Ex Parte Domingues

Patent Trials and Appeals Board

Jun 17, 2019

14511952 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/511,952 10/10/2014
106306 7590 06/19/2019
DIEDERIKS &WHITELAW, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
David J. Domingues
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.
7932US01 3417
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
mail@dwpatentlaw.com
gmi.mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. DOMINGUES
Appeal2018-005437
Application 14/511,952
Technology Center 1700
Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-7, 9, 10, 12, and 14--20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 The real party in interest is identified as "General Mills Inc." Appeal Brief
of January 22, 2018 ("App. Br."), 4.
2 Final Office Action of July 24, 2017 ("Final Act."). In this Opinion, we
also refer to the Examiner's Answer of March 9, 2018 ("Ans.") and the
Reply Brief of April 26, 2018 ("Reply Br.").
Appeal2018-005437
Application 14/511,952
CLAIMED SUBJECT MATTER
The Specification describes certain "practical ready-to-use packaged
batter products." Spec. 2:22. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A packaged emulsion product comprising:
a sealed package having a headspace, wherein the
headspace contains air prior to the sealed package being initially
opened;and
an oil-in-water emulsion in the sealed package, the
emulsion including flour, sugar, chemical leavening agent, oil,
water, emulsifier, and surface-active foaming agent comprising
organic acid esters of mono- or di-glycerides of fatty acids, the
foaming agent being dispersed throughout the emulsion, the
emulsion having a density of at least about 0.75 grams per cubic
centimeter, wherein the organic acid is acetic acid, lactic acid, or
a combination thereof, wherein the emulsion maintains the form
of an emulsion after a refrigerated storage period of four weeks,
and wherein the emulsion has a yield point of not greater than 20
Pascals.
Claims Appendix (App. Br. 17).
REFERENCES
The prior art references relied upon by the Examiner in the Final
Rejection are:
Rubio
Aliberto
Wu
N arayanaswamy
Hahn
Stanton
O'Connor
Koike
Li
us 3,653,915
us 4,504,510
us 5,882,712
us 6,165,524
US 6,217,929 Bl
US 2007 /0042099 Al
US 2007 /0065554 Al
US 7,468,395 B2
US 2011/0129575 Al
2
Apr. 4, 1972
Mar. 12, 1985
Mar. 16, 1999
Dec. 26, 2000
Apr. 17, 2001
Feb.22,2007
Mar. 22, 2007
Dec. 23, 2008
June 2, 2011
Appeal2018-005437
Application 14/511,952
REJECTI0NS 3
Claims 1, 2, 4, 5, 7, 12, and 15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Aliberto in view of Stanton and Narayanaswamy.
Final Act. 2. 4
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view of
Rubio. Final Act. 6.
Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view of Wu.
Final Act. 7.
3 In the Appeal Brief, Appellant states that "the rejections of claims 1, 2, 5,
and 14 based on Hahn and Narayanaswamy were withdrawn and claim 1 is
now rejected based on Li in addition to Aliberto, Stanton and
Narayanaswamy." App. Br. 6. Appellant also provides a list of "grounds of
rejection[ s ]" modifying at least some of the grounds of rejections entered by
the Examiner. Id. Our record does not indicate that the Examiner has
withdrawn or modified any of the rejections provided in the decision from
which this appeal arises. See Ans. 3-14 (providing the grounds of rejections
for the claims at issue). Our Decision is solely based on the rejections in
"the decision of the primary examiner" as required by 35 U.S.C. § 134.
4 Appellant states that an amendment to claim 1 has been entered and as a
result, claim 1 now stands rejected based on Aliberto, Stanton,
Narayanaswamy, and Li. See App. Br. 6, 7-8 (citing Final Act. 8 for the
teaching of Li for dependent claim 8 which Appellant states has been
incorporated into claim 1). The rejections of claims 3, 6, 9, 10, and 12
which depend from claim 1 also reflect this amendment. App. Br. 6--7, 11-
13. The issues on appeal do not involve the teachings of Li and for the
purpose of this appeal, we review the rejections appealed as presented in the
Final Action dated July 24, 2017 as well as the Examiner's Answer. See
Final Act. 2-14; Ans. 3-14.
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Application 14/511,952
Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view of
Kioke. Final Act. 8.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view of
O'Connor. Final Act. 9.
Claims 1, 2, 5, 14, and 16-20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hahn in view ofNarayanaswamy. Final Act. 9.
OPINION
We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections")). After having
considered the evidence presented in this Appeal and each of Appellant's
contentions, we are not persuaded that Appellant identifies reversible error,
and we affirm the Examiner's § 103 rejections for the reasons expressed in
the Final Office Action and the Answer. We add the following primarily for
emphasis.
Rejection of Claims 1, 2, 5, and 14 over Hahn and Narayanaswamy
The Examiner rejects claims 1, 2, 5, and 14 under 35 U.S.C. § 103 as
being unpatentable over Hahn in view ofNarayanaswamy. Final Act. 9-11;
Ans. 10-11. Appellant does not appeal this rejection. App. Br. 7, 14
(arguing only that the "rejection of claims 16-20" over Hahn in view of
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Application 14/511,952
Narayanaswamy should be reversed). In an Advisory Action dated
November 17, 2017, the Examiner states that certain amendments "if entered
would overcome the rejections of the claims under Hahn." Advisory Action
2. The Examiner's Answer, however, reiterates that claims 1, 2, 5, 14, and
16-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Hahn
in view ofNarayanaswamy. Ans. 10. Because the record does not clearly
indicate that the rejection of claims 1, 2, 5, and 14 over Hahn and
Narayanaswamy as indicated in the Final Rejection and the Examiner's
Answer has been withdrawn, and because Appellant does not appeal the
rejection, we summarily affirm the rejection.
Rejection of Claim 1 over Aliberto, Stanton, and Narayanaswamy 5
Appellant argues that the Examiner reversibly erred in rejecting claim
1 because the prior art does not teach or suggest that "the emulsion
maintains the form of an emulsion after a refrigerated storage period of four
weeks." App. Br. 8. Appellant does not dispute Aliberto provides that the
prior art pancake batter "can be held in a refrigerator for more than 10 days
without separation .... " Reply Br. 3 ( citing Aliberto 1 :49-54 ); see Aliberto
1 :48-50. Appellant, however, argues that the prior art teaching of "'more
than 10 days' suggests that the batter is not capable of being stored for 15 or
more days." App. Br. 8. Appellant's assertion lacks persuasive supporting
evidence and we are, therefore, unpersuaded that the Examiner reversibly
erred in evaluating the prior art reference. See Johnston v. IVAC Corp., 885
5 Appellant does not present separate arguments for the rejection of claims 2,
4, 5, 7, and 15 based on Aliberto, Stanton, and Narayanaswamy and they
stand or fall with claim 1 for this rejection. App. Br. 10 ("Claims 2, 4, 5, 7
and 15 will not be argued separately but will stand or fall with claim 1.");
see also 37 C.F.R. § 4I.37(c)(1)(iv)(2013).
5
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Application 14/511,952
F.2d 1574, 1581 (Fed. Cir. 1989) ("Attorneys' argument is no substitute for
evidence."). In particular, there is no dispute that four weeks falls within the
scope of "more than 10 days." Therefore, the burden is on Appellant to
show that "more than 10 days" suggests a "batter not capable of being stored
for more than 15 days." Appellant has not met this burden.
Appellant's remaining arguments regarding Aliberto are unpersuasive
because they are not based on limitations in the claim. More specifically,
Appellant argues that claim 1 "is intended for home use" and has a lower
water content than that of Aliberto. App. Br. 8. Because claim 1 does not
recite these features, they cannot impart patentability.
We are unpersuaded that Narayanaswamy's disclosure of less than 4%
residual oxygen in a batter container teaches away from "a sealed package
having a headspace, wherein the headspace contains air prior to the sealed
package being initially opened" as recited in claim 1.
A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. . . . [I]n general, a reference will teach
away if it suggests that the line of development flowing from
the reference's disclosure is unlikely to be productive of the
result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Appellant does not explain
why a skilled artisan would have been discouraged from the recited
headspace which contains air (which includes oxygen) based on the prior art
teaching of a container having some oxygen. We further note that Appellant
does not dispute the Examiner's finding that "Stanton discloses storing
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Application 14/511,952
batter in a package where there is air in the headspace .... " Compare App.
Br. 8-11, with Final Act. 3 ( citing Stanton ,r 4 7).
As to Appellant's argument that the prior art does not teach or suggest
a foaming agent, we note that Appellant does not dispute the Examiner's
finding that "Narayanaswamy discloses that the combination of emulsifiers
gives good dispersion of gas cells (foaming)". Therefore, we are not
persuaded that Narayanaswamy does not teach or suggest a foaming agent.
Compare Ans. 17, with Reply Br. 2-5. We are, likewise, not persuaded by
Appellant's argument that if" one were to include an emulsifier from
Narayanaswamy in the Examiner's combination, logically this emulsifier
would replace Aliberto' s emulsifier" (App. Br. 10) because of a lack of
factual support. "Counsel's argument cannot take the place of evidence
lacking in the record." Estee Lauder Inc. v. L 'Orea!, S.A., 129 F.3d 588, 595
(Fed. Cir. 1997).
Rejection of Claim 12 over Aliberto, Stanton, and Narayanaswamy
Claim 12 depends from claim 1 and additionally recites "wherein the
package is re-sealable and contains the edible oil-in-water emulsion and less
than 20 percent headspace."
Appellant faults the Examiner for failing to provide a factual basis in
support of the teaching of "less than 20 percent headspace." App. Br. 10. It
is long established that where the only difference between the prior art and
the claims was a recitation of relative dimensions of the claimed device and
a device having the claimed relative dimensions would not perform
differently than the prior art device, the claimed device is not patentably
distinct from the prior art device. Gardner v. TEC Syst., Inc., 725 F .2d
1338, (Fed. Cir. 1984). Given that the recited "less than 20 percent
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Application 14/511,952
headspace" is no more than a dimension of the headspace, we are not
persuaded that the Examiner reversibly erred in rejecting claim 12.
Rejection of Claim 3 over Aliberto, Stanton, Narayanaswamy, and Rubio
Claim 3 depends from claim 1 and further recites: "wherein the fatty
acids include fatty acids having from 8 to 12 carbon atoms."
The Examiner cites as support Rubio' s teaching of organic acid esters
of mono glyceride or diglycerides having 9 to 22 carbon atoms as well as
Narayanaswamy's teaching of a batter composition having organic acid
esters of monoglycerides or diglycerides of fatty acids. Final Act. 6 ( citing
Rubio 2: 66-7 5), 3 ( citing N arayanaswamy 7: 1-10). Appellant's argument,
directed solely to Rubio, does not address the prior art teaching as a whole
including Examiner's findings based on Narayanaswamy.
"Non-obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). We are not persuaded that the
Examiner reversibly erred here.
Rejection of Claim 6 over Aliberto, Stanton, Narayanaswamy, and Wu
Claim 6 depends from claim 1 and the dispositive issue on appeal is
whether the prior art teaches or suggests a packaged product having "from 9
to 13 weight percent non-sugar water-activity reducing agent." Appellant
argues that a skilled artisan would not have included the recited water-
activity reducing agent to the batter in Aliberto "since the batter of Aliberto
is not intended for long-term storage." App. Br. 13. As with our analysis
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Application 14/511,952
for claim 1, Appellant does not support this argument with adequate factual
evidence and, therefore, does not persuade us of reversible error.
Rejection of Claim 9 over Aliberto, Stanton, Narayanaswamy, and Kioke
Claim 9 depends from claim 1 and further recites: "wherein the
emulsion includes emulsifier selected from the group consisting of mono-
glycerides, di-glycerides, and combinations thereof, the emulsifier having an
HLB of at least about 6."
In arguing for the patentability of claim 9, Appellant repeats the
argument that a skilled artisan "would have selected an emulsifier from
Aliberto or an emulsifier from Narayanaswamy" but not both. App. Br. 13.
Because Appellant's argument is not supported by persuasive factual
evidence, we are unpersuaded that the Examiner reversibly erred here.
Rejection of Claim 10 over Aliberto, Stanton, Narayanaswamy, and
O'Connor
Claim 10 depends from claim 1 and further recites: "wherein the
emulsion includes glucose oxidase."
Appellant faults the Examiner for engaging in impermissible hindsight
in analyzing the claim. App. Br. 13. Appellant argues that because the
"batter of Aliberto is not intended for long-term storage," the Examiner's
rationale is flawed that a skilled artisan would "add glucose oxidase to the
composition of Aliberto as in O'Connor in order to remove oxygen from the
package and increase the shelf life." Id. ( citing Final Act. 9). Even if
Appellant's assertion was supported by factual evidence that Aliberto' s
batter is not intended for long-term storage, the argument does not
sufficiently explain why the Examiner engaged in impermissible hindsight
here.
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Application 14/511,952
Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill at the time the claimed invention was made
and does not include knowledge gleaned only from applicant's
disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). We note that
hindsight occurs when a person of ordinary skill in the art is imbued with
knowledge taught only by the inventor of the challenged patent. See W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 (Fed. Cir. 1983).
By contrast, hindsight does not occur when a person of ordinary skill in the
art is imbued with knowledge that "was within the level of ordinary skill at
the time the claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure." See In re McLaughlin, 443 F.2d
at 1395.
Here, Appellant has not cited to any knowledge taught only by the
inventor of the challenged patent in the Examiner's rationale. See W.L. Gore
& Assocs., Inc., 721 F.2d at 1553. Instead, the knowledge relied on for this
rejection comes from O'Connor. Accordingly, we are not persuaded that the
Examiner engaged in impermissible hindsight in analyzing claim 10.
Rejection of Claims 16 and 18-20 over Hahn and Narayanaswamy
Appellant repeats the argument that Narayanaswamy's disclosure of
less than 4% residual oxygen in a batter container is a teaching away from
the limitations of claim 16. 6 App. Br. 15. As discussed supra, we are
6 Appellant does not present separate arguments for the rejection of claims
18-20 based on Hahn and Narayanaswamy and they stand or fall with claim
16 for this rejection. App. Br. 15 ("Claims 18-20 will not be argued
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unpersuaded by this argument. We are, likewise, not persuaded by the
argument that if "one were to include an emulsifier from Narayanaswamy in
the Examiner's combination, logically this emulsifier would replace Hahn's
emulsifier" because it is unsupported by evidence. Id. We accordingly,
sustain the rejection of claim 16 based on Hahn and Narayanaswamy.
Rejection of Claim 17 over Hahn and Narayanaswamy
Claim 17 depends from claim 16 and the dispositive issue on appeal is
whether the combined prior art teaches or suggests "mixing the emulsion
comprising the oil, water, and emulsifier with the foaming agent using low
shear to form the edible oil-in-water emulsion having a density in a range
from 0.78 to about 1.0 grams per cubic centimeter."
Appellant's argument that "Narayanaswamy only discusses
emulsifiers" and not a foaming agent has been addressed and found
unpersuasive, supra. More specifically, Appellant does not dispute the
various findings of the Examiner. Compare Ans. 20 (finding, for example,
that "Narayanaswamy discloses that the combination of emulsifiers gives
good dispersion of gas cells (foaming)," that "Hahn discloses that the order
of mixing the ingredients is not critical to forming a shelf stable, refrigerated
batter," and that "the emulsifier and foaming agent are synonymous
according to Appellant[' s] claim with a specific emulsifier was recited as the
foaming agent and as discussed in the N arayanaswamy reference"), with
Reply Br. 2-5. We, therefore, are unpersuaded that reversible error has been
identified here.
separately but will stand or fall with claim 16."); see also 37 C.F.R.
§ 4I.37(c)(1)(iv)(2013).
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DECISION
The Examiner's decision 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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