Ex Parte Coburn

Board of Patent Appeals and Interferences

Mar 30, 2011

10814219 (B.P.A.I. Mar. 30, 2011)

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.
10/814,219 04/01/2004 Katalin Coburn 32416-1001 5389
7590 03/30/2011
Deborah A. Peacock
Peacock Myers, P.C.
P.O. Box 26927
Albuquerque, MN 87125-6927
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KATALIN COBURN
__________

Appeal 2010-008895
Application 10/814,219
Technology Center 1700
__________

Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims to a method of
making nut butter. The Examiner rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

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Application 10/814,219

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STATEMENT OF THE CASE
Claims 1, 5-8, 11-16, 18, 21, 22, 25, 29-33, 35-43, and 45-52 stand
finally rejected and appealed (App. Br. 2-3).1 Claim 14 is representative and
read as follows:
Claim 14. A nut butter comprising:
coarse ground roasted nuts having nut particles ranging
in size from about 1.5 to about 3.5 mm;
said nut butter not containing hydrogenated oils;
said nut butter not containing stabilizers;
said nut butter not containing an emulsifier; and
said nut butter not containing a bulking agent.

The following rejections are before us for review:
(1) Claims 1, 26-8, 11-15, 18, 21, 22, 25, 29-33, 35-43, and 45-52,
under 35 U.S.C. § 103(a) as obvious over Edson3 or Rombauer4 combined
with admitted prior art (Spec. 7:15-22), Cammarn,5 Avera,6 Stockton,7 and
Yokoyama8 (Final Rejection 2-8 (September 10, 2009)); and

1 Appeal Brief filed January 5, 2010.
2 In the Examiner’s Answer, claim 5 was included in the first rejection (Ans.
3). While the Final Rejection mentioned claim 5 in the first rejection (see
Final Rejection 4), claim 5 was not among the claims included in the
rejection from which this appeal was taken (see id. at 2).
3 U.S. Patent No. 306,727 (filed September 3, 1884).
4 IRMA S. ROMBAUER AND MARION ROMBAUER BECKER, JOY OF COOKING
354 (1975).
5 U.S. Patent No. 5,417,999 (filed December 1, 1993).
6 U.S. Patent No. 3,615,590 (filed October 24, 1967). Note that the
Examiner did not list this document in the “Evidence Relied Upon” section
of the Answer (see Ans. 2).
7 U.S. Patent No. 1,395,934 (filed March 17, 1921).
8 U.S. Patent No. 4,814,195 (filed March 20, 1987).
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(2) Claim 5, under 35 U.S.C. § 103(a) as obvious over Edson or
Rombauer combined with admitted prior art (Spec. 7:15-22), Cammarn,
Avera, Stockton, Yokoyama, and Bolton9 (Final Rejection 8).
OBVIOUSNESS
ISSUE
The Examiner cites Edson and Rombauer as disclosing processes in
which peanuts are roasted and then ground to make peanut butter, and also
cites Appellant’s Specification as conceding that it is “known to make
natural peanut butters without adding hydrogenated fats or emulsifiers”
(Ans. 3). The Examiner finds that Rombauer’s recipe does not contain “any
of the ingredients which have been excluded from the claims. Nothing is
seen that the particle size of the paste would not have been coarse, since an
electric blender was used” (id.).
While the Examiner concedes that neither Edson nor Rombauer
discloses grinding to obtain a peanut butter that contains particles having the
claimed size, the Examiner nonetheless contends that an ordinary artisan
would have considered it obvious to “grind to a known particle size as
shown by Yokoyama et al. in the process of Edson or Rombauer especially
as Stockton teaches that the degree of oil separation can be prevented
partially by coarse grinding” (id. at 4).
Appellant argues that the Examiner’s obviousness rejections ignore a
number of significant and relevant teachings in the cited references that
would have directed an ordinary artisan away from the claimed invention
(App. Br. 11-16; see also Reply Br. 1-3). Appellant also argues that,

9 U.S. Patent No. 1,687,154 (filed August 31, 1926).
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because the teachings in the cited references are not compatible with each
other, an ordinary artisan would not have been prompted to combine the
references’ teachings in the manner advanced by the Examiner (App. Br. 16-
17).
Moreover, Appellant argues, while “Rombauer is the only reference
that does not contain an ingredient that is also not in Applicant's recited
claims,” the relevant disclosures of the remaining references would have
taught an ordinary artisan away from the claimed particle size (id. at 17).
Thus, Appellant urges:
None of the references teaches a nut particle range or that a
hydrogenated oil and/or a stabilizer and/or an emulsifier and/or
a bulking agent is not in a nut butter or nut butter spread. The
Examiner cannot pick and choose what each reference teaches
since clearly one skilled in the art would consider and learn
from each reference as a whole.

(Id. at 18.)
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellant does not argue the claims separately. We select claim 14 as
representative of the claims subject to the Examiner’s first ground of
rejection. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 5 is the only claim
subject to the Examiner’s second rejection (see Ans. 9).
Thus, in view of the positions advanced by Appellant and the
Examiner, the issue in this case is whether a preponderance of the evidence
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supports the Examiner’s conclusion that an ordinary artisan viewing the
cited prior art would have considered claims 14 and 5 prima facie obvious.
FINDINGS AND ANALYSIS
In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court reaffirmed that “when a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
known in the field, the combination must do more than yield a predictable
result.” Id. at 416.
The Court also indicated that, when determining whether the prior art
gives a reason for practicing the claimed subject matter, the analysis “need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id. at 418; see
also id. at 421 (“A person of ordinary skill is . . . a person of ordinary
creativity, not an automaton.”).
We have carefully considered all of Appellant’s arguments, but are
not persuaded that a preponderance of the evidence fails to support the
Examiner’s prima facie case of obviousness.
Claim 14 recites a nut butter that contains coarse ground roasted nuts.
The nut butter contains nut particles ranging in size from about 1.5 to about
3.5 mm. Claim 14 specifies that the resulting nut butter may not contain
hydrogenated oils, stabilizers, emulsifiers, or bulking agents.
As required by claim 14, Rombauer discloses a peanut butter
produced by roasting peanuts and then grinding them in a blender
(Rombauer 564). As Appellant concedes (App. Br. 17), Rombauer’s peanut
butter contains none of the ingredients excluded by claim 14.
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Thus, Rombauer’s peanut butter differs from claim 14’s nut butter
only in that Rombauer does not explicitly state that its peanut butter contains
coarse ground nuts with particles ranging in size from about 1.5 to about 3.5
mm.
We agree with the Examiner, however, that an ordinary artisan
following Rombauer’s teachings would have considered it obvious to
prepare a peanut butter that contained particles falling within the claimed
size range. As the Examiner initially notes, Rombauer says nothing
suggesting that “the particle size of the paste would not have been coarse,
since an electric blender was used” (Ans. 3).
Moreover, as the Examiner points out, Yokoyama discloses that
particles 1/8 of an inch in size, which undisputedly fall within the claimed
range, were known in the art to be suitably included in chunky-type peanut
butter products (Yokoyama, col. 9, ll. 44-46 (“Chunky type peanut butter
products in which peanut bits about ⅛″ in size are incorporated in a smooth
peanut butter-type base can also be made by this process”.).)
As the Examiner also points out, Stockton discloses that a coarser
grind also avoids the problem of oil separation from peanut butter: “[t]his
difficulty of oil separation being foreseen may in only a very partial degree
be prevented by coarse grinding; for the finer the grinding of the kernels the
more pronounced the tendency to gravitational separation” (Stockton, p. 1,
ll. 89-94).
Given these teachings, we agree with the Examiner that an ordinary
artisan practicing Rombauer’s method, advised by Yokoyama that chunky
style peanut butters suitably contained particles of ⅛ inch in size, and further
advised that coarser grinds suffered from less oil separation, would have
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been prompted to produce a peanut butter that contained particles ranging in
size from about 1.5 to about 3.5 mm. We therefore agree that the nut butter
recited in claim 14 would have been obvious to an ordinary artisan.
We note, as Appellant argues, that Stockton discloses that more
coarsely ground peanut butter is less desirable than smoother peanut butter
(Stockton, p. 1, ll. 94-97 (“But coarse ground peanut butter is less desirable.
It is mealy and does not spread well, and furthermore it is less readily
digested than fine ground butter.”)).
We also note that Yokoyama discloses that larger particles are
generally less preferred in peanut butter (see, e.g., Yokoyama, col. 3, l. 65,
through col. 4, l. 2 (“[L]arger particle sizes are perceived by the sensory
panel as imparting a “grittiness” to the peanut butter product, an especially
undesirable feature for a food product that ideally is smooth in texture.
Consequently, smaller particles are desirable for a perception of a creamy
and smooth mouthfeel.”)).
We do not agree, however, that these teachings would have dissuaded
an ordinary artisan from preparing a peanut butter encompassed by claim 14.
Claim 14 does not require all of the particles to be within the claimed range,
but instead encompasses peanut butters in which only some of the particles
meet the claim’s requirement.
Thus, as noted above, Yokoyama discloses that the presence of a
certain amount of particles having the claimed particle size was in fact
desirable in chunky style peanut butters (see id. at col. 9, ll. 44-46).
Moreover, Stockton’s teaching that a coarser grind might not have been the
most preferred option does not demonstrate that a coarser grind would have
been unobvious, given the disclosed advantage of less oil separation.
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In this regard the Federal Circuit has advised:
[O]ur case law does not require that a particular combination
must be the preferred, or the most desirable, combination
described in the prior art in order to provide motivation for the
current invention. “[T]he question is whether there is
something in the prior art as a whole to suggest the desirability,
and thus the obviousness, of making the combination,” not
whether there is something in the prior art as a whole to suggest
that the combination is the most desirable combination
available. See In re Beattie, 974 F.2d [1309,] 1311 (internal
quotation omitted; emphasis added). . . . [A] finding that the
prior art as a whole suggests the desirability of a particular
combination need not be supported by a finding that the prior
art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination.

In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004).
We are also not persuaded that the cited references teach away from
the nut butter recited in claim 14, nor are we persuaded that the Examiner
combined teachings from the references that would have been viewed as
antithetical to each other. We do agree with Appellant, however, that when
evaluating claims for obviousness, “the prior art as a whole must be
considered. The teachings are to be viewed as they would have been viewed
by one of ordinary skill.” In re Hedges, 783 F.2d 1038, 1041 (Fed. Cir.
1986).
Thus, “in a section 103 inquiry, ‘the fact that a specific [embodiment]
is taught to be preferred is not controlling, since all disclosures of the prior
art, including unpreferred embodiments, must be considered.’” Merck &
Co., Inc. v. Biocraft Laboratories, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).
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Nonetheless, while we recognize that the thrust of Yokoyama’s
disclosure is preparation of a low calorie peanut butter by incorporating
significant percentages of a bulking agent (see Yokoyama, abstract), we are
not persuaded that an ordinary artisan would have failed to recognize from
Yokoyama the suitability, in general, of 1/8 inch particles in chunky style
peanut butters. Similarly, while Stockton prefers preparing smooth peanut
butters that include hydrogenated fats (see, e.g., Stockton, p. 2, ll. 30-53), an
ordinary artisan would nonetheless have recognized that providing a coarser
grind was one method, albeit a less desirable one, of inhibiting oil separation
(id. at p. 1, ll. 89-94).
Likewise, while it may be true that Cammarn and Avera also teach the
desirability of stabilizers and additional processing steps when preparing
peanut butter compositions, we are not persuaded that those references
would have suggested to an ordinary artisan that Rombauer’s method of
making peanut butter by simply grinding roasted peanuts was undesirable, or
that it was undesirable for a peanut butter so produced to contain particles of
a size known to be suitable in chunky style peanut butters.
In sum, for the reasons discussed, Appellant’s arguments do not
persuade us that the Examiner failed to make a prima facie case of
obviousness with respect to claim 14. As Appellant points to no secondary
considerations of nonobviousness, such as unexpected results, which come
from practicing the claimed invention, we affirm the Examiner’s
obviousness rejection of claim 14.
Claims 1, 6-8, 11-13, 15, 18, 21, 22, 25, 29-33, 35-43, and 45-52 fall
with claim 14. See 37 C.F.R. § 41.37(c)(1)(vii).
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The Examiner also rejected claim 5 under 35 U.S.C. § 103(a) as
obvious over Edson or Rombauer combined with admitted prior art (Spec.
7:15-22), Cammarn, Avera, Stockton, Yokoyama, and Bolton (Final
Rejection 8). Claim 5 reads as follows:
Claim 5. [A manufacturing process for producing nut butter
comprising:
roasting nuts;
grinding the roasted nuts to a coarse consistency paste
having nut particles ranging in size from about 1.5 to about 3.5
mm to produce a nut butter;
the resulting nut butter not containing hydrogenated oils;
the resulting nut butter not containing stabilizers;
the resulting nut butter not containing an emulsifier; and
the resulting nut butter not containing a bulking agent,]
the process . . . further comprising blending at least one
ingredient selected from the group consisting of spices, herbs,
dried fruits, extracts of same, salt, and sugar, with the nut paste
during grinding.

The Examiner cited Bolton as evidence that an ordinary artisan would
have considered it obvious to include additional “known ingredients to the
peanut paste in the process of the combined references” (Ans. 9). The
Examiner also cited Stockton as evidence that it was “known [in the art] to
add salt in the grinding step” (id.).
While Appellant does not direct separate argument specifically to this
rejection, Appellant urges that “Bolton teaches away from Applicant’s
recited claims by teaching adding water to a nut butter as well as adding
cucumber pickles to the nut butter” (App. Br. 16). We are not persuaded.
As the Examiner points out, Stockton discloses that as “peanut butter
is commonly made the finely ground common salt in the proportion of about
1.8% is mechanically fed into the grinder along with the peanuts and fairly
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uniformly” (Stockton, p. 2, ll. 62-66). Given this teaching, we agree with
the Examiner that an ordinary artisan would have considered it obvious to
add salt to the peanuts ground in Rombauer’s process, particularly given
Rombauer’s express teaching to add salt to taste when using unsalted nuts
(Rombauer 564). As this is all that claim 5 requires, we also affirm the
Examiner’s obviousness rejection of claim 5.

SUMMARY
We affirm the Examiner’s rejection of claims 1, 6-8, 11-15, 18, 21,
22, 25, 29-33, 35-43, and 45-52, under 35 U.S.C. § 103(a) as obvious over
Edson or Rombauer combined with admitted prior art (Spec. 7:15-22),
Cammarn, Avera, Stockton, and Yokoyama.
We also affirm the Examiner’s rejection of claim 5, under 35 U.S.C. §
103(a) as obvious over Edson or Rombauer combined with admitted prior art
(Spec. 7:15-22), Cammarn, Avera, Stockton, Yokoyama, and Bolton.

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).

AFFIRMED

FCP

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