Ex Parte 6777014 et al

Patent Trial and Appeal Board

Sep 19, 2013

95000238 (P.T.A.B. Sep. 19, 2013)

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.
95/000,238 04/20/2007 6777014 LEE655/52000 2959
60474 7590 09/19/2013
GRAY ROBINSON, P.A.
P.O. Box 2328
FT. LAUDERDALE, FL 33303-9998
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/19/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

SARA LEE CORPORATION
Requester and Appellant

v.

NATURE’S FIRST, INC.
Patent Owner and Respondent
____________

Appeal 2013-006017
Reexamination Control 95/000,238
Patent 6,777,014 B2
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-006017
Reexamination Control 95/000,238
Patent 6,777,014 B2

2
Sara Lee Corporation (“Requester”)
1
appeals under 35 U.S.C.
§§ 134(c) and 315(b) the Examiner’s decision not to reject claims 1-7, 10,
12-17, 20, 21, 26, 27, and 30.
2
We have jurisdiction under 35 U.S.C.
§§ 134(c) and 315(b).
We heard oral arguments from Requester on August 28, 2013, a
written transcript of which will be entered into the electronic record in due
course.
We enter two new grounds of rejection pursuant to our authority
under 37 C.F.R. § 41.77(b) and decline to reach the remaining non-adopted
rejections appealed by Requester.

STATEMENT OF THE CASE
United States Patent 6,777,014 B2 (hereinafter the “’014 Patent”),
which is the subject of the current inter partes reexamination, issued to
Harjit Singh on August 17, 2004. The ’014 Patent is the subject matter of a
patent infringement suit styled Nature's First Inc. v. Kraft Foods Inc.,
C.A. No. 2:06cv284 – TJW, which is currently stayed in the United States
District Court for the Eastern District of Texas, pending the outcome of this
reexamination. See Req. App. Br. 2.

1
See Corrected Request for Inter Partes Reexamination filed
April 20, 2007.
2
See Requester’s Appeal Brief 2 (filed April 2, 2010) (hereinafter
“Req. App. Br.”); Examiner’s Answer (mailed August 30, 2011) (hereinafter
“Ans.”) incorporating by reference the Right of Appeal Notice (mailed
December 16, 2009) (hereinafter “RAN.”).
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Patent Owner Nature’s First, Inc.
3
(hereinafter “Patent Owner”) filed a
Respondent Brief in this appeal.
The ’014 Patent relates to the use of “agglomerated” or “instantized”
milk powder for beverage vending purposes. Col. 2, ll. 24-41. In particular,
the claims are directed to a particular agglomerated non-fat milk powder
product having a bulk density between 0.25 g/cc and 0.34 g/cc and a
scorched particle mass not greater than 15 milligrams. See Req. App.
Br. 31-37, Claim App’x. Claim 10, which is illustrative of the appealed
subject matter, reads as follows (with underlining showing added text and
brackets showing deleted text relative to the original patent claim):
10. A method of preparing a dairy beverage which includes
a natural dairy beverage additive manufactured for use in a
device which vends beverages, the method comprising the steps
of:
agglomerating [liquid] natural milk into an agglomerated
non fat dry milk [a natural dairy beverage additive] powder
consisting of dairy ingredients only, wherein [such that] the
agglomerated non fat dry milk powder has a particle bulk
density in the range of 0.25 g/cc to 0.34 g/cc and a scorched
particle mass not greater than 15 milligrams; and
placing at least the agglomerated non fat dry milk powder
and coffee into the [a] device which vends beverages.
Req. App. Br. 34, Claims App’x.

3
See Patent Owner’s Respondent Brief 1 (filed July 14, 2010) (hereinafter
“PO Res. Br.”).
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Requester contests the Examiner’s decision not to maintain the
following proposed rejections:
I. Claims 1-5, 7, 10, 12-17, 20, 21, 26, 27, and 304 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under
35 U.S.C. §103(a) as obvious over Hall
5
(Ground 1; RAN 29-
39);
II. Claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 under 35 U.S.C.
§ 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§103(a) as obvious over Pisecky
6
(Ground 2; RAN 39-45);
III. Claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 under 35 U.S.C. §
103(a) as obvious over Meade
7
in view of any one of Newman,
8

Ford,
9
Reece ’002,
10
Annoni,
11
Reece ’610,
12
Luciano,
13
or

4
Although the RAN recites the rejection of claims 1-5, 7, 10, 12-21, 26, 27,
and 30, claims 8, 9, 11, 18, 19, 22-25, 28, and 29 were cancelled. Req. App.
Br. 2; PO Res. Br. 1.
5
Carl W. Hall et al., Drying of Milk and Milk Products, The Avi Publishing
Company, 1971 ("Hall").
6
Jan Pisecky, Handbook of Milk Powder Manufacture, Niro A/S, 1997
("Pisecky").
7
US 4,657,767, issued April 14, 1987, to Reginald E. Meade (“Meade”).
8
US 4,215,801, issued August 5, 1980, to Alec T. Newman et al.
(“Newman”)
9
US 5,918,768, issued July 6, 1999, to David F. Ford (“Ford”).
10
US 5,192,002, issued March 9, 1993, to Robert J. Reese et al.
(“Reese ’002”).
11
US 5,650,186, issued July 22, 1997, to Faust Annoni et al. (“Annoni”).
12
US 5,839,610, issued November 24, 1998, to Robert J. Reese et al.
(“Reese ’610”).
13
US 5,154,111, issued October 13, 1992, to Paoletti Luciano (“Luciano”).
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Loader
14
(together referred to as “the Vending Machine
References”) (Grounds 5-11 and 73; RAN 45-49);
IV. Claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 under 35 U.S.C.
§ 103(a) as obvious over Peebles
15
in view of published
U.S. Standards for either Whole or Nonfat Dry Milk (together
referred to as “US Grade Standards”)
16
and any one of the
Vending Machine References (Grounds 19-25, 44-50, 75 and
79; RAN 49-52);
17

V. Claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 under 35 U.S.C.
§ 103(a) as obvious over Hanrahan
18
in view of US Grade
Standards and any one of the Vending Machine References
(Grounds 26-31, 51-56, 76, and 80; RAN 52-55);

14
US 4,466,559, issued August 21, 1984, to Brian K. Loader (“Loader”).
15
US 2,835,586, issued May 20, 1958, to David D. Peebles (“Peebles”).
16
USDA Specifications for Instant Dry Whole Milk, published by the
US Department of Agriculture, Agricultural Marketing Service, Dairy
Division, (January 1993) and United States Standards for Grades of Nonfat
Dry Milk (Spray Process), published by the US Department of Agriculture,
Agricultural Marketing Service, Dairy Division (February 2, 2001). Since
the claims are directed only to nonfat milk, we reference only the latter
document as “US Grade Standards”.
17
The Examiner appears to rely on the US Grade Standards, but does not
expressly include these references in the rejection. See RAN 49-52.
Requester states the non-adopted rejection as including the US Grade
Standards (Req. App. Br. 6 and 23), and Patent Owner agrees with the
rejection as stated by Requester. PO Res. Br. 3 and 13.
18
US 3,185,580, issued May 25, 1965, to Francis P. Hanrahan et al.
(“Hanrahan”).
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VI. Claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 under 35 U.S.C.
§ 103(a) as obvious over Ewing
19
in view of US Grade
Standards and any one of the Vending Machine References
(Grounds 38-43-63-68-78, and 82; RAN 57-59)
Requester relies on the following evidence:
Declaration of Luningning (“Nini”) Virtusio executed
September 26, 2007 (hereinafter “Virtusio Decl.”).
The Patent Owner relies on the following evidence:
Declaration of Wolfgang B. Pietsch executed August 28, 2007
(hereinafter “First Pietsch Decl.”).
Second Declaration of Wolfgang B. Pietsch executed
February 29, 2008 (hereinafter “Second Pietsch Decl.”).
Supplemental Declaration of Wolfgang B. Pietsch executed
August 17, 2008 (hereinafter “Third Pietsch Decl.”).
Declaration of Ramesh C. Chandan executed August 29, 2007
(hereinafter “First Chandan Decl.”).
Second Declaration of Ramesh C. Chandan executed August 17, 2008
(hereinafter “Second Chandan Decl.”).
Declaration of Harjit Singh executed August 29, 2007 (hereinafter
“Singh Decl.”).

19
US 4,318,932, issued March 9, 1982, to Neal L. Ewing et al. (“Ewing”).
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OBIVIOUSNESS BASED ON PISECKY
Ground 2
Issue
The issue with respect to the obviousness rejection based on
Pisecky is:
Would it have been obvious to one of ordinary skill in the art at the
time of the invention to use an agglomerated nonfat milk powder having the
recited bulk density and scorched particle requirements and consisting of
dairy ingredients only in a vending device based on the teachings of
Pisecky?
Findings of Fact
Instant Properties
Pisecky describes that agglomerated nonfat (or skim) milk has
“instant properties” under certain conditions, namely with a mean particle
size higher than 180 microns, a bulk density of not higher than 0.48 g/cm
3
,
less than 20% of particles smaller than 125 microns and a fat content of not
higher and preferably well below 1%. Pisecky, Section 8.2.1, p. 112.
Pisecky teaches that the “usual quality requirements for instant skim
milk” include a maximum bulk density of 0.48 g/cm
3
and “scorched
particles disc A,” which we understand equates to a scorched particle mass
not greater than 15 milligrams. Id.
Pisecky identifies “wettability and dispersibility” in hot and cold
water as being “instant properties.” Id. at Section 10.7, pp. 170-171.
Pisecky states that “[a]gglomerated whole milk powder, in spite of
better appearance, flowability and reconstitutability than regular powder is
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still not instant in cold water, only in water of temperature higher than
40°C.” Id. at Section 8.2.2, p. 113 (emphasis added).
Pisecky describes separate conditions for preparing “Instant Whole
Milk Powder” stating that “[t]he basic technology is identical to that
incorporated in the production of agglomerated whole milk powder.
However the final product must fulfil [sic] many qualitative requirements
which are, to a great extent, influenced by the individual processing steps.”
Id. at Section 8.2.3, p. 113. The process for preparing “Instant Whole Milk
Powder” includes a “lecithin treatment using powdered lecithin.” Id. at
p. 114.
Pisecky states that
Nowadays the industry has mastered the technology for
achieving excellent coffee stability of plain milk powders, and
both instant skim milk powder and instant whole milk powder
can be used for preparing coffee or tea with milk. However the
[non-dairy] coffee whiteners were already well introduced on
the market and as they are cheaper than milk powders they
survive. The disadvantage of coffee whiteners compared to
instant milk powders is their poor instant characteristics when
the coffee is not that hot (i.e. below 50°C). Therefore further
product development was directed to make a cold coffee instant
powder, involving a lecithin treatment, conducted in the same
way as for instant whole milk powder.
Id. at Section 8.4.3, p. 124-125 (emphasis added).
Pisecky states that “[e]ven traces of free fat can be detrimental to
wettability.” Id. at Section 8.2.1, p. 112. Yet, Pisecky further states that
Milk powders with fat content less than 1 % have a wettable
surface. Fat containing powders, as instant whole milk powder
have, due to the free fat, a hydrophobic surface. Lecithin, being
both hydrophilic and lipophilic and, being also a natural
component of milk and therefore acceptable as an additive, is
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most suitable to be used for preparing the wetting agent which
is a solution of lecithin in an oil. This is sprayed on the final
powder when still warm and exposed to violent fluidization to
ensure as complete distribution over the total surface of the
agglomerates and particles as possible.
Id. at Section 10.7, p. 171 (italicized emphasis added). Pisecky does not
disclose lecithin as being soy-based. Id. generally.

Low Bulk Density
Pisecky states that “low bulk density, as achieved by agglomeration is
an important factor influencing other powder properties, mainly flowability
and instant properties.” Id. at Section 10.3, p. 154. Pisecky describes the
many factors involved in controlling the bulk density of milk powders. Id. at
pp. 154-161. For example, Pisecky teaches “[t]he main tools for obtaining a
low bulk density are agglomeration and increasing the occluded air content.”
Id. at p. 161.
Pisecky particularly discloses that a multistage dryer with fines return
to the nozzles achieves bulk densities as low as 0.35 g/cm
3
. Id. at
Section 8.2.1, p. 112.
Flowability
Pisecky states that “good flowability is the necessary qualification of a
product for its intended utilization, e:g [sic] powders to be used in
dispensing machines for various hot or cold drinks.” Id. at Section 10.5,
p. 165. Pisecky states that “[d]ifferent types of milk powder exhibit very
different degrees of free-flowing ability.” Id. at p.166.
Pisecky teaches that “agglomeration improves the freeflowing
properties and again [the] same factors [large mean particle size, narrow
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particle size distribution, spherical shape, and smooth surfaces] as mentioned
above apply.” Id.
Pisecky teaches that “increasing fat content of the milk powder
reduces flowability and it is well known that skim milk powder is more
freeflowing than whole milk powder.” Id.
Pisecky teaches that “a very detrimental effect on flowability is a high
free fat content especially if low melting fat is involved. Therefore lecithin
treatment of fat-containing powders used to achieve improved wettability
affects flowability.” Id.
Pisecky teaches that “the addition of free-flowing agents improves
f1owability. However there are limitations as to the type of product to which
they can be applied. Typical free flowing agents include sodium-aluminum
silicates, calcium silicate, calcium phosphate, precrystallized whey powder
or lactose as alpha-lactose-monohydrate.” Id. Pisecky teaches that
crystallized whey powder and alpha-lactose monohydrate are “lactose”
products “existing only in milk.” Id. at Section 9.3.3, p. 131.
Analysis
The Respondent argues that the Examiner erred in determining that
the evidence taken as a whole does not support a conclusion that it would
have been obvious to one of ordinary skill in the art to have used the nonfat
agglomerated milk product described in Pisecky in a vending machine
without the use of non-dairy ingredients.
The Examiner and Patent Owner contend that one of ordinary skill in
the art would not have had an expectation of success in using the
agglomerated nonfat milk product of Pisecky without the use of a non-dairy
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free flow agent, and thus the ’014 Patent represents unexpected results,
based on the following:
(a) the lack of an express statement in Pisecky that agglomerated
nonfat milk powder has a flowability sufficient for vending without the use
of non-dairy additives (see RAN 44-45; PO Res. Br. 5, 6, 10-11, and 12);
(b) the declaration evidence of Dr. Pietsch, Dr. Chandan, and
Dr. Singh that the conventional thinking or “dogma” at the time of the
invention was that it was necessary to add non-dairy ingredients to achieve
milk powders with flowability, dispersibility, wettability, and dissolvability
suitable for vending applications (see RAN 23, 45, 60-61; PO Res. Br. 4, 7,
and 10-11);
(c) the declaration evidence of Dr. Pietsch and Dr. Chandan that
the lecithin additive described in Pisecky is a non-dairy soy lecithin
(RAN 23 and 60); and
(d) the Examiner’s discovery that the website of Humboldt
Creamery
20
disclosed it still uses soy lecithin as an ingredient in an
agglomerated instant non-fat dry milk powder (RAN 38; PO Res. Br. 4, and
10-11).
We agree with the Respondent that the evidence supports a conclusion
of obviousness.

20
Humboldt Creamery, Technical Data Sheet Extra Grade Agglomerated
Instant Non Fat Dry Milk (Low-Heat Kosher), made of record by the
Examiner on September 17, 2009, identified by the Examiner as being
downloaded from

(Revised April 28, 2006).
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A. Alleged lack of disclosure in Pisecky
Patent Owner contends that, given the importance Pisecky places on
flowability for vending application and wettability for coffee and cocoa
products, that the skilled artisan would necessarily include soy lecithin or a
non-dairy flow agent. Further, Patent Owner emphasizes that Pisecky does
not expressly state that such ingredients are not necessary for vending
applications.
We disagree that the lack of an express teaching in Pisecky of not
using lecithin or one of the other non-dairy flow agents renders the omission
of such an ingredient nonobvious. In other words, we find that the use of
agglomerated nonfat milk powder consisting only of dairy ingredients in a
vending machine would have been obvious based on the teachings of
Pisecky.
Pisecky disclosed that it was known at the time of the invention to
make an agglomerated nonfat milk powder that has instant properties,
namely wettability and dispersibility. Pisecky also teaches that flowability is
the “necessary qualification” for use in a vending apparatus. Pisecky at 165.
Pisecky then describes low bulk density, agglomeration, and a low fat
content as properties that improve flowability. Accordingly, one of ordinary
skill in the art at the time of the invention would have used an agglomerated
nonfat milk product having a low bulk density and scorched particle content,
as claimed, in a coffee or cocoa vending machine, because of the known
flowability, wettability, and dispersibility properties of the product. One of
the ways in which a claim’s subject matter can be proved obvious is by
establishing that there existed at the time of invention a known problem for
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which there was an obvious solution encompassed by the claims. KSR Int’l
v. Teleflex Inc., 550 U.S. 398, 419-420 (2007). In this case, the skilled
artisan would have appreciated not only the benefit of flowability of
agglomerated nonfat milk for vending, but also the wettability and
dispersibility benefits as a component for coffee and cocoa products in
vending machines.
The skilled artisan would have understood the teaching of lecithin and
non-dairy flow agents as factors that improve flowability to be no more than
an option from a variety of means for improving flowability. Pisecky’s
statements would have suggested to the skilled artisan that suitable
flowability for vending machines could have been achieved by adjusting the
other factors affecting flowability, namely bulk density, agglomeration and
fat content.
Further, it is common sense that the skilled artisan would have
considered the cost saving from omitting any flow agents from the
agglomerated nonfat milk powder where the prior art teaches that it
necessarily has good flowability. Economics may motivate one of ordinary
skill in the art to choose the least expensive alternative. In re Clinton, 527
F.2d 1226, 1229 (CCPA 1976).
The Examiner’s and Respondent’s emphasis on lecithin, particularly
soy lecithin, is particularly misplaced considering the claims are limited to
agglomerated nonfat milk powder. Pisecky repeatedly describes lecithin as a
product to increase wettability in fat containing powders, such as
agglomerated whole milk powder. Pisecky, Section 8.2.2, p. 113,
Section 10.5, p. 166, Section 10.7 p. 171. Pisecky expressly states that
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wettability and dispersibility constitute the “instant properties” achieved by
agglomerated nonfat milk powder. Id. at Section 10.7, pp. 170-171 and
8.2.1, p. 112. We determine that one of ordinary skill in the art would have
appreciated the different properties of agglomerated nonfat milk powder and
agglomerated whole milk powder described in Pisecky and would have
understood that the benefits to wettability of the lecithin are only important
for instant whole milk powder.
Moreover, we disagree with the Examiner that Pisecky would have
suggested to the skilled artisan only the use of non-dairy additives. Pisecky
does not identify lecithin as being soy-based, but rather identifies “lecithin”
as “a natural component of milk and therefore acceptable as an additive.”
Pisecky, Section 10.7, p. 171. Accordingly, Pisecky would have suggested
to one of ordinary skill in the art to use milk-based lecithin, and not soy-
based lecithin, as an additive. Moreover, even if soy lecithin was the
primary wettability agent used in the art, which is discussed further infra, it
would have been obvious to the skilled artisan to omit soy-based products as
soy is a known allergen,
21
particularly for agglomerated nonfat milk powder,
which the prior art teaches necessarily has good wettability.
Further, we note that Pisecky discloses precrystallized whey powder
and alpha-lactose-monohydrate as alternative free flowing agents, both of
which are dairy ingredients. Thus, Pisecky would have equally taught the
skilled artisan looking to improve flowability through additives to have
added dairy ingredients to the agglomerated nonfat milk powder. Thus, we
find sufficient evidence that the skilled artisan would have placed

21
See the Humboldt Creamery website, which lists soy as a known allergen.
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agglomerated nonfat milk powder that contains dairy-based additives in a
vending machine apparatus for the disclosed improvement in flowability.
Pisecky describes that agglomerated nonfat milk has instant properties
with a bulk density below 0.48 g/ml or g/cc. Patent Owner has not
established through data or through expert testimony that properties are
unexpectedly improved within the narrower claimed range of 0.25 g/cc and
0.34 g/cc over the expected improvement described in Pisecky below
0.48 g/cc.
B. & C. Declaration evidence as to conventional practices in the art
We agree with the Requester that the Declarations of Dr. Pietsch,
Dr. Chandan, and Dr. Singh are largely opinion testimony interpreting
statements of Pisecky and Hall and concluding that the skilled artisan would
have added lecithin or another non-dairy additive to agglomerated nonfat
milk powder despite the favorable properties described therein. We give
little weight to unsupported conclusions of the declarants vis-à-vis the
objective statements of the prior art. Rohm and Haas Co. v. Brotech Corp.,
127 F.3d 1089, 1092 (Fed. Cir. 1997) (“While an expert may testify to the
ultimate issue in a case without giving the basis for that opinion, nothing in
the rules requires a fact finder to accept this conclusion.”)(internal citations
omitted). Further, we find the Patent Owner’s declarations to be
unpersuasive of nonobvious for the additional reasons discussed below.
Pietsch Declarations
Dr. Pietsch is an expert in powder and bulk solid handling and
processing and has worked with many companies, such as Allis-Chalmers
and Komarek Greaves, which manufacture fluidized beds and similar
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apparatus that may be used in an agglomeration process. First Pietsch
Decl. ¶¶ 1-6. However, Dr. Pietsch has not testified to having any
experience particular to the dairy or vending machine industry. To the
contrary, Dr. Pietsch expertise appears to be in the preparation of sponge
iron and iron briquettes. Id. at ¶ 7.
While Dr. Pietsch has reviewed the relevant references in this case
(Id. at ¶ 9), we give little weight to Dr. Pietsch’s understanding of the dairy
or vending machine industry at the time of the invention. Dr. Pietsch has
provided no reason to give any particular weight to testimony as to the state
of the art of using powdered milk in vending machines.
Dr. Pietsch testifies that:
Agglomerated powders feature larger size and mass, both of
which improve flowability and characteristics associated with
flowability, such as accurate and reliable metering. If
agglomerated powders are placed on the surface of liquids
which wet the solid, their larger mass causes them to easily
penetrate the liquid surface and quickly sink into the liquid.
Id. at ¶ 18. This testimony is consistent with statements in Pisecky to the
extent that these characteristics are only true for agglomerated nonfat milk
powder and not agglomerated whole milk powder.
Dr. Pietsch states that “for the instantization of dry natural milk,
additional process steps are necessary, as detailed above in Paragraph 13,
due to the product's fat content and other milk components which reduce
wettability, thereby slowing its penetration into liquids.” Id. at ¶ 20.
Dr. Pietsch testifies that lecithin is added to the agglomerated powder “[t]o
overcome this lack of wettability.” Id. Dr. Pietsch’s statement is consistent
with the teachings of Pisecky that agglomerated whole milk, due to its fat
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content, suffers from a lack of wettability, requiring the use of lecithin, or
alternative flow agents, for good wettability. However, Pisecky provides no
evidence to support Dr. Pietsch’s statement to the extent it applies to the
properties of agglomerated nonfat milk powder. To the contrary, Pisecky
teaches that agglomerated milk having a low fat content and low bulk
density had “instant properties,” namely good wettability and good
dispersibility.
22

Accordingly, Dr. Pietsch statements regarding what was conventional
for “agglomerated milk powder” in vending applications, in addition to
being unsupported and outside of his area of expertise, can only be presumed
to be directed to agglomerated whole milk powder. Id. at ¶¶ 21-24; see also
Second Pietsch Decl. ¶ 6, 8, 13-15, 27, and 28; Third Pietsch Decl. ¶¶ 12-14,
19, and 22.
Dr. Pietsch also testifies that “lecithin used as an additive to
functionalize whole dry milk powder is derived from soy beans” because
natural milk-based phospholipids are destroyed “during the manufacture of
whole dry milk powder.” Third Pietsch Decl. ¶¶ 9 and 11. Again
Dr. Pietsch’s testimony, in addition to being unsupported and outside of his
area of expertise, is limited to whole dry milk powder. Dr. Pietsch’s
provides no evidence directed to functionalizing the nonfat dry milk powder
with soy lecithin.

22
As discussed in detail below, this statement in Pisecky is consistent with
the teachings of Peebles. See also Meade, col. 1, ll. 24-39 and Hall, p. 152.
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Chandan Declarations
Dr. Chandan is an expert in dairy product technology and dairy
product research and production. Chandan Decl., ¶ 1. Dr. Chandan has a
Ph.D. in “Dairy Manufacturing and Chemistry” from the University of
Nebraska, Lincoln. Id., at ¶ 2. Dr. Chandan has not testified to any
particular expertise in the fields of agglomerated milk powder production or
any particular expertise in the field of vending machines using powdered
milk products. While Dr. Chandan has reviewed the relevant references in
this case (Id. at ¶¶ 6 and 24), Dr. Chandan has provided no reason to give
any particular weight to testimony as to the state of the art of using
powdered milk in vending machines.
As with Dr. Pietsch, Dr. Chandan testifies that agglomerated powders
have improved flowability due to a larger size and mass and good wettability
and dispersion due to larger porosity. Id. at ¶ 17-18. This testimony is
consistent with statements in Pisecky only to the extent that these
characteristics are only true for agglomerated nonfat milk powder and not
agglomerated whole milk powder.
Dr. Chandan testifies that “for the instantization of dry natural milk,
additional process steps are necessary due to the product’s fat content and
other milk components which reduce wettability” and that lecithin is
commonly known in the diary manufacturing field to overcome this lack of
wettability. Id. at ¶ 19 and 21-23; see also Second Chandan Decl. ¶¶ 12-14,
19, and 22. Dr. Chandan’s testimony suffers from the same problems of
Dr. Pietsch. Namely, Dr. Chandan’s testimony, in addition to lacking
underlying support, fails to address the difference in properties reported in
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Pisecky for agglomerated whole milk powder and agglomerated nonfat milk
powder, of which the latter, contrary to Dr. Chandan’s testimony, is reported
as having good wettability and dispersibility.
Dr. Chandan also testifies that “[l]ecithin used as an additive to
functionalize whole dry milk powder is derived from soy beans” because
natural milk-based phospholipids are destroyed “during the manufacture of
whole dry milk powder.” Second Chandan Decl. ¶¶ 9 and 11. Again
Dr. Chandan’s testimony, in addition to being unsupported, is limited to
whole dry milk powder. Dr. Chandan provides no evidence directed to
functionalizing nonfat dry milk powder with soy lecithin.
Singh Declaration
Dr. Singh testifies that “it was my understanding that all creamers or
whiteners being used in vending machines included non-dairy additives.”
Singh Decl. ¶ 2. The testimony of Dr. Singh, though relevant evidence for
our consideration, cannot be considered completely disinterested and
objective testimony, as Dr. Singh is the sole inventor on the ’014 patent.
Dr. Singh’s testimony, in addition to being unsupported, fails to explain why
it would not have been obvious to the skilled artisan to use agglomerated
nonfat milk powder containing only dairy ingredients in a vending machine
considering the desirable properties thereof described in Pisecky and
discussed supra.
D. Humboldt Creamery Document
The Examiner relied on the Humboldt Creamery website as
supporting evidence that “[e]ven with a non-fat dry milk powder having a fat
content of less than 1%, Humbolt [sic] Creamery still uses soy lecithin, a
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non-dairy additive, to achieve the desired set of properties: flowability,
wettability, sinkability, dispersibility, or solubility.” RAN 38. However, the
Humboldt Creamery website does not provide persuasive evidence that it
would not have been obvious to the skilled artisan at the time of the
invention to have used agglomerated nonfat milk powder without such an
additive for vending applications. First, the Humboldt Creamery website is
not contemporaneous with the filing of the application and is not evidence of
what the skilled artisan would have known at the time. Rather, the website
information post-dates not only the filing of the application that became the
’014 Patent, but also the issuance of the ’014 Patent. Second, the reason
stated for adding soy lecithin to the Humboldt Creamery product is “as a
processing aid” and not for improving the properties recognized in vending
machine applications. The document is silent as to “flowability, wettability,
sinkability, dispersibility, or solubility.” Finally, Humboldt Creamery is but
one example of a manufacturer using soy lecithin in a nonfat milk product.
It is not evidence of conventional wisdom or prevalence of soy lecithin use
in the art. For all we know, Humboldt Creamery may be an outlier in the
use of soy lecithin in agglomerated nonfat milk powder processing.
Summary
For the reasons discussed above, the evidence supports a conclusion
that the skilled artisan would have had a reasonable expectation that the
agglomerated nonfat milk powder, having the properties described in
Pisecky, would have been suitable and successfully used in vending machine
applications and would have had the benefit of improved flowability,
wettability, and dispersibility over other whole and nonfat powder milk
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products available at the time of the invention. We are not persuaded that
the Patent Owner’s evidence successfully demonstrates a pervasive belief in
the art that agglomerated nonfat milk powder lacked sufficient flowability or
wettability characteristics to render it unsuitable for vending applications
without the addition of non-dairy additives, particular when the prior art
further describes dairy ingredients suitable for use as free flowing agents.
The claims are differentiated by the particular steps of vending the
agglomerated nonfat milk powder in a vending machine apparatus before or
after combining with coffee or cocoa. We take judicial notice, supported by
the vending machine references discussed in detail below, that the particular
steps for vending milk powder alone or in combination with coffee and/or
cocoa powder recited in the various claims were known in the art. Patent
Owner does not separately argue any claim on appeal and does not assert
that any of the particular dispensing steps recited in the claims were not
known in the art and obvious vending alternatives.
Accordingly, we enter the following new ground of rejection:
claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 are rejected under 35 U.S.C.
§103(a) as obvious over Pisecky.
OBIVIOUSNESS BASED ON PEEBLES IN VIEW OF US GRADE
STANDARDS AND THE VENDING MACHINE REFERENCES
Grounds 19-25, 44-50, 75 and 79
Issue
The issue with respect to the above identified rejection is:
Would it have been obvious to one of ordinary skill in the art at the
time of the invention to use an agglomerated nonfat milk powder having the
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recited bulk density taught by Peebles with an Extra Grade standard
scorched particle content as the instant milk component in a vending device
such as taught by the vending machine references?
Findings of Fact
Peebles teaches a method for the manufacture dry skim milk powder.
Peebles, col. 1, ll. 15-17. The method results in a dry skim milk powder
wherein a “specific gravity of the finished product is of the order of from
.27 to .39 (preferably .32), as distinguished from about .6 for ordinary skim
milk powder.” Id. at col. 6, ll. 65-68. The powder is in the form of
aggregate particles that are relatively porous. Id. at col. 6, ll. 55-58.
Peebles teaches that the product has good wettability and good
dispersibility. Id. at col. 7, ll. 4-28. Peebles also teaches that
Due to its free flowing characteristics it is easy to remove from
a container and can be poured from a spout without plugging or
dusting. Conventional skim milk powder, on the contrary,
cannot be poured from an ordinary spout such as that used on
the conventional retail salt package.
Another advantage of the present product is that when
exposed to moist air it will not cake, whereas conventional skim
milk powder cakes hard under this condition. This is because
the lactose content is largely hydrated during the process,
whereby it is in crystalline form in the finished product.
Id. at col. 9, ll. 52-63; see also col. 6, ll. 51-53 (“It suffices to avoid
formation of lumps, whereby the finished product is free flowing and in
proper condition for bagging or packaging.”).
Peebles does not teach scorched particle content or the particular use
of the dry skim milk powder in a vending machine. See id. generally.
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The United States has two standards for nonfat dry milk: Extra Grade
and Standard Grade. US Grade Standards, at 1. The Extra Grade standard
includes a scorched particle content of not more than 15mg. Id. at 2.
The vending machine references generally disclose that it was known
in the art to use a powdered milk product in coffee and cocoa vending
machines having a variety of means for dispersing the powdered products.
For example, Newman describes using “instant milk” pre-loaded into cups in
a vending machine. Newman, col. 4, ll. 18-21. Reese ’002 and Reese ’610
describe using powdered milk placed in individual canisters, which is then
dispensed in measured amounts and mixed before being dispensed.
Reese ’002, col. 2, ll. 20-39; Reese ’610, col. 3, ll. 17-36. Loader describes
using powdered milk in a separate container, dispensing the desired amount
in a cup and then adding water to reconstitute. Loader, col. 1, ll. 9-16.
Analysis
The Respondent argues that the Examiner erred in determining that
the evidence taken as a whole does not support a conclusion that it would
have been obvious to one of ordinary skill in the art to have used the nonfat
agglomerated milk product described in Peebles that has the scorched
particle content of extra grade powdered milk in a vending machine of the
types described in the vending machine references without the use of non-
dairy ingredients.
The Examiner and Patent Owner’s contend that one of ordinary skill
in the art would not have had an expectation of success in using the
agglomerated nonfat milk product of Peebles in a vending machine of the
types described in the vending machine references without the use of a non-
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dairy free flow agent, and thus the ’014 Patent represents unexpected results,
based on the following:
(a) the declaration evidence of Dr. Pietsch, Dr. Chandan, and
Dr. Singh that the conventional thinking or “dogma” at the time of the
invention was that it was necessary to add non-dairy ingredients to achieve
milk powders with flowability, dispersibility, wettability, and dissolvability
suitable for vending applications (see RAN 23, 52, 60-61; PO Res. Br. 4, 7,
and 13);
(b) the declaration evidence of Dr. Pietsch and Dr. Chandan that
non-dairy soy lecithin would have been added to agglomerated nonfat milk
powder to achieve flowability suitable for vending applications (RAN 23
and 60); and
(c) the Examiner’s discovery that the website of Humboldt
Creamery disclosed it still uses soy lecithin as an ingredient in an
agglomerated instant non-fat dry milk powder (RAN 38; PO Res. Br. 4,
and 13).
We agree with the Respondent that the evidence supports a conclusion
of obviousness. As with Pisecky above, Peebles teaches that agglomerated
nonfat milk powder having the recited bulk density has good wettability and
good dispersibility and free flowing characteristics that make it is easy to
remove from a container and poured from a spout without plugging or
dusting. These known characteristics of agglomerated nonfat milk powder
would have provided sufficient reasons for one of ordinary skill in the art to
have used the product over other known powdered milk products in vending
applications, such as those described in the vending machine references.
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For the reasons discussed above, we disagree with the Examiner that
the evidence supports a finding that it was conventional in the art that it was
necessary to add non-dairy soy lecithin to agglomerated nonfat milk powder
for vending applications. For the reasons discussed above, we find the
testimony of Dr. Pietsch, Dr. Chandan, and Dr. Singh unpersuasive with
respect to agglomerated nonfat milk powder, as recited in the claims.
Moreover, we find the testimony unsupported on the record and contrary to
the teachings in the prior art with respect to the known properties of
agglomerated nonfat milk powder and in contrast with the known properties
of agglomerated whole milk powder.
We agree with the Examiner that it would have been obvious to use
Extra Grade agglomerated nonfat milk powder as described in the US Grade
Standards, which is not disputed on appeal by the Patent Owner.
Accordingly, we enter the following new ground of rejection: claims
1-7, 10, 12-17, 20, 21, 26, 27, and 30 are rejected under 35 U.S.C. §103(a)
as obvious over Peebles in view of US Grade Standards and the vending
machine references.
REMAINING REJECTIONS ON APPEAL
Because all of the outstanding claims of the ’014 Patent as amended
are rejected based on the new grounds of rejection discussed supra, we
decline to reach the remaining non-adopted grounds of rejection appealed by
the Requester.

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DECISION
We reverse the Examiner’s determination not to adopt and enter the
following new ground of rejections:
1. claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 are rejected under 35
U.S.C. §103(a) as obvious over Pisecky and
2. claims 1-7, 10, 12-17, 20, 21, 26, 27, and 30 are rejected under 35
U.S.C. §103(a) as obvious over Peebles in view of U.S. Grade
Standards and the Vending Machine References.
We decline to reach the remaining non-adopted rejections.

NEW GROUND OF REJECTION
37 C.F.R. § 41.77(b) states:
(b) Should the Board reverse the examiner’s determination not
to make a rejection proposed by a requester, the Board shall set
forth in the opinion in support of its decision a new ground of
rejection; or should the Board have knowledge of any grounds
not raised in the appeal for rejecting any pending claim, it may
include in its opinion a statement to that effect with its reasons
for so holding, which statement shall constitute a new ground of
rejection of the claim. Any decision which includes a new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a
new ground of rejection, the owner, within one month from the
date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.
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(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART; NEW GROUND OF REJECTION

ak

PATENT OWNER:
Gray Robinson, P.A.
P.O. Box 2328
Ft. Lauderdale, FL 33303-9998

THIRD-PARTY REQUESTER:

Stephen M. Hash
Vinson and Elkins, LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746