Ex Parte Bot et al

Patent Trial and Appeal Board

Jul 13, 2018

14005911 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/005,911 09/18/2013 Arjen Bot
201 7590 07/17/2018
UNILEVER PATENT GROUP
700 SYLVAN AVENUE
A4
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
F8118USw 7180
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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 ARJEN BOT, WILHELMUS CASTENMILLER,
INGE DEUTZ, CORNELIS KROON, and
ANNA MARIA RUTGERS VAN DER LOEPP
Appeal2017-008763
Application 14/005,911 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R.
SNAY, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's final decision rejecting claims 1-27 under 35 U.S.C. § 103(a) as
being unpatentable over Masuda2 in view of Ichiyama. 3
1 Appellants identify the real party in interest as Unilever. Br. 3.
2 Masuda et al., JP 2008-154469 A, published July 10, 2008 ("Masuda").
Further references to Masuda will be to an English language translation of
Masuda filed by Appellants on April 7, 2014.
3 Ichiyama et al., US 2009/0246345 Al, published Oct. 1, 2009
("Ichiyama").
Appeal2017-008763
Application 14/005,911
We have jurisdiction under 35 U.S.C. § 6(b). 4
We AFFIRM.
The subject matter on appeal relates to edible oil-in-water emulsion
compositions (see, e.g., claim 1 ). The Inventors disclose that dairy cream is
useful in various food products due to its richness in taste, texture, and
mouthfeel. Spec. 1: 12-22. However, according to the Inventors, dairy
cream is relatively expensive, has limited shelf life, and exhibits fluctuations
in its composition and properties. Id. at 1 :24--26. In view of this, dairy
cream alternatives (DCAs), oil-in-water emulsions based on vegetable or
dairy fats and/or oils, a source of protein, and emulsifiers, have been
developed to provide a more cost-effective, consistent product. Id. at 1 :28-
32, 2: 1-2. According to the Inventors, conventional DCAs are usually not
multipurpose products because they are either suited for whipping
applications or as an additive without whipping ( e.g., in drinks, sauces, and
soups) and tend to show defects when used for other applications. Id. at
4:23-28. In view of this, the Inventors disclose edible oil-in-water emulsion
compositions that are multipurpose DCA compositions. Id. at 5:8-19.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. 5 Limitations at issue are italicized
and some indentations have been modified.
1. Edible oil-in-water emulsion composition comprising
18 to 50 wt% of a fat phase
1. 5 to 4 wt% of protein,
0.2 to 1 wt% of sucrose fatty acid esters wherein at
4 Our Decision refers to the Specification (Spec.) filed September 18, 2013,
Appellants' Appeal Brief (Br.) filed November 7, 2016, and the Examiner's
Answer (Ans.) dated January 18, 2017.
5 Br. 9.
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Application 14/005,911
least 7 0 wt% of the total amount of sucrose fatty acid
esters is sucrose monostearate or sucrose monopalmitate
or a combination thereof, and
at least 3 5 wt% of water;
and wherein
iv. the composition has a pH of between 6 and 8;
v. the sucrose fatty acid esters have a hydrophilic
to lipophilic balance (HLB) of greater than 15; and
vi. the composition comprises 5 to 10 wt% of a
concentrated milk derivative.
B. DISCUSSION
The Examiner finds Masuda discloses an oil-in-water emulsion
comprising 20-50% oil phase, 1 % whey protein, 0.2-3% sucrose fatty acid
ester, and 44---64% water. Ans. 3. The Examiner finds Masuda discloses its
sucrose fatty acid ester comprises at least 50% sucrose monoesters of fatty
acids, such as stearic acid (i.e., sucrose monostearate) and/or palmitic acid
(i.e., sucrose monopalmitate ). Id. at 3--4. Specifically, the Examiner finds
Masuda discloses the use of a sucrose fatty acid ester (i.e., S 1670) disclosed
by Appellants as an exemplary sucrose fatty acid ester having an HLB value
greater than 15. Id. at 4. The Examiner also determines Masuda's oil-in-
water emulsion would have a pH between 6 and 8, as recited in claim 1. Id.
The Examiner finds that although Masuda discloses the use of whey
protein, Masuda also discloses the use of other milk derivatives, such as
buttermilk powder, skimmed milk powder, and whole milk powder, but does
not disclose the amount recited in claim 1 for a concentrated milk derivative.
Id. at 5. The Examiner finds Ichiyama discloses an oil-in-water emulsion
may include 1-14 wt% of a milk derivative, such as buttermilk powder,
skimmed milk powder, and/or whole milk powder and that the inclusion of
too little powder results in the deterioration of emulsion stability and milk
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Application 14/005,911
taste while the inclusion of too much powder results in increased viscosity
and cost. Id. at 5-6. The Examiner concludes it would have been obvious to
modify Masuda's oil-in-water composition in view of Ichiyama's disclosure
to adjust the amount of milk derivatives ( e.g., buttermilk powder, skimmed
milk powder, and/or whole milk powder) to obtain an emulsion having a
desired flavor, stability, and viscosity. Id. at 6.
Appellants contend the claimed invention is directed to a DCA
formulation that can be used for a broad range of purposes without defects,
but Masuda's emulsion exhibits low foaming and Masuda discloses adding
the emulsion to a conventional whipped cream to test the emulsion for
whipping. Br. 6. In view of this, Appellants assert Masuda does not teach
the use of its sucrose esters in an emulsion for whipping and one of ordinary
skill in the art would not have looked to Masuda's low foaming composition
for an emulsion suitable for a broad range of purposes that includes
whipping. Id.
Appellants' arguments are unpersuasive. Claim 1 does not require
that the oil-in-water composition is used in a whipped cream or otherwise
has any capability to be whipped. In re Self, 671 F.2d 1344, 1348 (CCPA
1982) ("Many of appellant's arguments fail from the outset because, as the
solicitor has pointed out, they are not based on limitations appearing in the
claims."). Further, the Examiner finds Masuda discloses the use of its
sucrose fatty acid esters in an oil-in-water emulsion that can be used in
various applications, including whipped and non-whipped applications.
Ans. 10-11. Although Masuda discloses foaming is suppressed and little
foaming occurs, Masuda nonetheless discloses some degree of foaming
occurs and that its emulsion can be used to produce a whipped cream.
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Appeal2017-008763
Application 14/005,911
Masuda ,r,r 8, 25. Thus, Masuda does not teach away from an oil-in-water
emulsion that can be whipped. Further, Masuda discloses its oil-in-water
emulsion includes a sucrose fatty acid ester made from a fatty acid such as
palmitic acid or stearic acid. Id. ,r,r 7, 11. Masuda also discloses an example
using S 1670 as a sucrose fatty acid ester, which is one of the exemplary
sucrose fatty acid esters disclosed in Appellants' Specification. Id. ,r,r 19,
20; Spec. 19:20-27, 20:1-2, Table 1. Therefore, Masuda's disclosure
supports the Examiner's findings.
Appellants further assert Masuda does not disclose or suggest using
5 to 10 wt% of a concentrated milk derivative, as recited in claim 1, and that
the experiments discussed on pages 32-33 of their Specification demonstrate
that a whipped product cannot be obtained when milk powder is replaced
with whey protein. Br. 6-7.
These arguments are also unpersuasive. The Examiner correctly
explains that although Masuda discloses the use of whey protein and its
advantages, Masuda also discloses the use of other milk derivatives, namely
buttermilk powder, skimmed milk powder, and whole milk powder. Ans.
11-12; Masuda ,r 16. Thus, Appellants' arguments regarding the problems
associated with replacing milk powder with whey protein do not address the
Examiner's findings or rejection.
Appellants further argue that using sucrose esters, such as those
disclosed by Ichiyama, would not result in a product suitable for broad
usage, such as for hot acidic media, as discussed at page 36 of their
Specification. Br. 7. However, the Examiner cites Masuda's disclosure of
an oil-in-water emulsion including a sucrose fatty acid ester, not Ichiyama's
sucrose esters. Ans. 3--4, 12-13. Therefore, Appellants' arguments
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Application 14/005,911
regarding Ichiyama's sucrose esters also do not address the Examiner's
rejection.
Moreover, the Examiner explains that Ichiyama discloses an oil-in-
water emulsion including 1-14 % of a milk derivative, such as buttermilk
powder, skimmed milk powder, and/or whole milk powder and that the
inclusion of too little powder results in the deterioration of emulsion stability
and milk taste while the inclusion of too much powder results in increased
viscosity and cost. Id. at 5-6, 12. Ichiyama discloses an oil-in-water
emulsion used or a cake topping or the like that can include an oil-and-fat
component, a non-fat milk solid, water, and an emulsifier. Ichiyama ,r,r 1, 4,
26. Ichiyama discloses that the non-fat milk solid can be whole fat milk
powder, defatted milk powder, butter milk powder, or whey protein and that
the non-fat milk solid can be used in an amount of 1-14 wt%. Id. ,r 24.
Thus, Ichiyama discloses a range for concentrated milk derivatives that
overlaps with the range recited in claim 1.
Furthermore, Ichiyama discloses using less non-fat milk solid results
in deterioration of emulsion stability and milk taste while using larger
amounts result in increased viscosity and cost. Id. Thus, Ichiyama's
disclosure demonstrates the amount of a non-fat milk solid ( e.g., buttermilk
powder, whole milk powder, or skimmed milk powder) is a result-effective
variable. As a result, it would have been obvious to modify the amount of
such a concentrated milk derivative in the oil-in-water composition of
Dawson to optimize emulsion stability, taste, and viscosity, thus arriving at a
composition within the scope of claim 1. "[D]iscovery of an optimum value
of a result effective variable in a known process is ordinarily within the skill
of the art." In re Boesch, 617 F.2d272, 276 (CCPA 1980). Therefore,
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Appellants' arguments do not identify a reversible error in the Examiner's
rejection of claim 1.
Appellants further argue claim 25 recites a range of whipping times
that distinguishes the claimed invention from the applied references. Br. 7.
As explained by the Examiner at pages 9--10 of the Examiner's Answer, the
oil-in-water emulsion of Dawson, as modified in view of Ichiyama, is
substantially identical to that claimed and, therefore, would possess the
ability to be whipped in the time recited in claim 25. Appellants' arguments
do not identify a reversible error in this rejection.
Appellants also discuss the limitations of claim 26. Br. 5. To the
extent this discussion is intended to be a separate argument, it amounts to no
more than a recitation of the additional limitations of a dependent claim. We
and our reviewing court have long held that such "argument" does not merit
separate consideration. See, e.g., In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir.
2011) ("[W]e hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art").
Appellants do not argue claims 2-24 and 27 separately from claim 1.
Br. 4--8.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103 rejection of claims 1-27 over
Masuda and Ichiyama.
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C. DECISION
The decision of the Examiner is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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