Ex Parte Garza-Lopez et al

Patent Trial and Appeal Board

Feb 22, 2013

11099668 (P.T.A.B. Feb. 22, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/099,668 04/06/2005 Jose Adalberto Garza-Lopez 6519 2051
6858 7590 02/22/2013
BREINER & BREINER, L.L.C.
115 NORTH HENRY STREET
ALEXANDRIA, VA 22314
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
02/22/2013 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 JOSE ADALBERTO GARZA-LOPEZ,
SERGIO ROMAN OTHON SERNA-SALDIVAR, and
NORBERTO ELIZONDO-GARZA
____________

Appeal 2012-001404
Application 11/099,668
Technology Center 1700
____________

Before TERRY J. OWENS, LINDA M. GAUDETTE, and
DONNA M. PRAISS, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

Appeal 2012-001404
Application 11/099,668

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 11, 16-17, 19, 21, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Chen (US 6,238,672, issued May 29, 2001) in view of
Knishinsky (Prickly Pear Cactus Medicine,” published June 30, 2004).23 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention “refers to the elaboration of diverse nutritional products that
use nopal flour and/or liquefied nopal mixed with cereal flour, grains, legumes
and/or oil seeds, either refined and/or whole . . . .” (Spec.4 5, ll. 3-5). Independent
claims 11 and 24 are representative of the invention and are reproduced below
from the Claims Appendix to the Appeal Brief (key limitations italicized):
11. A food product comprising nopal wherein said nopal consists of one or
more of nopal flour, liquefied nopal or nopal paste, wherein said nopal flour, said
liquefied nopal and said nopal paste are processed cladodes of edible plants of
Cactacea family, Opuntiodeae subfamily; and wherein said food product has
increased dietary fiber due to inclusion therein of said nopal.
24. A food stuff comprising nopal, wherein said nopal consists of one or
more of nopal flour, liquefied nopal and nopal paste which are processed cladodes

1 Final Office Action mailed Oct. 20, 2010 (“Final”).
2 Appeal Brief filed Apr. 20, 2011 (“App. Br.”).
3 An electronic copy of a synopsis and an excerpt of the Knishinsky reference from
the website http://search.barnesandnoble.com/Prickly-Pear-Cactus-Medicine/Ran-
Knishinsky/e/978089... was provided by Appellants’ counsel of record to the
Board on February 2, 2013.
4 Specification filed Apr. 6, 2005 (“Spec.”).
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of edible plants of Cactacea family, Opuntiodeae subfamily; and said nopal is
made according to a process comprising
(1) obtaining said cladodes of edible plants of Cactacea family, Opuntiodeae
subfamily;
(2) cleaning off spines from said cladodes;
(3) thereafter, cutting said cladodes into pieces;
(4) processing said pieces of said cladodes until liquefied cladodes or
cladodes in paste form are obtained;
(5) optionally, dehydrating said liquefied cladodes or said cladodes in paste
form; and
(6) utilizing a product as obtained in step (4) or step (5) to prepare said
foodstuff,
wherein prior to or after said cleaning off of said spines, said cladodes are
disinfected in a water-based disinfectant solution.
Appellants argue the subject matter common to claims 11 and 24 and do not
separately argue claim 16, therefore claims 16 and 24 stand or fall with claim 11.
Appellants separately argue dependent claim 17 (which recites “wherein said at
least one additional flour is based on grain or vegetable”), 19 (which recites
“wherein said food product is a breading for coating another foodstuff”), and 21
(which recites “wherein said food product comprises said liquified nopal as a
binding agent for additional food components”), which claims directly or indirectly
depend from claim 11.
Chen establishes that at the time of the invention, it was known to make
“food products containing cactus flour made from the cactus in the same family as
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Application 11/099,668

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claimed.” (Ans. 5 5; Chen, col. 3, ll. 5-10.) It was also known at the time to use
the juice or juice/pulp mixture derived from the cactus fruit as well as the juice or
pulp derived from the cactus pads or stems (also known as cladodes). (Ans. 5;
Chen, col. 3, ll. 19-23.) Chen also teaches that in a process for treating cactus or
ginseng berries, a “microfiltration step can be omitted when some solids content
are desired in the product to improve texture or add fiber.” (Ans. 7; Chen, col. 6 ,
ll. 21-25.)
Knishinsky evidences that at the time of Appellants’ invention, it was known
in the art that “[t]he pad is the source of many vitamins and minerals” and that
“[t]he nutritional content of the fruit of the prickly pear is only surpassed by the
nutritional content of the prickly pear’s pads.” (Knishinsky, Excerpt, p. 1 of 2;
Ans. 5-6). Knishinsky also evidences that at the time of the invention, cactus
recipes “from Prickly Pear Bread to Cactus Candy” were known. (Knishinsky,
Synopsis, p. 2 of 2).
Based on the above findings of fact, the Examiner reasons “it would have
been obvious to one skilled in the art to use the pads only because it is known the
pads is [sic, are] just as and even more nutritious than the fruits. The selection of
the pads, the fruit or both would have been obvious depending on the nutrition
wanted in the product. Chen teaches the cactus powder is used as an ingredient in
food products. Thus, it would have been obvious to add additional flour based on
grain or vegetable depending on the type of food product in which the cactus
powder is used.” (Ans. 6). The Examiner further reasons that it would have been
obvious to one of ordinary skill in the art to use the powder material taught by
Chen in liquid form if such form is more convenient for the type of food made.”
(Ans. 6-7). The Examiner also reasons “[i]t is known that the cactus pads are high

5 Examiner’s Answer mailed Aug. 1, 2011 (“Ans.”).
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in fiber and other nutrients; thus, it would have been obvious to one skilled in the
art to omit the filtration step when solids are desired from the pads.” (Ans. 7.)
The Examiner states that because “the overall claim is directed to a ‘food
product comprising’”, it does not preclude nopal produced from the fruit as an
additional component (Ans. 7-8). Alternatively, the Examiner finds that “Chen
explicitly suggests that the pads or stems can be used instead of the fruit or in
combination with the fruit.” (Ans. 8; Chen, col. 3, ll. 21-22 (“in some presently
preferred embodiment, juice or pulp may also be derived from the cactus pads or
stems.”).)
Appellants do not dispute that the cactus pads or stems disclosed in Chen
and Knishinsky are cladodes as recited in the claims (App. Br. generally).6 Nor do
Appellants dispute that Knishinsky discloses the vitamin and mineral content and
medicinal benefits of cactus pads (id. at 7). In addition, Appellants do not dispute
that Chen discloses food products containing powder from the cactus plant (id. at
6).
Appellants contend the Examiner reversibly erred in rejecting the claims
because “Chen requires the inclusion of juice from the cactus fruit, regardless of
whether juice from the cactus pad is used” (App. Br. 10) whereas:
Applicants’ claims specifically exclude the inclusion of cactus fruit
and limits [sic] the claimed nopal component to cladodes (pads) of the
edible plants of the Cactacea family, Opuntiodeae subfamily. . . .
Applicants acknowledge that the transition term “comprising” allows

6 Appellants argue in a Reply Brief filed October 3, 2011 that “Chen . . . does not
teach the inclusion of the cladodes as claimed, but rather at most only juice or pulp
derived from the pads.” Reply Br. 3. However, Appellants have not explained
how the “juice or pulp derived from the pads” (Reply Br. 3) differs from “one or
more nopal flour, liquified nopal or nopal paste which are processed cladodes
(pads) of edible plants of Cactacea family, Opuntiodeae subfamily (App. Br. 11-
12).”
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for the inclusion of other components in the food product and
foodstuff. However, “nopal” as a component is further defined using
the closed transition phrase “consists of”.
(Id. at 10-11).
Regarding dependent claims 17, 19, and 21, Appellants argue that Chen’s
disclosure of adding cactus powder to food products and bread products does not
suggest adding “additional flour based on grain or vegetable” as recited in claim 17
(App. Br. 13) or “breading” as recited in claim 19 (App. Br. 14). Appellants
further argue that Chen does not teach or suggest “liquified nopal” as recited in
claim 21 because “Chen teaches a powder derived from cactus fruit juice” (App.
Br. 15).
A prima facie case of obviousness is established where the Examiner
demonstrates that the invention is nothing more than the predictable result of a
combination of familiar elements according to known methods. KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416 (2007). As explained by the Examiner (see Ans.
6), the fact that Chen discloses cactus juice or pulp for incorporation into food
products may be derived from either the cactus pads or the cactus fruit does not
establish that the claimed invention would have been nonobvious; the alternative of
using the cactus pads would have been obvious in view of Knishinsky’s disclosure
that the cactus pads are more nutritious than the fruits.
We have reviewed the Final Office Action and Answer and find the
Examiner provided detailed facts and reasons in support of the obviousness
determination. While we agree with Appellants that the “consists of” language of
claim 11 excludes the addition of nopal sourced from the cactus fruit (see App. Br.
10), in our view, the Examiner has fully explained the motivation to modify Chen’s
product and method based on the teachings of Knishinsky (see Ans. 6-8).
Appellants have not explained, with any degree of specificity, why the Examiner’s
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proposed motivation to modify the Chen product and method is not supported by
the evidence of record. In the absence of a more detailed explanation, we are not
convinced of error on the part of the Examiner in concluding the claimed invention
would have been obvious within the meaning of 35 U.S.C. § 103(a).
For the reasons stated above, we affirm the Examiner’s decision to reject
claims 11, 16-17, 19, 21, and 24.
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

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