Ex Parte Enz et al

Board of Patent Appeals and Interferences

Nov 5, 2008

10369213 (B.P.A.I. Nov. 5, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JEFFREY ENZ, JEAN LOUISE WEBER,
LISA KOPAS-LANE, VICTOR HUANG and JALAYNE MARTIN
__________

Appeal 2008-4481
Application 10/369,213
Technology Center 1700
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Decided: November 5, 2008
__________

Before DEMETRA J. MILLS, ERIC GRIMES, and JEFFREY N.
FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).

Appeal 2008-4481
Application 10/369,213

The following claim is representative.
1. A refrigerated, unbaked dough product comprising:
a) a leavened dough;
b) a high moisture filling at least partially enrobed in the leavened dough
comprising
i) water present as about 35% to about 60% by weight of the filling,
and
ii) gelling agent or thickening agent,
said filling having a water moisture to fat content ratio (if fat is present)
greater than or equal to 1.8, wherein the filling has an uncooked 20° C. G'
value of at least about 4,000 pascals, and a 80° C. G' value of at least about
1000 Pa; and wherein the water activity of the filling is at least about 0.85;
said dough product being at a temperature from about 0°C. to about 10°C.,
and being disposed within a container at a pressure greater than one
atmosphere.

Cited Reference
Gonzalez et al. (“Gonzalez”) US 6,146,672 Nov. 14, 2000

Grounds of Rejection
1. Claims 1-26 stand rejected under 35 U.S.C. 103(a) as being obvious
over Gonzalez in view of Appellants’ admission.

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Application 10/369,213

ISSUE
The Examiner contends that Gonzalez expressly or inherently
discloses the refrigerated dough product with a water activity and G' value
falling within the claimed range. (Ans. 9.)
Appellants contend that they have overcome the obviousness rejection
with the contents of the Enz Declaration, and that Gonzalez Examples do not
inherently disclose the claimed water activity and G' value. (App. Br. 4.)
Does Gonzalez inherently disclose a product having the G' value and
water activity of the claimed product?

FINDINGS OF FACT
1. The present invention relates to refrigerated dough and dough
filling. (Spec. 1.)
2. Rheological properties of dough include the elastic modulus (G').
(Spec. 4.)
3. According to the Specification, gelling agents in the dough filling
may be selected from methylcellulose and hydroxypropylcellulose (Spec. 7)
and may be present in an amount of about 0.1 to about 10% by weight (Spec.
6).
4. According to the Specification, water may comprise 35-60% of the
dough filling. (Spec. 10.)
5. Water activity of a filling or dough is the ratio of the vapor
pressure of the filling or dough, respectively, to the vapor pressure of pure
water at any given temperature. (Spec. 9.)

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Application 10/369,213

6. Gonzalez discloses water-in-oil emulsion fillings for dough
products. (Gonzalez, col. 1, ll. 39-48.)
7. The filling comprises 5-60% water, 15-60% fat and 0.1-1.5%
stabilizer. (Gonzalez, col. 1, ll. 39-48.)
8. The stabilizer can be selected from ingredients such as
pregelatinized starch, xanthan gum, methylcellulose, and hydroxypropyl-
methylcellulose. (Gonzalez, col. 7, l. 6 to col. 8, l. 11.)
9. The dough product can be a doughnut, pastry, biscuit, scone, bagel,
cookie, bread stick and the like. The dough product can also be unbaked
refrigerated dough. (Gonzalez, col. 3, ll. 35-47.)
10. The dough contains flour, water, yeast and/or leavening, and salt.
(Gonzalez, col. 10, ll. 29-36.)
11. The filling may be totally enclosed within the dough or the
filling may be spread upon the dough which is then rolled up. (Gonzalez,
col. 3, l. 59 to col. 4, l. 2.)
12. Gonzalez does not disclose the G' values as claimed, the water
activity, or the refrigerated dough product being disposed within a container
at a pressure greater than one atmosphere. (Ans. 4.)
12. Appellants’ Specification discloses that containers for storing
dough in a refrigerated state are known in the art. (Spec. 17.)
13. The claim limitation of about 35% to about 60% water content of
the dough filling falls within the range of Gonzalez because Gonzalez
discloses the filling has a water content of 5-60%. (Ans. 4.)
14. The Examiner's indicated reasoning of obviousness is that:
It would have been obvious to one skilled in the art to store the
filled dough product in containers known in the art to maintain

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the dough in stable condition for commercial distribution. The
proper pressure can readily be determined by one skilled in the
art because containers for refrigerated storage of dough product
are well known in the art. . . . It would have been obvious to
one skilled in the art to determine the appropriate water activity
difference between the dough and the filling which would give
the most optimum properties. It is obvious to keep the
difference to a minimum to prevent moisture migration from
the filling to the dough which will give undesirable properties.

(Ans. 4.)

PRINCIPLES OF LAW AND ANALYSIS
"In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness." See In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993). The express, implicit, and
inherent disclosures of a prior art reference may be relied upon
in the rejection of claims under 35 U.S.C. 102 or 103. “The inherent
teaching of a prior art reference, a question of fact, arises both in the context
of anticipation and obviousness.” In re Napier, 55 F.3d 610, 613 (Fed. Cir.
1995) (affirmed a 35 U.S.C. 103 rejection based in part on inherent
disclosure in one of the references). Inherency is not necessarily
coterminous with the knowledge of those of ordinary skill in the art.
Artisans of ordinary skill may not recognize the inherent characteristics or
functioning of the prior art. See In re King, 801 F.2d 1324, 1326 (Fed. Cir.
1986). Furthermore, "[t]he discovery of a previously unappreciated property
of a prior art composition … does not render the old composition patentably
new to the discoverer." EMI Group, N. Am., Inc. v. Cypress Semiconductor
Corp., 268 F.3d 1342, 1349 (Fed. Cir. 2001).

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Gonzalez teaches a dough filling having a water content of between 5-
60% and a gelling agent, such as methylcellulose, in an amount between 0.1
to 1.5%. (FF 7, 8 and 13.) Claim 1 recites a water content of about 35% to
about 60%, and Appellants’ Specification states that a gelling agent, such as
methylcellulose, in an amount of 0.1 to about 10% by weight provides the
desired viscosity (FF3). Thus the Examiner has established that the claimed
products and the product of Gonzalez are the same or substantially the same,
and that it would have been reasonable for one of ordinary skill in the art to
conclude that the claimed water activity and G' value are inherent in the
dough filling of Gonzalez. For this reason, we find no error in the
Examiner's prima facie case of obviousness based upon inherency, and
conclude that the Examiner has provided sufficient evidence to support a
prima facie case of obviousness.
The United States Patent and Trademark Office can require an
applicant to establish that a prior art product does not necessarily possess the
characteristics of the claimed product when the prior art and claimed
products are identical or substantially identical. See In re Best, 562 F.2d
1252, 1255 (CCPA 1977). While "indirect comparisons, based on
established scientific principles, can validly be applied to distinguish a
claimed chemical process or product from that disclosed in the prior art," the
comparisons must be scientifically valid. Id. at 1254.
Appellants' burden under the circumstances presented herein was
described in In re Best as follows:
Where, as here, the claimed and prior art products are
identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an

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applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed product.
. . . Whether the rejection is based on 'inherency' under
35 U.S.C. § 102, on 'prima facie obviousness' under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO's inability to
manufacture products or to obtain and compare prior art
products.

Best, 562 F.2d at 1255.

As evidence of lack of inherency of the claimed G' value and water
activity, as well as of evidence of unexpected results, Appellants rely on the
Declaration of Jeffrey Enz in support of patentability of the pending claims.
The Appellant is under a duty to compare his claimed invention with
the closest prior art. In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979); In re
Merchant, 575 F.2d 865, 869 (CCPA 1978); Ex parte Beck, 9 USPQ2d
2000, 2002 (Bd. Pat. App. & Int. 1987) ("[C]omparative evidence, to be
effective, must compare the claimed subject matter with the closest prior
art''); Ex parte Meyer, 6 USPQ2d 1966, 1968 (Bd. Pat. App. & Int. 1988)
("An applicant relying upon a comparative showing to rebut a prima facie
case of obviousness must compare his claimed invention with the closest
prior art.''). Evidence of unexpected properties may be in the form of a
direct or indirect comparison of the claimed invention with the closest prior
art which is commensurate in scope with the claims. In re Boesch, 617 F.2d
272, 276 (CCPA 1980).
In the present case, the Enz Declaration compares the water activity
and G' value of the dough filling of Examples 1-3 of Gonzalez and
concludes that at least for the three Examples of Gonzalez, the claimed water

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activity and G' value are not inherent in these products of Gonzalez. (Enz
Declaration, Section C., p. 2.)
The Examiner is not persuaded by the Declaration of Enz as it does
not "represent the totality of the teaching of Gonzalez." (Answer 5.) We
agree with the Examiner and conclude that Appellants have failed to
compare the claimed invention with the teachings of the closest prior art.
Gonzalez teaches a dough filling having a water content of between 5-60%
and a gelling agent such as methylcellulose between 0.1 to 1.5%. A
reference can be used for all it realistically teaches, and is not limited to the
disclosures in its specific illustrative examples. In re Widmer, 353 F.2d 752,
769 (CCPA 1965). The Examples of Gonzalez include a water content of
18% (Example 1) and 38% (Examples 2 and 3) (derived by multiplying the
amount of aqueous phase in the emulsion filling by the amount of water or
orange juice in the aqueous phase). The Enz Declaration states that the
exemplary compositions have a water activity of 0.82, 0.72, and 0.77
respectively. The amount of gelling agent in Gonzalez’s examples is 0.4%
(Ex. 1) or 0.7% (Ex’s 2 and 3). Gonzalez, however, discloses that one can
use up to 1.5% gelling agent. Appellants’ evidence does not address the
upper end of the range of gelling agent that is disclosed by Gonzalez.
Appellants have failed to provide evidence, for example, showing
that a dough filling having 60% water content and 1.5% gelling agent of
methylcellulose, as suggested by Gonzalez, fails to have the claimed G'
value and water activity.
An additional reason why the Enz Declaration fails to demonstrate a
secondary consideration of unexpected results is that the values shown by

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Enz for Example 1 of Gonzalez fall within the scope of claim 1. The Enz
declaration shows the water moisture to fat ratio of example 1 as 0.81 (see
Enz Declaration, p. 2). This value reasonably falls within the range of “at
least about 0.85” where the “about” permits even 10% variability below the
stated value. In Amgen, the Federal Circuit affirmed the District Court’s
finding that “use of the term ‘about’ 160,000 IU/AU, coupled with the range
of error already inherent in the specific activity limitation, served neither to
distinguish the invention over the close prior art (which described
preparations of 120,000 IU/AU), nor to permit one to know what specific
activity values below 160,000, if any, might constitute infringement.”
Amgen Inc. v. Chugai Pharmaceutical Co., Ltd., 927 F.2d 1200, 1217 (Fed.
Cir. 1991).
In the current case, the prior art value of 0.81 relative to the claimed
value of “about 0.85” is closer in both absolute and relative terms than the
120,000 to 160,000 values in Amgen. We therefore find it reasonable to
interpret “about 0.85” in claim 1 to encompass 0.81, the value determined by
Enz for the composition of Example 1 of Gonzalez. Additionally, Enz
shows that the G’ value for Example 1 of Gonzalez is above 1,000
dynes/cm2 at 80ºC (see Enz Declaration, p. 2). Enz also shows that the G’
value for Example 1 of Gonzalez is above 4,000 dynes/ cm2 at 20ºC (see Enz
Declaration, p. 2).
Consequently, the Enz Declaration provides evidence which confirms
that Example 1 of Gonzalez inherently satisfies the limitations of claim 1 as
properly interpreted.

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CONCLUSION OF LAW AND DECISION
In view of the above, we conclude that Appellants have failed to rebut
the Examiner's prima facie case of obviousness with the closest prior art and
the rejection 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).
AFFIRMED

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