Ex Parte Dolores-Martinez-Serna Villagran et al

Patent Trial and Appeal Board

Oct 2, 2012

10913002 (P.T.A.B. Oct. 2, 2012)

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.
10/913,002 08/06/2004 Maria Dolores-Martinez-Serna Villagran 9337M 4101
27752 7590 10/03/2012
THE PROCTER & GAMBLE COMPANY
Global Legal Department - IP
Sycamore Building - 4th Floor
299 East Sixth Street
CINCINNATI, OH 45202
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/03/2012 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte MARIA DOLORES-MARTINEZ-SERNA VILLAGRAN,
MARKO STOJANOVIC, DAVID CAMMIADE GRUBER, AND
DAVID SHANG-JIE CHANG
________________

Appeal 2011-005335
Application 10/913,002
Technology Center 1700
________________

Before TERRY J. OWENS, MARK NAGUMO, and
KAREN M. HASTINGS, Administrative Patent Judges.

NAGUMO, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-005335
Application 10/913,002

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A. Introduction1
Maria Dolores-Martinez-Serna Villagran, Marko Stojanovic,
David Cammiade Gruber, and David Shang-Jie Chang (“P&G”) timely
appeal under 35 U.S.C. § 134(a) from the final rejection2 of claims 5, 9,
and 10, which are all of the pending claims. We have jurisdiction.
35 U.S.C. § 6. We REVERSE.
The subject matter on appeal relates to dough compositions
comprising rice flour. According to the 002 Specification, rice flour is
available globally, and has a mild flavor that makes it suitable for use in
variously flavored and seasoned snacks. (Spec. 1, ll. 31-34.) Rice flour,
however, is said to lead to processing and product quality issues. (Id. at 2,
ll. 1-3.) According to the disclosure, this is due to the relatively high
gelatinization temperatures of rice starch, compared to other starches
available for use in snacks. (Id. at ll. 5-7.) As a result, it is difficult to cook
rice flour such that the starch can be readily processed. (Id. at ll. 7-8.)
A preferred method of processing gelatinized rice flour is extrusion, which
said to provide “the cooking conditions required for the starch of the rice
flour to completely cook, resulting in complete gelatinization and high levels
of dextrinization of the starch—i.e., starch degradation.” (Id. at 7, ll. 16-19.)

1 Application 10/913,002, Rice Flour Compositions, filed 6 August 2004,
claiming the benefit of a provisional application filed 6 August 2003. The
specification is referred to as the “002 Specification,” and is cited as “Spec.”
The real party in interest is listed as The Procter & Gamble Company
(“P&G”). (Appeal Brief, filed 23 August 2010 (“Br.”), 1.)
2 Office action mailed 28 April 2010 (“Final Rejection”; cited as “FR”).
Appeal 2011-005335
Application 10/913,002

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The claimed doughs are said to provide a rice flour composition that is
suitable for making fabricated snack products. (Id. at 2, ll. 9-10.)
Representative Claim 5 reads:
A dough composition for making a fabricated snack product,
comprising:
(I) from about 60% to about 75%, by weight, of a dry blend,
comprising:
(a) from about 2% to about 100%, by weight, rice flour
composition that has been extruded, parboiled and
combinations thereof,
wherein the rice flour composition comprises long
grain rice flour, medium grain rice flour, or
combinations thereof,
such that the resulting rice flour composition is
from about 75% to about 100% gelatinized
and has
a WAI of from about 2.6 to about 9 g of water/g,
a Peak Viscosity from 10 RVU to 110 RVU, and
a Final Viscosity from 60 RVU to 110 RVU;
b) from about 0% to about 98%, by weight,
starch-based flours selected from the group consisting
of tapioca flour, oat flour, wheat flour, rye flour, non-
masa corn flour, and mixtures thereof;
(c) potato flakes;
wherein the dry blend has
a WAI ranging between about 5.5 and about 8.5,
a Peak Viscosity ranging between about 60 RVU and about 115 RVU,
and
a Final Viscosity ranging between about 75 RVU and 120 RVU;
(II) from about 25% to about 40%, by weight, of added water;
(III) from about 0% to about 15%, by weight, optional ingredients.
(Claims App., Br. 11; indentation, paragraphing, and emphasis added.)
Appeal 2011-005335
Application 10/913,002

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The Examiner maintains the following ground of rejection:3, 4
Claims 5, 9, and 10 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Cohen5 and Gorski.6
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
Initially, we note that the Examiner offers two theories of rejection
based on each reference in view of the other. (Ans. 4-5, and 5-7,
respectively.) As both theories of rejection are based on the same flawed
theory of inherency, we need not address them separately.
P&G argues, inter alia, that neither Cohen nor Gorski discloses or
suggests either a rice flour (Br. 6, l. 29, to 9, l. 24) or a rice flour blend
(id. at 8, l. 25 to 9, l. 25) having the respectively recited values of WAI, Peak
Viscosity, or Final Viscosity.7

3 Examiner’s Answer mailed 27 October 2007 (“Ans.”).
4 The Examiner withdrew a rejection for lack of enablement under
35 U.S.C. § 112(1). (Ans. 3, 2d full para.)
5 Deborah W. Cohen, Soy-Based Dough and Products Made from the
Dough, U.S. Patent 6,479,089 B2 (2002).
6 Richard Gorski, Rice-Based Snack Chip and Method of Making Same,
U.S. Patent 7,189,424 B2 (13 March 2007).
7 WAI is the water absorption index, described in the 002 Specification at
pages 12-13. Measurements of the Peak and Final viscosities are described
at pages 13-14. Details of the measurements and units are not required to
resolve this appeal.
Appeal 2011-005335
Application 10/913,002

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In this regard, the Examiner finds only that “Gorski discloses the rice
flour is fully gelatinized; thus, it is inherent the degree of gelatinization is
within the range claimed. The WAI and viscosity result from the rice flour
being precooked because the specification does not disclose any other means
for affecting the WAI and viscosity.” (Ans. 5, ll. 5-8; cf. id. at 6, ll. 14-16,
and id. at 8, ll. 5-7.)
The use of inherency in obviousness rejections in which an allegedly
inherent property arises from, or, as here, must be maintained after the
combination of substances taught in two different references, is rarely if ever
appropriate. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ 1955, 1957 (Fed.
Cir. 1993) (“That which may be inherent is not necessarily known.
Obviousness cannot be predicated on what is unknown.”). In this case, the
claimed dough comprises blends of materials having similar properties (e.g.,
rice flour, other flours, and potato flakes; or rice flour and potato flakes) that
reasonably would be expected to contribute to the WAI and to the Peak and
Final Viscosities. It is by no means clear how these properties of the dry
blend can “inherently” and thus necessarily be within the ranges recited in
claim 5. The Examiner has not come forward with an explanation of why
this should be so. Moreover, it has not escaped our attention that the
Examiner found that, “[a]s applicant pointed out in the remark and as shown
in the article submitted by applicant, different processing conditions result in
different WAI and viscosity.” (FR 2, ll. 13-15; emphasis added.8) This
finding, which appears to be consistent with the evidence of record, cuts

8 After the Brief was field, the Examiner withdrew, without explanation, the
enablement rejection. (Ans. 3.)
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Application 10/913,002

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against the finding of inherency for the properties of both the rice flour and
the dry blend. It has long been the law that “[i]nherency . . . may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient.” In re
Oelrich, 666 F.2d 578, 581 (CCPA 1981) (internal quotation and citation
omitted).
We conclude that P&G has demonstrated harmful error in the
rejection maintained by the Examiner.9
C. Order
We REVERSE the rejection of claims 5, 9, and 10 under
35 U.S.C. § 103(a) in view of the combined teachings of Cohen and Gorski.
REVERSED
tc

9 We find the declaration filed by Dr. Villagran unpersuasive for lack of
substantial supporting evidence. Rohm and Haas Co. v. Brotech Corp.,
127 F.3d 1089, 1092 (Fed. Cir. 1997) (“Nothing in the rules or in our
jurisprudence requires the fact finder to credit the unsupported assertions of
an expert witness.”)
We find further that P&G has not submitted a copy of Kadan, cited in
the Brief (Br. 6-7) in the Evidence Appendix to the principal Brief on
appeal, as required by 37 C.F.R. § 41.37(c)(1)(ix) (2007), in force when the
brief was filed. Accordingly, we decline to discuss that reference.