Ex Parte Christensen et al

Patent Trial and Appeal Board

Oct 24, 2017

13051122 (P.T.A.B. Oct. 24, 2017)

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.
13/051,122 03/18/2011 Gunner Christensen PS4422074 3912
40401 7590 10/26/2017
Hershkovitz and Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
LEBLANC, KATHERINE DEGUIRE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/26/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GUNNER CHRISTENSEN,
HANS BERTIL BURLING, and CLAUS ANDERSEN
Appeal 2017-001159
Application 13/051,122
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1—46. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A drinkable yoghurt comprising casein and whey
protein in a caseimwhey protein ratio of from 4:96 to 12:88
(w/w).
Appeal 2017-001159
Application 13/051,122
Appellants1 (App. Br. 9) request review of the following rejections
from the Examiner’s Non-Final Action dated May 14, 2015:
I. Claims 1—9, 17—24, 27—29, 32—36, 39, 40, and 44-46, rejected
under 35 U.S.C. § 103(a) as unpatentable over Rhodes (US 4,110,476,
issued August 29, 1978).2
II. Claims 10-16, 37, and 38 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rhodes and Thiessen-Bolder et al., (US 2012/0263852
Al, published October 18, 2012; hereinafter “Thiessen-Boulder”).
III. Claims 25, 26, and 41 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rhodes and Argyle et al., (GB 1,492,981, published
November 23, 1977; hereinafter “Argyle”).
IV. Claims 30, 31, 42 and 43 rejected under 35 U.S.C. § 103(a) as
unpatentable over Rhodes and Koenraads et al., (EP 0 184 267 Al,
published June 11, 1986; hereinafter “Koenraads”).
For Rejection I, Appellants do not argue any claim separate from the
other. App. Br. 14. Further, Appellants rely on the arguments presented
when discussing Rejection I to address Rejections II—IV and do not address
or further distinguish the additionally cited secondary references in these
rejections based on the additional limitations of their respectively rejected
claims. Id. at 14—16. Accordingly, we select claim 1 as representative of the
subject matter before us on appeal. Claims 2-46 stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
1 The real party in interest is identified as Aria Foods Amba. App. Br. 2.
2 For Rejection I, we adopt the statement of rejection as presented in the
Answer because it includes claim 32, which was erroneously omitted from
the corresponding statement presented in the Final Action. Final Act. 2;
Ans. 4. We deem this omission a harmless error because both the Examiner
and Appellants address claim 32 in their respective filings. Final Act. 2;
Ans. 4; App. Br. 6.
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OPINION
Prior Art Rejections
Claim 1
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s prior art rejections of claims 1—
46 for the reasons presented by the Examiner. We add the following for
emphasis.
Claim 1 is directed to a drinkable yoghurt comprising a specific range
for the caseimwhey protein ratio.
The Examiner finds Rhodes discloses a fruit-flavored liquid or
drinking yoghurt comprising whey to casein proteins in a casein: whey
protein ratio of 2:1 or better, (i.e, higher relative amounts of whey protein) in
the drinkable yoghurt (versus 4:1 in cow’s milk). Final Act. 2—3; Rhodes
col. 4,11. 38-56, col. 5,11. 52-57, col. 6,11. 46-62, col. 9,11. 60-65.
Appellants do not dispute the Examiner’s finding that Rhodes’ broad range
for the caseimwhey protein ratio encompasses the claimed range of 4:96 to
12:88 (i.e., 1:24 to 1:7.33). Ans. 11. The Examiner determines it would
have been obvious to one skilled in the art that the amount of whey protein
can be increased within the reference’s teaching to arrive at a casein:whey
protein ratio of 4:96 to 12:88 as claimed. Final Act. 3.
Appellants argue that, absent impermissible hindsight, the ordinary
artisan would not have arrived to the claimed ratio from the teachings of
Rhodes through routine experimentation because of the huge gap between
the possible caseimwhey protein ratio suggested by Rhodes and the explicit
casein:whey protein ratio recited in the present claims. App. Br. 11—14.
Appellants further argue that this huge gap between the caseimwhey protein
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ratio of Rhodes and the claimed casein: whey protein ratio is an indication
that the claimed ratio substantially teaches away from Rhodes’ disclosed
ratio. Id. at 14.
We are unpersuaded by these arguments. Our reviewing court has
held
[A] prima facie case of obviousness arises when the
ranges of a claimed composition overlap the ranges
disclosed in the prior art. [Citations omitted.]
Where the “claimed ranges are completely
encompassed by the prior art, the conclusion [that
the claims are prima facie obvious] is even more
compelling than in cases of mere overlap.”
In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson,
315 F.3d 1325, 1330 (Fed. Cir. 2003).
As noted above, the Examiner found that Rhodes’s broad range for the
casein:whey protein ratio of 2:1 or better (i.e., increasing the amount of
whey protein) encompasses the claimed range for the caseimwhey protein
ratio. Ans. 11; Rhodes col. 9,11. 60-66. The Examiner also found Rhodes
discloses that having more whey protein present prevents agglomeration of
the casein particles, which keeps the liquid yoghurt in fluid state. Ans. 11;
Rhodes col. 8,11. 11—14, col. 9,11. 4—10. Thus, one skilled in the art,
desiring to make a liquid yoghurt, would reasonably expect, based on the
Rhodes’s teachings, that the addition of more whey to the liquid yoghurt
would result in the liquid yoghurt keeping its fluid state. Therefore, the
Examiner provided a reasonable basis for one skilled in the art to arrive at
the claimed invention from the teachings of Rhodes.
Once a prima facie case of obviousness is established, the burden is
on Appellants to rebut this prima facie obviousness by showing evidence of
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unexpected properties at the claimed caseimwhey protein ratio. When
evidence of secondary considerations is submitted, we begin anew and
evaluate the rebuttal evidence along with the evidence upon which the
conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052
(CCPA 1976). The burden of establishing unexpected results rests on the
person who asserts them. Appellants may meet the burden by establishing
that the difference between the claimed invention and the closest prior art
was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080
(CCPA 1972). The unexpected results must be established by factual
evidence, and attorney statements are insufficient to establish unexpected
results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997).
Further, a showing of unexpected results supported by factual evidence must
be reasonably commensurate in scope with the degree of protection sought
by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983);
In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Appellants argue Example 1 (Table 1.2) of the Specification
demonstrates unexpected results in stability, creaminess and texture when
comparing the claimed invention to a drinkable yoghurt having a
caseimwhey protein ratio of 0:100. App. Br. 17—23. The data in Table 1.2
include data associated with the endpoints of the claimed caseimwhey
protein ratio.3 According to Appellants, the data in Table 1.2 demonstrate
3 There is an intermediate datum for a drinkable yoghurt having a
caseimwhey protein ratio of 8:92 (i.e., 1:11.5) where the resulting drinkable
yoghurt is stable. Spec. Table 1.2 (Trial 3). This specific caseimwhey
protein ratio is the subject of claim 47, which the Examiner indicated to be
allowable but objected to as being dependent on a rejected claim in the
Advisory Action dated July 31, 2015.
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drinkable yoghurts having a casein:whey protein ratio range of from 4:96
(i.e., 1:24) to 12:88 (i.e., 1:7.33) show optimal organoleptic properties
regarding stability, creaminess, and non-grainy structure when compared to
drinkable yoghurt having a caseimwhey protein ratio of 0:100 and 20:80
(i.e., 1:4). App.Br. 18; Spec. 18. Appellants additionally rely on paragraph
16 of the Declaration under 37 C.F.R. § 1.132 by co-inventor Claus
Bukbjerg Andersen dated March 20, 2015 (Declaration 2) as supporting the
results shown by the data in the Specification as unexpected. App. Br. 18.
We have considered the evidence proffered by Appellants but agree
with the Examiner’s determination that the data are insufficient to overcome
a prima facie case of obviousness. Ans. 11—14.
First, we find no mention in the Specification that refers to the data in
Table 1.2 as showing unexpected results and Appellants directs us to none.
Instead, the Specification describes the data in Table 1.2 as “confirm[ing]
that manufacturing a drinking yoghurt using acid whey as replacement for
casein [] is highly feasible and practical and that the resulting product has
the desired texture.” Spec. 21. This statement is not a recognition of
unexpected results.
Secondly, while Appellants argue that the tested samples show
optimal organoleptic properties regarding stability, creaminess, and non-
grainy structure when compared to the drinkable yoghurt of the comparative
samples, the overall assessment of the drinkable yoghurt in the Remarks
column is that the resulting product is less than desirable (not fully stable,
rough structure). Spec. Table 1.2; Ans. 11. Appellants have not adequately
explained how or why a less than desirable product is considered an
unexpected result. Although the Declarant states in paragraph 16 of
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Declaration 2 that the results in the property of creaminess are unexpected,
Declarant also does not explain why a less than desirable product is
considered an unexpected result.
Thirdly, Appellants have not adequately explained why the two
drinkable yoghurt samples having a caseimwhey protein ratio representing
the endpoints of the claimed range of casein: whey protein ratio together with
the intermediate sample having a caseimwhey protein ratio of 8:92 are
representative of the entire scope of drinkable yoghurts encompassed by the
subject matter of claim 1.
Lastly, it is not clear that Appellants compared the claimed invention
against the closest prior art, as represented by Rhodes.
On this record, Appellants have not adequately shown, much less
explained, why the evidence relied upon would have been unexpected by
one of ordinary skill in the art or is reasonably commensurate in the scope
with the claims.
Appellants argue Rhodes’s non-fat milk solids are not equivalent to
casein because Rhodes includes embodiments where no casein is present and
other embodiments where it could be casein or combinations of salts of
caseins. App. Br. 10-11; Rhodes col. 5,11. 52—57. Appellants also rely on
paragraph 8 of the Declaration under 37 C.F.R. § 1.132 by co-inventor Claus
Bukbjerg Andersen dated February 25, 2014 (Declaration 1) in support of
this argument. App. Br. 11.
We are unpersuaded by these arguments. Appellants’ argument is
premised on Rhodes teaching embodiments of the disclosed invention where
casein is not present or is not the only non-fat milk solids present. It is well
settled that a reference may be relied upon for all that it discloses and not
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merely the preferred embodiments as suggested by Appellants. See Merck
& Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all
disclosures of the prior art, including unpreferred embodiments, must be
considered” (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976))); In
re Fracalossi, 681 F.2d 792, 794 n.l (CCPA 1982) (explaining that a prior
art reference’s disclosure is not limited to its examples.). While Appellants
recognize the other embodiments taught by Rhodes, Appellants’ arguments
do not contest that Rhodes discloses embodiments where casein is the only
non-fat milk solid. With respect to paragraph 8 of Declaration 1, this
paragraph presents inconsistent information that includes Declarant’s
acknowledgement that, at best, Rhodes’s disclosure overlaps the claimed
caseimwhey protein ratio. Thus, Appellants do not adequately explain how
the disclosure of the additional embodiments detracts from Rhodes’s
disclosure of embodiments where casein is the only non-fat milk solid.
Appellants have not adequately explained error in the Examiner’s
determination of obviousness.
Appellants argue the Examiner did not give proper weight to the
Declarations of February 25, 2014 (Declaration 1) and of March 20, 2015
(Declaration 2). App. Br. 16—17.
We find no merit to this argument given the consideration noted on
pages 11—15 of the Answer.
Accordingly, we affirm the Examiner’s prior art rejections of claims
1—46 under 35 U.S.C. § 103 (a) (Rejections I—IV) for the reasons presented
by the Examiner and given above.
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DECISION
The Examiner’s prior art rejections of claims 1—46 under 35 U.S.C.
§ 103(a) are affirmed.
TIME PERIOD
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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