Ex Parte Boice et al

Patent Trial and Appeal Board

Mar 14, 2014

11099146 (P.T.A.B. Mar. 14, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE
THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte BROOKE C. BOICE,1
Sumiko Kanahori, W. Russell Egbert, and Allan W. Buck
________________

Appeal 2012-010001
Application 11/099,146
Technology Center 1700
________________

Before PETER F. KRATZ, JEFFREY T. SMITH, and MARK NAGUMO,
Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Brooke C. Boice, Sumiko Kanahori, W. Russell Egbert, and
Allan W. Buck (“Boice”) timely appeal under 35 U.S.C. § 134(a) from the
Final Rejection2 of claims 64, 66-75, 77-83, and 86-91, which are all of the
pending claims. We have jurisdiction. 35 U.S.C. § 6. We reverse.

1 The real party in interest is listed as Archer-Daniels-Midland Company.
(Appeal Brief, filed 21 October 2011 (“Br.”), 1.)
2 Office action mailed 30 March 2011 (“Final Rejection”; cited as “FR”).
Appeal 2012-010001
Application 11/099,146

2
OPINION
A. Introduction3
The subject matter on appeal relates to food bars that are said to have
an increased protein content and an increased shelf life. According to
the 146 Specification, in a food bar, water tends to migrate from other
ingredients to proteins, which bind the water and which “are believed to
have the effect of firming the bar’s texture over its shelf life.”
(Spec. 1 [0003].) The inventors disclose that by adding a soluble
indigestible carbohydrate fiber, such as guar gum, the texture of the food bar
can be maintained substantially over its shelf life. (Id. at 2 [0005].)
The specification teaches that, as a result, “[t]he food bar can have an
increased protein content, where the protein makes up greater than 25% of
the total ingredients.” (Id. at [0008].)
Claim 64 is representative and reads:
A food bar having an increased shelf life and protein content,
comprising:
(a) a protein-containing ingredient, wherein the protein
makes up greater than 25% of the weight of the food bar;
(b) a carbohydrate-containing ingredient providing at least
two carbohydrates; and
(c) a soluble indigestible carbohydrate fiber present in
sufficient amount so that

3 Application 11/099,146, Food bar with reduced hardness,
filed 5 April 2005, claiming the benefit of a provisional application
filed 7 April 2004. The specification is referred to as
the “146 Specification,” and is cited as “Spec.”
Appeal 2012-010001
Application 11/099,146

3
an initial firmness of the food bar measured by
compression force on the day of formation of the food
bar is no more than 63% of initial firmness of a control
food bar lacking the amount of indigestible
carbohydrate fiber; and so that
a subsequent firmness of the food bar measured by
compression force 6 months after formation of the
food bar is no more than 44% of the subsequent
firmness of the control food bar.
(Claims App., Br. 20; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection:4
A. Claims 64, 66-81, 86-88, 90, and 91 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Leibfred,5 Gilles,6 and Pfeiffer.7
A1. Claims 82, 83, and 89 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Leibfred, Gilles, Pfeiffer, and Gautam.8

4 Examiner’s Answer mailed 30 November 2011 (“Ans.”).
5 Kevin J. Leibfred et al., Reduced fat shredded wafers and process, U.S.
Patent 5,595,774 (1997).
6 Stephanie M. Gilles et al., Diabetic nutritionals and method of using, U.S.
Patent 6,248,375 B1 (2001).
7 Eric John Pfeiffer, Confectionery compositions containing fiber, U.S.
Patent Application Publication 2002/0197357 A1 (2002).
8 Akhilesh Gautam et al., Nutrition bar and process of making components,
U.S. Patent 7,220,442 B2 (2007).
Appeal 2012-010001
Application 11/099,146

4
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Boice argues that the Examiner erred harmfully in finding that
Leibfried teaches or suggests food wafers having a protein content of greater
than 25 weight percent%. Leibfried teaches that protein (milk powder or
soybean protein) “may be added in an amount sufficient to create a final
protein level of from about 10 to about 20 weight percent.” (Leibfried,
col. 9, ll. 46-49; cited at FR 3, ll. 3-6.) The Examiner finds that the upper
end of this range is “close to that claimed” and concludes that it would have
been obvious to discover the optimum or workable range claimed involving
only routine skill in the art. (FR 3, ll. 7-13.)
The difficulty with the Examiner’s finding is the absence of credible
evidence indicating that those skilled in the art would have considered the
upper end of “about 20 weight percent” protein disclosed by Leibried to
include greater than 25 weight percent protein as required by the appealed
claims. The Examiner does not dispute Boice’s contention that none of the
reduced-fat shredded wheat wafers described by Leibfried have a protein
content greater than about 16 weight percent. Nor does the Examiner
explain how the 25 weight percent upper end of the protein content disclosed
by Gilles for nutritional bars that “minimize[] postprandial glucose
response” (Gilles, col. 1, ll. 24-25) would have suggested using more
than 25 weight percent protein in the wafers taught by Leibfried. Similarly,
Pfeiffer, which teaches a maximum of 10 weight percent protein in
Appeal 2012-010001
Application 11/099,146

5
confectionary compositions, does not provide a reason to increase the
amount of protein in Leibfried’s wafers.
The teaching in the 146 Specification that the addition of the softening
soluble indigestible carbohydrate fiber permits food bars having an
“increased protein content” of greater than 25 weight percent
(Spec. 2 [0008]) indicates, consistently with Boice’s arguments, that those
skilled in the food arts would have considered such amounts of protein
significantly higher than the 20 weight percent upper limit discussed by
Leibfried. The Examiner has not directed our attention to evidence of record
to the contrary.
As the predecessor to our reviewing court explained many decades
ago, the determination of optimal values outside of a recognized range of
parameters may not be obvious. In re Sebek, 465 F.2d 904, 907 [175
USPQ 93, 95] (CCPA 1972). Here, the weight of the evidence supports
Boice’s arguments that there is insufficient reason to modify the
compositions taught by Leibfried to obtain the protein content required by
the appealed claims.
The Examiner’s reliance on Gautam (FR 9-10) does not cure the
deficiencies of the principal rejection.
We therefore reverse the rejections.
C. Order
We reverse the rejection of claims 64, 66-75, 77-83, and 86-91.
REVERSED
Appeal 2012-010001
Application 11/099,146

6

cdc