Ex Parte Galluch et al

Patent Trial and Appeal Board

Jan 11, 2018

12696772 (P.T.A.B. Jan. 11, 2018)

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.
12/696,772 01/29/2010 Noel F. Galluch RICH 201042US01 1642
27885 7590
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
MUKHOPADHYAY, BHASKAR
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/11/2018 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 NOEL F. GALLUCH, SUSAN FRANZ,
and ELSIE GAITE
Appeal 2017-003406
Application 12/696,772
Technology Center 1700
Before DONNA M. PRAISS, JENNIFER R. GUPTA, and
JANE E. INGLESE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—10, 12, 13, 15—21, and 23^42 as unpatentable
1 In explaining our decision, we refer to the Specification filed Jan. 29, 2010
(“Spec.”), the Final Office Action entered Jan. 11, 2016 (“Final Act.”), the
Appeal Brief filed July 21, 2016 (“App. Br.”), the Examiner’s Answer
entered Nov. 3, 2016 (“Ans.”), and the Reply Brief filed Dec. 28, 2016
(“Reply Br.”).
2 Rich Products Corporation is identified as the real party in interest. App.
Br. 1.
Appeal 2017-003406
Application 12/696,772
under 35 U.S.C. § 103(a) over Abrams3 in view of Huang4 and DeJesus-
Gaite5 and further in view of Armbrecht.6 App. Br. 12—34; Final Act. 3—11.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to icings for food items and, more particularly,
to a method of icing a food item using a frozen sheeted icing formulation.
Spec. 12. Claims 1 and 6 are illustrative:
1. A method for icing a food product comprising:
(a) providing a preformed frozen sheet of icing comprising
2 to 10% by weight water; 10 to 30% by weight fat; 60 to 75%
by weight sweetener solids; and at least 0.05% by weight gum,
said gum including two or more compounds selected from the
group consisting of gum arabic, carboxymethylcellulose (CMC),
gellan gum, guar gum, xanthan gum, alginate, and locust bean
gum, said fat is solid at a temperature of at least 68 °F, a density
of the icing composition is from 0.8 to 1.5 g/cc;
(b) disposing the frozen sheet of icing on a surface of the
food product; and
(c) exposing the frozen sheet of icing from b) to a
temperature such that the frozen sheet of icing becomes pliable
and,
(d) conforming the frozen sheet of icing to the surface of
the food product on which said frozen sheet was disposed thereby
forming an icing on the food product.
6. The method of claim 1, wherein at least 60% by weight
of the sweetener solids is powdered sugar.
3 Abrams, US 3,503,345, iss. Mar. 31, 1970 (“Abrams”).
4 Huang et al., US 5,571,555, iss. Nov. 5, 1996 (“Huang”).
5 DeJesus-Gaite, US 2008/0152769 Al, pub. June 26, 2008 (“DeJesus-
Gaite”).
6 Armbrecht et al., US 2006/0008575 Al, pub. Jan. 12, 2006 (“Armbrecht”).
2
Appeal 2017-003406
Application 12/696,772
Br. 35—36 (Claims App’x). Independent claim 31 is similar to claim 1, but
recites “0.2—5.2% by weight gum.” Id. at 39. Claims 16 and 21 are also
independent and are directed to “[a] preformed frozen sheeted icing” having
the compositions recited in claims 31 and 1, respectively. Id. at 37—38.
OPINION
Obviousness of Claims 1—5, 7, 12, 13, 15—18, 20, 21, 23—32, and 34—42
The Examiner determines that claims 1—5, 7, 12, 13, 15—18, 20, 21,
23— 32, and 34-42 would have been obvious to one of ordinary skill in the art
at the time of the invention over the combination of Abrams in view of
Huang and DeJesus-Gaite for the reasons stated on pages 3—10 of the Final
Action. We address below the claims separately argued by Appellants.
Claims 1 and 31
Appellants argue that the Examiner erred in finding that it would have
been obvious to attain the density required by claims 1 and 31 by adjusting
the composition of the icing because “[o]nly by extensive testing can one
skilled in the art know the final effect of a recipe change.” App. Br. 24.
Appellants assert that Abrams is silent regarding the density of its creamy
icing, but, according to Appellants, the density of whipped cream is about
0.25-0.51 g/cc, which is lower than “0.8 to 1.5 g/cc” recited in claims 1 and
31. Id. at 23. Appellants additionally argue that Abrams teaches an icing
formed of conventional ingredients that is a creamy-like mixture similar to
whipped cream, which is distinguishable from the icings taught by Huang
and DeJesus-Gaite and that Huang and DeJesus-Gaite are distinguishable
from each other based on “type, composition, property and purpose.” Id. at
24— 25.
3
Appeal 2017-003406
Application 12/696,772
Appellants contend that although Huang teaches a set icing like
Abrams that remains intact and does not fluidize when thawed, it is not
disclosed as a creamy-like mixture or that it has an ability to conform to a
surface of a food product as required by the claims. Id. at 26. Appellants
also assert that the sugar and water content of Huang’s icing is
unconventional to standard icings. Id. Appellants further contend that
DeJesus-Gaite’s dippable icing also is not a creamy-like mixture and has an
unconventional composition to enable it to be dippable at room temperature
and set within 15 minutes at room temperature. Id. at 25. Appellants assert
that a skilled artisan would not have been motivated by the teachings of
Huang and DeJesus-Gaite to formulate a conventional whipped icing taught
by Abrams in view of these differences and because the references teach
different fat and water contents from each other and, as such, the combined
teachings “in many instances teach away from each other.” Id. at 26—27.
The Examiner responds that Abrams, Huang, and DeJesus-Gaite all
disclose icing compositions with the basic characteristic of setting on a food
surface and, therefore, are analogous art and combinable. Ans. 11—12.
Regarding Huang, the Examiner finds that the composition is disclosed as
freezable, soft, and maintains intact the integrity when both the icing and
cake are thawed. Id. at 11 (citing Huang 8:32—34). The Examiner also finds
that Abrams similarly teaches a pre-formed frozen sheet of icing that can be
placed on the top of a cake at room temperature so that the disk of icing
softens and takes the shape of the cake’s surface. Id. (citing Abrams 1:50—
51, 55, 1:54—2:23, 3:20-21). Regarding DeJesus-Gaite, the Examiner finds
that the reference broadly teaches that applications of the icing composition
can be different ways including a flat icing and that modifications are
4
Appeal 2017-003406
Application 12/696,772
possible. Id. (citing DeJesus-Gaite Tflf 11, 12, 38). As to the distinctions
between the references and between the references and the claims, the
Examiner notes that the references need not recite all of the limitations of the
claims {id. at 14—15) and that a skilled artisan would have included the
ingredients of DeJesus-Gaite, including the disclosed combinations of gum
in the disclosed amount to retain the icing integrity as taught by DeJesus-
Gaite 118 {id. at 16). The Examiner further responds that the amount of fat
contained in the composition is taught by Huang and that additional
ingredients taught by the references are not excluded by the claims. Id. at
17-18.
Regarding the density of the claimed composition, the Examiner
responds that Appellants’ assertion that the density of whipped cream is 0.51
g/cc is not germaine to Abrams’ icing composition because Appellants have
not shown the composition of the whipped cream having the asserted
density. Ans. 13. The Examiner further responds that the Final Office
Action addressed the density limitation of the claims finding that a skilled
artisan would have optimized the sugar, water, and gum ingredients within
the disclosed ranges in order to have convenience in applying the icing to a
food product, that is, in order to attain the characteristics of being soft and
readily taking the shape of the cake’s surface as taught by Abrams and
maintain the intact integrity of the icing as taught by Huang. Id. at 13—14
(citing Abrams 2:25—30; Huang 8:32—34).
In the Reply Brief, Appellants assert that the Examiner has not
presented any evidence that modification of the fat in the icing of Abrams
“will still result in an icing that is similar to a whipped cream topping and
that can be formed into a disk and be frozen and then thawed to take shape
5
Appeal 2017-003406
Application 12/696,772
over a top surface of a cake.” Reply Br. 2. Appellants maintain that the
icings of Huang and DeJesus-Gaite are flat icings, that they are different
from the icing of Abrams, and that further modification of the icing of
Abrams with the water, sweetener, and gum content of DeJesus-Gaite is not
taught to be similar to whipped cream or formed into a disk, frozen, and then
thawed. Id. at 3. Appellants conclude that one having ordinary skill in the
art would have likely expected the modified composition to have properties
similar to the icing of Huang and DeJesus-Gaite, however, that is
speculation as only by experimentation can the final properties of a modified
food product formulation can be known. Id.
We are not persuaded by Appellants’ arguments for the reasons stated
by the Examiner. In addition, we add the following.
Appellants’ arguments are not persuasive because they do not address
the Examiner’s rejection, which combines the cited references to modify
Abrams’ icing composition. Appellants’ arguments distinguishing the
references individually are not persuasive because one cannot show non­
obviousness by attacking references individually where the rejections are
based on combinations of references. See In re Keller, 642 F.2d 413, 426
(CCPA 1981); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). To
the extent that Appellants seek to argue that the combination would change
the principle of operation of Abrams’ icing, which is described as a
“creamy-like mixture like a whipped cream,” these arguments are
unpersuasive because each of the cited references discloses an icing
composition, therefore, each composition would have been expected to
function as an icing, conforming to the surface of a food product. See Ans.
11—12. Additionally, Appellants have not directed us to any evidence in this
6
Appeal 2017-003406
Application 12/696,772
appeal record to show that modification of Abrams’ icing composition with
the teachings of Huang and DeJesus-Gaite would make it inoperable or
unsuitable for its intended purpose.
Appellants do not dispute that Abrams discloses a pre-formed disk of
icing that is frozen as the Examiner finds (Final Act. 3). Nor do Appellants
dispute that Huang discloses an icing composition for frozen applications
that includes a fat content for the benefit of a desirable mouthfeel as the
Examiner finds (Final Act. 5). Appellants also do not dispute that DeJesus-
Gaite discloses an icing composition that includes a gum content for the
benefit of reducing setting time and improving texture. Final Act. 5; Ans. 5;
DeJesus-Gaite Tflf 13, 14, 16. Appellants do not show error in the
Examiner’s reasons for modifying Abrams’ icing composition with the
components taught by Huang and DeJesus-Gaite for imparting the stated
benefits to the icing composition. The Examiner’s findings are supported by
the record.
Appellants also do not adequately show that the combination of cited
references does not teach or suggest all of the limitations of the claims. The
modified composition of Abrams, the Examiner finds (Final Act. 6; Ans.
13—14), would have attained the claimed density range because a skilled
artisan would have optimized the sugar and gum ingredients for application
to the food product such that the icing is soft enough to take the shape of a
cake’s surface (Abrams 2:25—30) and to maintain the intact integrity of the
icing (Huang 8:32—34). Appellants do not direct us to any evidence that the
claimed density would not have resulted from the modified composition of
Abrams. Instead, Appellants provide a density value for a whipped cream of
unknown composition to suggest that the density of Abrams’ composition
7
Appeal 2017-003406
Application 12/696,772
would also be about 0.25—0.51 g/cc. App. Br. 17—18. Appellants’ showing
is insufficient for at least the reason that the rejection is over the
combination of references and not Abrams alone. Moreover, Armbrecht
evidences a flowable icing having a density in the range of about 1 to about
1.2 g/cc (Armbrecht 143), which encompasses the claimed range.
Appellants’ assertion that adjusting any one ingredient in an icing
composition can result in significant change and therefore the effect of
modifying Abrams’ composition with the teachings of Huang and DeJesus-
Gaite would require extensive testing to know the final effect on taste and
properties of such a modification (App. Br. 24; Reply Br. 3) is not
persuasive of error by the Examiner. “[Ojbviousness cannot be avoided
simply by a showing of some degree of unpredictability in the art so long as
there was a reasonable probability of success.” Pfizer, Inc. v. Apotex, Inc.,
480 F.3d 1348, 1364 (Fed. Cir. 2007); In re O'Farrell, 853 F.2d 894, 903-04
(Fed. Cir. 1988) (“Obviousness does not require absolute predictability of
success. . . . [A]ll that is required is a reasonable expectation of success.”).
Appellants’ argument is not supported by evidence or reasoning to explain
why modification of Abrams’ composition with the teachings of Huang and
DeJesus-Gaite would not be reasonably expected to produce the pre-formed
frozen sheet of icing having the properties recited in step (a) of claim 1. It is
well settled that arguments of counsel cannot take the place of factually
supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40
(Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Because the Examiner’s findings are supported by the preponderance
of the evidence cited in this appeal, we are not persuaded of reversible error
8
Appeal 2017-003406
Application 12/696,772
in the rejection of claims 1 and 31 over the combination of Abrams with
Huang and DeJesus-Gaite.
Claims 16 and 21
Appellants argue that the Examiner’s rejection of claims 16 and 21 is
in error for the same reasons presented with respect to independent claims 1
and 31. App. Br. 28. Because we are not persuaded of error in the rejection
of claims 1 and 31 for the reasons discussed above, we also sustain the
rejection of claims 16 and 21.
Claims 2, 7, and 34—42
Appellants argue that the Examiner erred in rejecting claims 2, 7, and
34-42 because Abrams, Huang, and DeJesus-Gaite (1) do not render
independent claims 1, 16, 21, and 31 unpatentable and (2) do not teach an
icing having the further limitations required by the dependent claims. App.
Br. 28—30. Specifically, Appellants assert that Huang and DeJesus-Gaite do
not teach a gum content up to 5.2 wt % as required by claim 2, a frozen sheet
conforming to a food product as required by claim 7, the formulations
required by claims 34—36, 38, and 40, the sweetener solids and gum arabic
content required by claims 37, 39, and 41, and the sweetener solids content
required by claim 42. Id. at 29-30.
The Examiner responds that claim 1, from which claim 2 depends,
recites “said gum including two or more compounds selected from the group
consisting of. . .” therefore the combination of gum Arabic (0.1 to 1% by
weight) and carboxymethylcellulose (CMC) (0.1 to 0.5% by weight)
disclosed by DeJesus-Gaite meets the claim limitation of claim 2. Ans. 18
(citing DeJesus-Gaite 114).
9
Appeal 2017-003406
Application 12/696,772
We are not persuaded by Appellants’ arguments for the reasons stated
by the Examiner in the Answer and the Final Office Action. In addition, we
add the following.
Appellants summarize the limitations of the dependent claims and
then provide a sentence or two asserting that the cited prior art does not
disclose the limitations of the dependent claims. This is insufficient to state
an issue for appeal. See 37 C.F.R. § 41.37(c)(iv) (requiring, for each
argument, “the basis therefor, with citations of the statutes, regulations,
authorities, and parts of the Record relied on” and further requiring that the
“arguments shall explain why the examiner erred as to each ground of
rejection”); see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
(holding that the Board reasonably interpreted 37 C.F.R. § 41.37 (c) as
requiring “more substantive arguments in an appeal brief than a mere
recitation of the claim elements and a naked assertion that the corresponding
elements were not found in the prior art”).
To the extent Appellants do state a separate ground for appeal,
Appellants’ arguments are not persuasive because the Examiner’s findings
are supported by the record. Regarding claim 2, the antecedent basis for
“the gum” comes from claim 1 which recites “said gum including two or
more compounds” from the group that includes gum arabic and CMC.
DeJesus-Gaite discloses a composition having gum arabic and CMC within
the claimed range. DeJesus-Gaite 114; Final Act. 6. Regarding claim 7,
Abrams discloses conforming the frozen sheet to the surface of the food
product by exposing to room temperature, which is encompassed by the
claimed temperature range of from 60 to 350 -F. Abrams 3:49—51; Final
Act. 7. Regarding claims 34—36, 38, and 40, the sweetener solids disclosed
10
Appeal 2017-003406
Application 12/696,772
by DeJesus-Gaite is at least 70% including sugar, fondant, and com symp
solid which encompasses the claimed 60-75% range recited in claims 34—
36, 38, and 40. DeJesus-Gaite 114; Final Act. 8.
Regarding the sweetener solids content (60-69 weight percent) and
gum arabic content (0.2-0.75 weight percent) required by claims 37, 39, and
41, DeJesus-Gaite discloses a sweetener solids content of 70% which, based
on this record, is close enough to the recited 69% that a skilled artisan would
have expected them to have the same properties. DeJesus-Gaite 114; Final
Act. 9. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“aprima
facie case of obviousness exists when the claimed range and the prior art
range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties.”). The gum arabic
content disclosed by DeJesus-Gaite is 0.1-0.3%, which encompasses the
claimed range of 0.2-0.75%. DeJesus-Gaite 114; Final Act. 8—9.
Regarding the sweetener solids content of 60-69 weight percent
required by claim 42, DeJesus-Gaite discloses this limitation for the same
reasons discussed above in connection with claims 37, 39, and 41.
Obviousness of Claims 6, 8—10, 19, and 33
The Examiner determines that claims 6, 8—10, 19, and 33 would have
been obvious to one of ordinary skill in the art at the time of the invention
over the combination of Abrams in view of Huang and DeJesus-Gaite and in
further view of Armbrecht for the reasons stated on pages 10—11 of the Final
Action. We address below the claims separately argued by Appellants.
Claims 6 and 19
Appellants argue that the Examiner erred in combining Armbrecht’s
teaching of powdered sugar as a preferred sweetener with the teachings of
11
Appeal 2017-003406
Application 12/696,772
Abrams, Huang, and DeJesus-Gaite because Armbrecht does not teach a
frozen sheeted icing that is heated so as to conform with a surface of a food
product, therefore, the teachings of Armbrecht do not pertain to a frozen
sheeted icing that can be heated so that such icing conforms to the top of a
food product. App. Br. 31. According to Appellants, Armbrecht teaches a
pourable topping composition that can be poured over a baked good as a
topping, which Appellants characterize as “a contrary teaching to the icing
disclosed in Abrams, Huang and as defined in the claims on appeal.” App.
Br. 32. Appellants additionally argue that “food products that are formed of
different ingredients and/or ingredient concentrations will likely have
different properties.” Id. Regarding claims 6 and 19, Appellants further
assert that Armbrecht does not teach at least 60% by weight of the sweetener
solids is powdered sugar. Id. at 33.
The Examiner responds that Armbrecht is used to address the
limitations in the dependent claims regarding powdered sugar and exposure
to temperature. Ans. 19.
In the Reply Brief, Appellants contend that Abrams does not
contemplate any of the proposed changes to the recipe and that Huang,
DeJesus-Gaite, and Armbrecht do not provide any guidance as to the
properties and taste of the modified icing of Abrams. Reply Br. 7.
We are not persuaded by Appellants’ argument for the reasons stated
by the Examiner. In addition, we add the following.
Appellants do not dispute the Examiner’s finding that Armbrecht
teaches powdered sugar as a preferred sweetening agent. Final Act. 10
(citing Armbrecht || 41,42). Nor do Appellants dispute the Examiner’s
finding that powdered form is simple sugar to provide sweetness and is
12
Appeal 2017-003406
Application 12/696,772
readily soluble. Id. In a determination of obviousness, a reference may be
relied upon for all that it would have reasonably suggested to one having
ordinary skill in the art. Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious.”). Moreover, “a reference is not limited to the disclosure of
specific working examples.” In re Mills, 470 F.2d 649, 651 (CCPA 1972)
(citation omitted). Based on the teachings of Armbrecht of the multiple
forms of sweeteners, powdered sugar is not only substitutable for other
forms of sweeteners, but a preferred form for an icing composition.
Precedent has long held that the person having ordinary skill in the art must
be regarded as skillful and ordinarily creative, not as a mere literalistic
automaton. Transocean Offshore Deepwater Drilling, Inc. v. Maersk
Contractors USA, Inc., 617 F.3d 1296, 1304 (Fed. Cir. 2010); In re Sovish,
769 F.2d 738, 742 (Fed. Cir. 1985). A person having ordinary skill in the art
of icing formulations would have understood that powdered sugar is a form
of sweetener used in icing formulations. It follows that a person having
ordinary skill in the art would have understood that the powdered sugar form
of sweetener could be used in the icing composition of Abrams as modified
by Huang and DeJesus-Gaite.
Accordingly, we find no reversible error in the rejection of claims 6
and 19.
Claim 33
Appellants further argue that the Examiner erred because claim 33
requires that the frozen sheet conform to the surface of the food product by
exposing it to a temperature of 60-F to 350-F for a period of 5 to 75 minutes
13
Appeal 2017-003406
Application 12/696,772
and none of the cited references teaches a frozen icing that can be heated so
that it conforms to the top of a food item. App. Br. 33.
The Examiner responds that even if Armbrecht teaches pouring a
flowable texture over a baked good, it also teaches high temperature
treatment can be used to have proper mixing of icing ingredients together
and the flowable property would help to make the frozen sheet of the desired
configuration. Ans. 20.
In the Reply Brief, Appellants contend that the Examiner’s assertions
regarding the potential properties of the icing of Armbrecht are not
supported by the teachings of Armbrecht. Reply Br. 6. Appellants also
contend that Abrams does not contemplate any of the proposed changes to
the recipe and that Huang, DeJesus-Gaite, and Armbrecht do not provide any
guidance as to the properties and taste of the modified icing of Abrams. Id.
at 7.
We are not persuaded by Appellants’ argument for the reasons stated
by the Examiner in the Final Action and the Answer. In addition, we add the
following.
Appellants do not dispute the Examiner’s finding that Armbrecht
teaches that it was known to expose icing to a temperature of 90-350 -F for
a period of less than 2 minutes by heating in a microwave oven in order to
soften icing. Final Act. 11 (citing Armbrecht || 80, 89). Appellants also do
not dispute the Examiner’s finding that a skilled artisan would have
optimized the time and temperature for a desired intended use. Id. “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSRInt'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). In
view of each of the cited references disclosing temperatures under which an
14
Appeal 2017-003406
Application 12/696,772
icing formulation is used, it follows that a person having ordinary skill in the
art would have understood that the icing composition of Abrams as modified
by Huang and DeJesus-Gaite can be heated to a temperature for its intended
use and the time for heating the icing can be optimized by using a
microwave oven.
Accordingly, we affirm the Examiner’s rejection of claim 33.
CONCLUSION
We affirm the Examiner’s rejections of claims 1—10, 12, 13, 15—21,
and 23^42 as obvious under 35 U.S.C. § 103(a).
DECISION
The Examiner’s decision is affirmed.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
15