methods used to
make them. We cannot determine from the evidence presented where the
particles size distributions present in the tested flour compositions fall within
the claimed range of particle size distributions. Therefore, we agree with the
Examiner’s conclusion that the size distributions of the samples in the
Haynes II Declaration are not commensurate in scope with the entire range
of the respective size distributions claimed. (Ans. 12–13). A showing of
unexpected results must be reasonably commensurate in scope with the
degree of protection sought by the claims on appeal. In re Grasselli, 713
F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA
1980). Declarant Haynes has also not provided an explanation as to why
this limited showing of sample particle size distributions is representative of
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the entire scope of the claimed particle size distribution ranges of the
invention. Under these circumstances, it cannot be said that the Appellant
has demonstrated that the claimed subject matter achieves unexpected results
relative to Gingras. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973).
For the reasons stated above and those presented by the Examiner we
sustain the prior art rejection of claims 1–15, 17, 18, 49, and 50 under 35
U.S.C. § 103(a).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–15, 17,
18, 49, 50
103(a) Gingras, Sanchez 1–15, 17,
18, 49, 50

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED