Ex Parte Aftoora

Patent Trial and Appeal Board

Sep 27, 2012

11515277 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/515,277 09/01/2006 William F. Aftoora WFA.P1400A 7411
23575 7590 09/27/2012
CURATOLO SIDOTI CO., LPA
24500 CENTER RIDGE ROAD, SUITE 280
CLEVELAND, OH 44145
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
09/27/2012 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 WILLIAM F. AFTOORA
____________________

Appeal 2011-009273
Application 11/515,277
Technology Center 1700
____________________
Before RICHARD TORCZON, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejections of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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THE INVENTION
Appellant states that the invention is generally directed to solid-form
food products, and more particularly directed to pre-formed and pre-flavored
solid food products that are easily dispersible in aqueous cooking liquids to
form sauces, gravies, glazes, puddings and pie fillings, and a method for
preparation of the food product. (Spec. 1, ll. 16-20.)
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A flavored solid-form food product that is easily
dispersible in aqueous liquids comprising:
an edible fat;
a gelled, edible starchy material;
a flavoring agent;
a solidifying agent; and
an aqueous liquid.
(Appeal Brief 19, Claims Appendix1.)

THE REJECTIONS
I. The Examiner rejected claims 1, 4-13, and 15 under
35 U.S.C. § 102(b) as anticipated by Musher (US
2,131,064, issued September 27, 1938) (hereinafter
“Musher ‘064”). (Examiner’s Answer, dated February
15, 2011, hereinafter “Ans.” 4.)

II. The Examiner rejected claims 2, 3, and 14 under
35 U.S.C. § 103(a) as unpatentable over Musher in view
of Bot et al. (WO 96/29894, published October 3, 1996)
(hereinafter “Bot ‘894”). (Ans. 5-6.)

III. The Examiner rejected claims 16-18 under
35 U.S.C. § 103(a) as unpatentable over Musher ‘064 in

1 Appeal Brief filed December 28, 2010, hereinafter “App. Br.” and
“Claims App’x,” respectively.
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view of Musher (US 2,278,466, issued April 7, 1942)
(hereinafter “Musher ‘466”). (Ans. 6-7.)

ISSUES
The dispositive issues on appeal are:
(1) Did the Examiner err in finding that Musher ‘064 discloses the
solid food product recited in claim 1?
(2) Did the Examiner err in concluding that Musher ‘064 in view of
Bot ‘894 would have rendered claims 2, 3, and 14 obvious?
(3) Did the Examiner err in concluding that Musher ‘064 in view of
Musher ‘466 would have rendered claims 16-18 obvious?

PRINCIPLES OF LAW
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained that “Section 103 forbids issuance of a patent when ‘the
differences between the subject matter sought to be patented and the prior art
are such that the subject matter as a whole would have been obvious at the
time the invention was made to a person having ordinary skill in the art to
which said subject matter pertains.”’ KSR, 550 U.S. at 406. “If a person of
ordinary skill can implement a predictable variation, §103 likely bars its
patentability.” KSR, 550 U.S. at 417. “A person of ordinary skill is also a
person of ordinary creativity, not an automaton.” Id. at 421.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference,
or would be led in a direction divergent from the path that
was taken by the applicant. The degree of teaching away
will of course depend on the particular facts; in general, a
reference will teach away if it suggests that the line of
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development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the
applicant.

In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citation omitted).

FACTUAL FINDINGS (FF)
1. Bot ‘894 discloses a sauce base composition containing a starch,
“which preferably has not considerably gelled.” (P. 6, ll. 11-12.)
2. Bot ‘894 discloses that some gelling of the starch may take place
during the preparation of the sauce base. (P. 6, ll. 15-16.)
3. Bot ‘894 discloses preparing a sauce base such that it comprises 5-
80 parts by weight of a vegetable fat or fat blend, 0.5-15 parts by
weight of water dispersible dry milk ingredients, 1-20 parts by
weight of a starch or a starch-like product such as modified starch
and hydrolyzed starch, up to 40 parts by weight of water, taste
and/or flavor compounds, and optionally, 0.25-5 parts by weight of
gelatin or a similar hydrocolloid. (P. 2, ll. 14-24.)
4. Bot ‘894 discloses that proportions of ingredients can be adjusted
taking into account, inter alia, the taste and mouthfeel consistency
desired. (P. 6, ll. 8-10; p. 7, ll. 6-11; p. 7, ll. 22-23.)
5. Musher ‘466 discloses coating hygroscopic food materials with
water repellant to keep the food materials from being affected by
the aqueous nature of the sugar syrup that is utilized in further
preparation. (P. 2, Col. 1, ll. 5-26.)
6. Musher ‘466 discloses foods that quickly disintegrate to eliminate
or substantially reduce lumpiness, uneven cooking, and other
substantial disadvantages which arise when quick dissolution and
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quick disintegrating is retarded or prevented. (P. 1, Col. 1, l. 27-
Col. 2, l. 2.)
7. Musher ‘466 discloses effervescent materials, such as the
combination of sodium bicarbonate and tartaric acid, which act
together and form effervescent action which pushes apart food
pieces and food materials within a brick with considerably more
rapidity to produce a quicker disintegration of the product so as to
retard or prevent the development of lumpiness or caking or lack
of proper cooking. (P. 8, Col. 2, l. 68 – P. 9, Col. 1, l. 6.)
8. Musher ‘064 discloses that its food base can be made with a
“water-absorbent bodier component which “may be chosen from a
wide variety of materials, particularly the thickeners, etc.,
commonly used in the production of food products.” (P. 1, col. 2,
ll. 45-49.)

DISCUSSION
Issue One, Rejection I
With respect to Rejection I, we observe that Appellant’s arguments
against each of the claims subject to Rejection I raise the same or similar
issues. As such, our analysis will focus on representative claim 1, which
contains claim limitations representative of the arguments made by
Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner found that Musher ‘064 discloses the flavored solid-
form food product recited in claim 1. (Ans. 4.)
Appellant argues that in contrast to Musher ‘064, the present solid
form food product does not include a heavy paste of a water absorbent
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bodier and water. (App. Br. 10.) Appellant contends that the present solid
form food product is prepared by, inter alia, combining an edible fat and an
edible starchy material at a sufficient temperature and for a sufficient period
of time to produce a molten mixture (i.e., a roux). (App. Br. 10.) Appellant
argues that the food base of Musher ‘064 does not involve the formation of a
roux because the heavy water paste of the water-absorbent bodier
component is merely admixed with the hard fatty component. (App. Br. 10.)
We are not persuaded by Appellant’s arguments.
Appellant’s arguments all relate to a method by which the food
product of claim 1 may be produced. However, claim 1 does not recite such
a method, but only the components of the food product. Appellant has not
pointed to adequate evidence to establish that claim 1 excludes the food base
disclosed in Musher ‘064. Therefore, Appellant’s arguments are not
commensurate in scope with Appellant’s claims. See In re Self, 671 F.2d
1344, 1348 (CCPA 1982) (“Many of appellant's arguments fail from the
outset because … they are not based on limitations appearing in the
claims.”). Accordingly, we sustain the Examiner’s rejection of the claims
subject to Rejection I.

Issue Two, Rejection II
The Examiner found that Musher ‘064 does not disclose the specific
component ratios recited in claims 2 and 3 or the use of one of the
preservatives recited in claim 14. (Ans. 5.) The Examiner found that Bot
‘894 discloses the specific ratios and at least one of the recited preservatives
(i.e., potassium sorbate). (Ans. 5.)
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The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to incorporate the specific claimed component ratios
and the preservative taught in Bot ‘894 into the invention of Musher ‘064
because both are directed to sauce base compositions; because potassium
sorbate was a commonly used food preservative; because Musher ‘064
already possessed the claimed ingredients but simply did not provide any
ratios for them in the final product; and because the amounts of particular
ingredients of food products were commonly adjusted in order to arrive at a
desired taste, texture, mouthfeel, or other characteristic of the final food
product. (Ans. 6.)
Appellant argues that the Examiner has engaged in impermissible
hindsight by combining Bot ‘894 and Musher ‘064. (App. Br. 12-13.)
Appellant also contends that Bot ‘894 and Musher ‘064 teach away from
each other because Musher ‘064 discloses a heavy water paste of water-
absorbent bodier, while Bot ‘894 discloses not to swell (i.e., “gel”) the
starchy material. (App. Br. 13-14.) Appellant further contends that the
Examiner is arbitrarily selecting the preservatives of Bot ‘894 based merely
on the fact that both Musher ‘064 and Bot ‘894 relate to food products,
which amounts to nothing more than hindsight reconstruction. (App. Br.
14.)
Initially, we are not persuaded by Appellant’s argument that Bot ‘894
and Musher ‘064 teach away from each other because Musher ‘064 discloses
a heavy water paste while Bot ‘894 discloses not to gel the starchy material.
While Bot ‘894 discloses using a starch, and a preference that the starch has
not considerably gelled (FF 1), Bot ‘894 also discloses that some gelling of
the starch may take place during the preparation of the sauce base (FF 2).
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Thus, Bot ‘894 discloses a starch that has gelled, i.e., a gelled starch.
Appellant has not pointed to any persuasive evidence that the preference in
Bot ‘894 to use “not considerably gelled” starch would have discouraged the
skilled artisan from using the claimed ratios taught by Bot ‘894 in the
invention of Musher ‘064, or that the use of the ratios disclosed in Bot ‘894
would be unlikely to be productive if used with a completely gelled starch.
See In re Gurley, 27 F.3d at 553.
With regard to the claimed ratios, Bot ‘894 informs one of ordinary
skill in the art of general component ratios that can be employed with the
claimed ingredients. (FF 3.) Appellant has not directed our attention to
sufficient persuasive evidence that in looking to Bot ‘894 for general
component ratios, a skilled artisan would have been incapable of accounting
for variations due to differences in preparation methods or ingredients in
order to arrive at a desired taste, texture, mouthfeel, etc. of the desired food
product. KSR, 550 U.S. at 421. Rather, Bot ‘894 recognizes that the skilled
artisan is capable of adjusting proportions based on the desired outcome,
such that the ratios of food components are result effective variables. (See
FF 4.)
We are further unpersuaded by Appellant’s argument that the
Examiner arbitrarily selected the preservative of Bot ‘894. The Examiner
provided multiple reasons, discussed supra, as to why it would have been
obvious to use the preservative disclosed in Bot ‘894. Appellant has not
pointed to any persuasive evidence of record that refutes the Examiner’s
rationale. Thus, we are not persuaded by Appellant’s argument that the
Examiner engaged in impermissible hindsight reasoning by combining Bot
‘894 and Musher ‘064.
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Accordingly, agree with the Examiner that Musher ‘064 in view of
Bot ‘894 would have rendered claims 2, 3, and 14 obvious, and we sustain
Rejection II.

Issue Three, Rejection III
The Examiner found that Musher ‘064 does not disclose the use of an
edible bicarbonate, such as sodium bicarbonate, as recited in claims 16-18.
(Ans. 6.) The Examiner found that Musher ‘466 discloses a solid food
product comprising sodium bicarbonate. (Ans. 6.)
The Examiner concluded that it would have been obvious to one of
ordinary skill in the art to incorporate the sodium bicarbonate of Musher
‘466 into the invention of Musher ‘064 because both references are directed
to flavored solid-form food products; because Musher ‘064 includes acidic
ingredients such as lemon oil; because sodium bicarbonate was known to be
an effective pH buffer material; because consumers commonly desired and
enjoyed effervescent foods; and because the sodium bicarbonate of Musher
‘466 provides an effervescent effect which leads to better disintegration
characteristics as well as other advantages, such as lowered rancidity due to
displacement of oxygen within the food. (Ans. 6-7.)
Appellant argues that Musher ‘064 and Musher ‘466 teach away from
each other, and therefore, cannot properly be combined to support an
obviousness rejection. (App. Br. 15.) Appellant argues that Musher ‘064
discloses combining a water absorbent bodier, such as a starch material, with
water or some other aqueous solution to form a heavy water paste, while
Musher ‘466 discloses coating hygroscopic paste-producing or powdery
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materials with a water repellent in order to prevent contact of hygroscopic
materials with aqueous sugar syrup. (App. Br. 16-17.)
Appellant further contends that the effervescent material in Musher
‘466 is not included in the food unit to make it more appealing to consumers,
but rather to retard lumps and caking, which undermines the Examiner’s
alleged motivation to combine the two Musher references. (App. Br. 18.)
We are unpersuaded by Appellant’s argument that a skilled artisan
would not have used the sodium bicarbonate disclosed in Musher ‘466 in the
invention disclosed in Musher ‘064. While Musher ‘466 uses a water
repellant coating on its hygroscopic food materials to keep the food
materials from being affected by the aqueous nature of the sugar syrup (FF
5), Appellant has not pointed to any disclosure in Musher ‘466 or Musher
‘064 that would have suggested that the sodium bicarbonate used in Musher
‘466 would be unlikely to serve the purpose described by Musher ‘466 in
Musher ‘064. See In re Gurley, 27 F.3d at 553. In this regard, the Examiner
only relies on Musher ‘466 for the disclosed benefits of sodium bicarbonate
in the similar food products of Musher ‘064, which are supported by the
record (FF 7). The mere fact that the teachings of the two references are
different or disclose different ingredients does not necessitate a finding that
the two references teach away. See In re Gurley, 27 F.3d at 553.
We are further unconvinced by Appellant’s argument that the
effervescent material in Musher ‘466 is not included in the food unit to make
it more appealing to consumers. Musher ‘466 reveals that retarding lumping
and caking is in fact a characteristic that does make the food of Musher ‘466
more appealing to consumers (FF 6), rather than a characteristic that
undermines why one of ordinary skill in the art would have been motivated
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to use sodium bicarbonate with Musher ‘064 as argued by Appellant. See
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550–51 (Fed.
Cir. 1983) (noting that the totality of a reference’s teachings must be
considered).
Accordingly, we agree with the Examiner that Musher ‘064 in view of
Musher ‘466 renders claims 16-18 obvious, and we sustain Rejection III.

CONCLUSIONS
The Examiner did not err in finding that Musher ‘064 discloses the
solid food product recited in claim 1.
The Examiner did not err in concluding that Musher ‘064 in view of
Bot ‘894 would have rendered claims 2, 3, and 14 obvious.
The Examiner did not err in concluding that Musher ‘064 in view of
Musher ‘466 would have rendered claims 16-18 obvious.

DECISION
We affirm the Examiner’s rejections.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED

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rvb/cu