Ex Parte Aldred et al

Patent Trial and Appeal Board

Oct 31, 2016

12420854 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/420,854 0410912009
201 7590 11/02/2016
UNILEVER PATENT GROUP
800 SYLVAN A VENUE
ENGLEWOOD CLIFFS, NJ 07632-3100
FIRST NAMED INVENTOR
Alexander Aldred
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
F3479US 3296
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
11/02/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER ALDRED, GARY NORMAN BINLEY, and
DOROTHY MARGARET CHAMBERLAIN
Appeal2015-004635
Application 12/420,854
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision finally rejecting claims 1 through 8 and 16 through 20.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The subject matter on appeal is generally directed to a process for
preparing an ice confection. (Spec. 1, 1. 28-2, 1. 4.)
1 Appellants identify the Real Party in Interest as Unilever. (Appeal Brief
filed November 3, 2014 ("App. Br."), 3.)
2 Claims 9-15 stand withdrawn from consideration. Final Office Action
entered June 2, 2014 ("Final Act.") 2.
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Application 12/420,854
Uetaiis of the appeaied subject matter are recited in representative
claim 1, which is reproduced below from the Claims Appendix to the Appeal
Brief:
1. A process for preparing an ice confection having a total
solids content of from 8 to 25 wt% and an overrun of from 10
to 100%, the process comprising the steps of:
a) aerating and partially freezing a mix of ingredients to
a temperature of from about -3 °C to -12 °C such that
part but not all of the water in the mix is frozen into
ice crystals;
b) producing a slurry comprising the aerated, partially
frozen mix and frozen particles which have a size of
from 0.1 to 1 mm by a method including adding
frozen particles; wherein the amount of frozen
particles is from 10 to 70% by weight of the slurry;
and
c) further freezing the slurry in a low temperature
extruder the ice confection having a mean gas bubble
size of less than 35 microns.
(App. Rr. 11, Claims Appendix.)
The Examiner maintains the following grounds of rejection in the
Answer entered on January 16, 2015 ("Ans."):
I. Claims 1-8 and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of European patent 1051913 B 1 issued in
the name of Yokoto et al. on September 12, 2007 (hereinafter referred to as
"Yokoto") in view of European patent application EP 1716762 Al published
in the name of Quail on November 2, 2006 (hereinafter referred to as
"Quail") and Arbuckle, Ice Cream (2d ed. 1972) (hereinafter referred to as
"Arbuckle");
II. Claims 1-8 and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over the disclosure of Y okoto in view of International patent
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appiication WO 00101246 pubiished in the name of Gray et aL on January
13, 2000 (hereinafter referred to as "Gray") and Arbuckle; and
III. Claims 1-8 and 16-20 provisionally rejected for nonstatutory,
obviousness-type double patenting over claims 1, 3, 4, 6-9, and 11 of
copending U.S. patent application 11/998,671 in view of Quail and
Arbuckle.
DISCUSSION
Upon consideration of the evidence on this appeal record and each of
Appellants' contentions, we determine that Appellants have not identified
reversible error in the Examiner's rejections of claims 1-8 and 16-20 under
35 U.S.C. § 103(a) and provisional rejection of claims 1-8 and 16-20 for
obviousness-type double patenting. Accordingly, we affirm these rejections
for the reasons set forth in the Answer. We add the discussion below
primarily for emphasis and completeness.
Rejections I and II
Claims 1-8 and 203
Appellants do not dispute the Examiner's finding that Y okoto
discloses a process for preparing an ice confection having an overrun of
about 10%-200% that comprises aerating and freezing a mixture of
3 We limit our discussion to those claims separately argued, and claims not
separately argued stand or fall with the argued claims. 37 C.F.R.
§ 41.37(c)(l)(iv). Appellants argue claims 1-8 and 20 as a group on the
basis of claim 1. (See generally App. Br. 6-8.) Therefore, for the purposes
of this appeal, we select claim 1 as representative, and decide the propriety
of the rejections of claims 1-8 and 20 based on claim 1 alone.
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Application 12/420,854
ingredients, adding frozen ice particies to the aerated, frozen mixture at a
ratio of 0.3: 1 to 4: 1, corresponding to 23.1 %----80% frozen particles by weight
of the mixture, reducing the size of the ice particles to 0.06 mm-I mm, and
further cooling/freezing the confection. (Compare Final Act. 2----3 with App.
Br. 6----9.) Appellants also do not question the Examiner's determination that
although Y okoto refers to the initial freezing procedure as "freezing" rather
than "partial[] freezing," one of ordinary skill in the art would have inferred
that the initial "freezing" step involves partial freezing of the mixture (not all
of the water in the mixture is frozen into ice crystals) because Y okoto' s
process requires a further freezing step.4 (Compare Final Act. 3 with App.
Br. 6----9.)
Nor do Appellants dispute the Examiner's finding that although
Y okoto does not explicitly state the total solids content in the ice confection,
Y okoto exemplifies processes for preparing ice confections that have total
4 KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that the
these prior art references must be read in context, taking into account "the
background knowledge possessed by a person having ordinary skill in the
art" and "the inferences and creative steps that a person of ordinary skill in
the art would employ."); In re Preda, 401F.2d 825, 826 (CCPA 1968) (In
assessing the content of the applied prior art, "it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.")
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soiids contents of 19.5o/o-'27.2%, which faH within the range recited in ciaim
1. (Compare Final Act. 3 with App. Br. 6-9.)
Appellants also do not dispute the Examiner's finding that Gray
discloses a method of producing a frozen, aerated product with increased
creaminess and reduced iciness that comprises aerating and partially freezing
a mixture of ingredients at -4QC to -7QC followed by low temperature
extrusion of the mixture at -1 OQC to -18QC, resulting in the formation of gas
cells having a mean size of below 20 microns in the final product.
(Compare Final Act. 7 with App. Br. 6-9.) Nor do Appellants dispute the
Examiner's finding that Quail, like Gray, also discloses a method of
producing a frozen, aerated product that has good processing and consumer
properties that comprises aerating and partially freezing a mixture of
ingredients at -6.5QC to -7.5QC followed by low temperature extrusion of the
mixture at -15QC. (Compare Final Act. 4--5 with App. Br. 6-9; Quail i-fi-f 16,
48.) Appellants also do not question the Examiner's finding that Arbuckle,
like Gray and Quail, discloses producing ice cream by a process that
involves an initial step of partially freezing a mixture of ingredients, with a
freezing temperature of -5.6QC to -6.7QC, in order to produce a smooth
product. (Compare Final Act. 3 with App. Br. 6-9.)
The Examiner determines that because the combined disclosures of
Y okoto, Quail, and Arbuckle would have suggested a process comprising
the same steps as recited in claim 1, including addition of the same
components to the mix, the same range of aeration, and the same freezing
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step, one of ordinary skin in the art wouid have reasonabiy expected that the
product produced by the process suggested by Y okoto, Quail, and Arbuckle
would naturally possess the same properties, including a mean gas bubble
size, as recited in claim 1. (Final Act. 5.)
Appellants also do not dispute that there is an apparent reason or
suggestion to combine the relied-upon disclosures of Y okoto, Quail or Gray,
and Arbuckle to arrive at the process of claim 1 as the Examiner concludes.
(Compare Final Act. 2-7 with App. Br. 6-9.) Instead, Appellants argue that
the references individually fail to teach the process recited in claim 1, which
is said to produce a product having an unexpected, dry, crumbly, and
frangible texture. (Compare Final Act. 2-7 with App. Br. 6-9.)
Specifically, Appellants argue that the Examiner does not identify any
disclosure in Y okoto of freezing a slurry in a low temperature extruder, or
any disclosure of how to obtain ice confections having a dry, crumbly, and
frangible texture. (App. Br. 7-8.) Appellants also argue that the Examiner
does not identify any suggestion in Quail that a dry, crumbly, and frangible
texture could be obtained from following Quail's process of freezing a
partially frozen aerated confection using a low temperature extruder, or that
such a texture would be obtained by a process involving adding frozen
particles to a partially frozen mix that is frozen in a low-temperature
extruder. (App. Br. 8.) Appellants further argue that the Examiner does not
identify any teaching in Gray of adding frozen particles to a partially frozen
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aerated confection, or teaching of a product with a dry, crumbiy, and
frangible texture. (App. Br. 9.)
However, we agree with the Examiner that these arguments lack
persuasive merit because they are based on limitations that do not appear in
the claims. In re Self, 671F.2d1344, 1348 (CCPA 1982) ("[A]ppellant's
arguments fail from the outset because ... they are not based on limitations
appearing in the claims.") In other words, claim 1 does not require the ice
confection to have a dry, crumbly, and frangible texture.
Moreover, Appellants' arguments are improperly based only Y okoto,
Quail, and Gray individually, and do not take into account what the
combined disclosures of Y okoto and Quail or Gray reasonably would have
suggested to one of ordinary skill in the art at the time of the invention. In
re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references."); In re Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for
obviousness "is what the combined teachings of the references would have
suggested to those of ordinary skill in the art.")
We agree with the Examiner that one of ordinary skill in the art
seeking to produce a frozen confection reasonably would have been led to
aerate and partially freeze a mixture of ingredients at the temperature recited
in claim 1, as suggested by Y okoto (Y okoto i-fi-125, 41) and either Quail
(Quail i148) or Gray (Gray 12, 11. 4--9), add frozen ice fragments having a
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size of 0.06 mm to 1.0 mm to the aerated, partiaUy frozen mix in an amount
of 23 .1 % to 80% by weight to form a slurry to provide a smooth texture and
a rich, cool feeling to a frozen confection, as disclosed by Y okoto (Y okoto
i-fi-115, 18, 29, 37, 38), and further freeze the slurry in an extruder at a
temperature of -1 OQC to -18QC to produce a frozen, aerated product with
increased creaminess and reduced iciness, as disclosed by Gray (Gray 2, 11.
1-9 and 12, 11. 4--9), or at a temperature of -15QC to produce a frozen,
aerated product having properties appealing to consumers, such as desirable
texture and meltdown, as disclosed by Quail (Quail i-fi-1 8 and 16), 5 with a
reasonable expectation of successfully forming in an ice confection having a
total solids content of 19.5%-27.2% and an overrun of 10%-200% as
disclosed by Yokoto (Yokoto i-fi-141, 43, 48), and a mean gas cell size of less
than 20 microns as taught by Gray (Gray 11, 11. 5-7). Accordingly,
Appellants' arguments regarding the individual teachings of Y okoto, Quail,
and Gray are unpersuasive of reversible error.
Appellants also argue that the Examiner's position that because the
combined disclosures of Y okoto, Quail, and Arbuckle suggest a method
comprising the same process steps as recited in claim 1, one of ordinary skill
in the art would expect that the product of the process suggested by the prior
5 The extruder temperatures taught by Gray or Quail, according to page 5,
line 40 to page 6, line 4 of Appellants' Specification, constitute the "low
temperatures" sufficient for forming "an ice confection having a mean gas
bubble size of less than 35 microns" recited in claim 1.
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art would possess the same mean gas bubble size as recited in ciaim 1, is
"not correct either on the law or on the facts" because "the proper test is not
whether a combination of references cited under § 103 would inherently
produce the results. The appropriate test is whether the results would be
expected from the cited art." (App. Br. 7) (emphasis in original.)
However, we agree with the Examiner that Appellants' Specification
teaches that the mean gas bubble size in the ice confection recited in claim 1
would have naturally followed from processing in a low temperature
extruder, as suggested by the collective teachings of the applied prior art
references. (Final Act. 5.) As discussed above, the combined teachings of
Yokoto and Quail would have suggested processing an aerated, partially
frozen mixture of ingredients containing ice particles (slurry) in a low
temperature extruder to produce an ice confection, a process that is identical
to or included by the process of claim 1. Therefore, the ice confection
product produced by the claimed process suggested by the combined
teachings of Y okoto and Quail is expected to be identical or substantially
identical to the product produced by the process of claim 1, including having
an identical or substantially identical mean gas bubble size. See Ex parte
Obiaya, 227 USPQ 58, 60 (BP AI 1985) ("The fact that appellant has
recognized another advantage which would flow naturally from following
the suggestion of the prior art cannot be the basis for patentability when the
differences would otherwise be obvious.''); In re Kubin, 561F.3d1351,
1357 (Fed. Cir. 2009) ("Even if no prior art of record explicitly discusses the
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[iimitation], [appiicants'] appiication itseif instructs that [the iimitation] is
not an additional requirement imposed by the claims on the [claimed
invention], but rather a property necessarily present in [the claimed
invention]"). In any event, as discussed above, Gray discloses a method of
producing a frozen, aerated product comprising aerating and partially
freezing a mixture of ingredients at -4QC to -7QC followed by low
temperature extrusion at -1 OQC to -18QC, resulting in the formation of gas
cells having a mean size of below 20 microns in the final ice confection
product. Accordingly, we find no reversible error in the Examiner's
determination that the combined disclosures of Y okoto (discussed above)
and either Quail or Gray would have suggested an ice confection product
having the mean gas bubble size recited in claim 1.
Appellants also assert that Examples 1 and 2 in their Specification
demonstrate that ice confections having a dry, crumbly, and frangible texture
can be produced by the process of the invention, whereas a sample made
without low temperature extrusion was perceived to break down by
melting/dissolving in the mouth rather than by crumbling. (App. Br. 6.) To
the extent that Appellants argue that the claimed process imparts unexpected
results as indicated above, we agree with the Examiner that Appellants do
not meet their burden of demonstrating that the claimed process imparts
results that would have been unexpected by one of ordinary skill in the art at
the time of the invention relative to the closest prior art. (Ans. 11-12.) In re
Klosak, 455 F .2d 1077, 1080 (CCP A 1972) ("the burden of showing
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unexpected resuits rests on he who asserts them"); Jn re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art."). Nor do Appellants
demonstrate that the showing relied upon is reasonably commensurate with
the scope of protection sought by the claims on appeal. In re Harris, 409
F.3d 1339, 1344 (Fed. Cir. 2005) ("Even assuming that the results were
unexpected, Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed to narrow the claims."); In re Greenfield,
571 F .2d 1185, 1189 (CCP A 1978) ("Establishing that one (or a small
number of) species gives unexpected results is inadequate proof, for 'it is the
view of this court that objective evidence of non-obviousness must be
commensurate in scope with the claims which the evidence is offered to
support."') (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Example 1 describes the preparation of three inventive ice confections that
include ice particles of different sizes within the range recited in claim 1,
and describe the preparation of a first comparative sample having ice
particles larger than the range recited in claim 1, and a second comparative
sample that was not subject to low temperature extrusion as required by
claim 1. (Spec. 7-11.) Example 2 describes the preparation of four
inventive ice confections, including a water ice, two fruit ices, and a milk
ice. (Spec. 11-12.) The Specification explains that the "sensory properties
of the samples were evaluated by an informal panel of tasters," and indicates
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that the inventive sampies were soft, had a dry, crumbiy texture, and were
frangible. (Spec. 10, 11. 18-21.) In contrast, the comparative sample having
frozen particles larger than 1 mm had noticeable ice pieces on eating, and
was crunchy rather than crumbly (Spec. 10, 1. 25-11, 1. 1 ), while the
comparative sample prepared without low temperature extrusion was not
frangible, and broke down by melting/dissolving in the mouth rather than by
crumbling. (Spec. 11, 11. 1-5.)
As indicated by the Examiner, Appellants do not establish that the
evaluation performed by the informal panel of tasters described in the
Specification is well-accepted in the art, such that one of ordinary skill in the
art would consider the results to be a reliable means of evaluation with a
generally accepted margin of error. (Compare Ans. 12 with App. Br. 6-9.)
In addition, as the Examiner points out (Final Act. 3-5), the applied prior art
teaches approaches to improving the texture of frozen confections, and the
results of Examples 1 and 2 reasonably follow from the teachings of the
prior art. Nevertheless, Appellants do not adequately explain the sufficiency
of a showing of unexpected results relative the teachings of the applied prior
art, nor do they direct us to any statement in the Specification attesting to the
unexpected nature of the results, or to any other persuasive evidence or
averment evincing that the results obtained in Examples 1 and 2 would have
been unexpected by one of ordinary skill in the art at the time of the
invention. (App. Br. 6-9.) In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir.
1997) ("Geisler made no such assertion [that results were unexpected] in his
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appiication. Nor did Geisier submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
. . Instead, the only reference to unexpected results was a statement by
Geisler's counsel ... that Geisler's results were 'surprising."').
We also agree with the Examiner's reasoning set forth at pages 11-12
of the Answer that the narrow showing provided in Examples 1 and 2 of a
limited number of inventive samples fails to support patentability over the
entire scope of the ice confections recited in claim 1. We further add that
claim 1 recites that "a mix of ingredients" is used to prepare the confection,
but the particular ingredients used in the inventive samples of Examples 1
and 2 do not fairly represent the unlimited ingredients encompassed by claim
1. Harris, 409 F.3d at1344; Greenfield, 571 F.2d at 1189 (quoting Tiffin,
448 F.2d at 792).
Thus, we determine that the evidence of non-obviousness relied on by
Appellants does not outweigh the evidence of obviousness proffered by the
Examiner. We accordingly sustain the Examiner's rejection of claims 1-8
and 20 under 35 U.S.C. § 103(a).
Claims 16--19
Appellants argue that the Examiner improperly ignores the disclosures
of Quail in the rejections of claims 16-19. (App. Br. 8-9.) However,
Appellants' arguments are again based on Quail individually, and do not
take into account the combined disclosures of the applied prior art. We
agree with the Examiner that Arbuckle' s disclosure of utilizing coconut oil
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in a frozen confection, in combination with the disciosures of Y okoto and
Quail discussed above, reasonably would have led one of ordinary skill in
the art to the process recited in claim 16. (Final Act. 5.) We further agree
with the Examiner that the combined disclosures of Y okoto, Quail, and
Arbuckle (as discussed above), including Examination 1 and Examples 1, 2,
and 3 of Y okoto, would have led one of ordinary skill in the art to the
processes recited in claims 17-19. (Final Act. 5---6.) Appellants' arguments
are therefore unpersuasive of reversible error, and we sustain the Examiner's
rejection of claims 16-19 under 35 U.S.C. § 103(a).
Rejection III
Appellants do not timely6 contest the Examiner's rejection of claims
1-8 and 16-20 on the ground of non-statutory obviousness-type double
patenting over claims 1, 3, 4, 6-9, and 11 of copending patent application
11/998,671 in view of Quail and Arbuckle. (See generally App. Br.) We
6 We do not consider the arguments raised in the first time in the Reply Brief
that could have been earlier presented in the Appeal Brief. (Rep. Br. 7.) 37
C.F.R. § 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised for the
first time in the Reply Brief that could have been raised in the Appeal Brief
will not be considered by the Board unless good cause is shown); see also
Ex parte Borden, 93 USPQ2d 14 73, 14 7 4 (BP AI 2010) (Informative)
(explaining that under the previous rules, which are similar to the current
rules, "the reply brief [is not] an opportunity to make arguments that could
have been made in the principal brief on appeal to rebut the Examiner's
rejections, but were not.").
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accordingiy summariiy sustain this rejection. 37 C.F.R. § 41.37(c)(l)(iv);
see also Manual of Patent Examining Procedure (MPEP) § 1205.02 (9th ed.
Nov. 2014) ("If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, appellant has waived any challenge to that ground of
rejection and the Board may summarily sustain it, unless the examiner
subsequently withdrew the rejection in the examiner's answer.").
CONCLUSION
In view of the reasons set forth above, we affirm the Examiner's
rejections of claims 1-8 and 16-20 under§ 103(a), and the Examiner's
provisional rejection of claims 1-8 and 16-20 for nonstatutory, obviousness-
type double patenting.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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