Ex Parte Diekhaus

Patent Trials and Appeals Board

Apr 5, 2019

14692288 - (D) (P.T.A.B. Apr. 5, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/692,288 04/21/2015
28249 7590 04/05/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE405
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Martin Diekhaus
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.
1507-110 4709
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
04/05/2019 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 ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR TIN D IEKHAUS
Appeal2018-005998
Application 14/692,288
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2018-005998
Application 14/692,288
STATEMENT OF THE CASE
Appellant 1 appeals under 35 U.S.C. § 134 from a rejection2 of claims
1-9, 13, and 14. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
CLAIMED SUBJECT MATTER
The claims seek to provide a method to produce a cream with
improved storage stability. Spec. ,r 25. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method fix producing oil-in-water emulsions having an
average particle size of less than 3 µm, comprising the following
steps:
(a) subjecting an oil-in-water emulsion to a frrst high-
pressure homogenization at a temperature in the range from
about 50°C to about 100°C,
(b) heating the product obtained in step a) to about 135°C
up to about 150°C,
( c) cooling the product obtained in step b) to a temperature
below 100°C,
( d) subjecting the product obtained in step c) to a second
high-pressure homogenization at a temperature in the range from
about 50°C to about 80°C and a pressure in the range from about
60 to about 100 bar,
( e) cooling the product obtained in step d) to a temperature
from about 0°C to about 10°C, wherein the cooling temperature
is reached in a time interval from 1 to 10 seconds, and
(f) packaging the product obtained in step e ).
1 The real party in interest is identified as "DMK Deutsches Milchkontor
GmbH." Appeal Brief of November 29, 2017 ("Br."), 3.
2 Final Office Action of May 30, 2017 ("Act."). In this opinion, we also refer
to the Examiner's Answer of March 20, 2018 ("Ans."). No Reply Brief was
filed.
2
Appeal 2018-005998
Application 14/692,288
Claims Appendix (Br. 13).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Swanson
Ranjith
us 3,117,879
us 4,798,731
REJECTIONS
Jan. 14, 1964
Jan. 17, 1989
The Examiner rejects claims 1-9, 13, and 14 under35 U.S.C. 103 as
unpatentable over Swanson and Ranjith. Final Act. 2.
OPINION
In rejecting claim 1, the Examiner acknowledges that "Swanson fails
to teach the homogenization temperatures or pressures and the cooling
temperature and time." Final Act. 3. The Examiner, however, finds that
given Ranjith's teaching of a cooling rate of 8.8 °C per second and
Swanson's fmal temperature of 18 °C, "it would have been obvious to cool
down to temperatures such as 0-10 C ( common refrigeration temperatures)
as claimed in order to reduce microbial growth." Id. at 4.
To establish a prima facie case of obviousness, the Patent Office must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art. In re Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988).
The Patent Office '"bears the initial burden ... of presenting a primafacie
case ofunpatentability. "' In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992).
3
Appeal 2018-005998
Application 14/692,288
In this case, the record before us does not show that the claim
limitation of"cooling the product obtained in step d) to a temperature from
about 0°C to about 10°C" is taught or suggested by the prior art. Swanson
teaches cooling the cream product to a fmal temperature of about 65°F ( or
l 8°C) before canning (Swanson 2:18-20) which is outside the recited
temperature range. The record before us lacks a sufficient explanation as to
why a skilled artisan would have arrived at the recited temperature range
based on the teachings as supported by the evidence in the record. We
accordingly decline to sustain the rejection. 3
DECISION
The Examiner's decision is reversed.
REVERSED
3 As to other issues raised in the Appeal Brief, we decline to reach them as
moot as a result of our reversal.
4