Ex Parte Green et al

Board of Patent Appeals and Interferences

Aug 26, 2011

11114453 (B.P.A.I. Aug. 26, 2011)

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.
11/114,453 04/26/2005 Daniel R. Green 6495US 1333
30173 7590 08/26/2011
GENERAL MILLS, INC.
P.O. BOX 1113
MINNEAPOLIS, MN 55440
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
08/26/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL R. GREEN and CHRISTINE NOWAKOWSKI
__________

Appeal 2011-001939
Application 11/114,453
Technology Center 1700
__________

Before FRANCISCO C. PRATS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
method for preparing a pre-sweetened comestible, to a sweetened dry coated
comestible, and to a coating composition. The Patent Examiner rejected the
claims on the grounds of obviousness and nonstatutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm-
in-part.
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Application 11/114,453

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STATEMENT OF THE CASE
Claims 1-7, 9-11, and 13-20, which are all the pending claims, are on
appeal.1 Claim 1 is illustrative and reads as follows:
1. A method for preparing a pre-sweetened comestible, comprising the
steps of:
A. providing a base of food pieces;
B. applying a low sugar coating composition as a coating or binder to the
base in a weight ratio of base to coating composition ranging from about
100:5 to about 100:150 to provide a low sugar coated base, said coating
composition comprising:
80-99.9% by dry weight of a high conversion maltodextrin
and/or low conversion corn syrup having a dextrose equivalent
ranging from about 5 to less than 40 and an average degree of
polymerization of at least 3;
0.01-2% by weight of at least one high potency sweetener;
a sugar(s) content of less than 10% by weight; and
about 1-15% by weight of a humectant, wherein the coating
composition is applied in the form of a liquid slurry having a
temperature ranging from about 95 to 150°C and a moisture content
ranging from about 5-25% by weight; and,
C. drying the low sugar coated base to a moisture content ranging from
about 1-6% by weight.

The Examiner rejected the claims as follows:
• claims 1-3, 7, 9-11, 13, and 16-20 under 35 U.S.C. § 103(a) as
unpatentable over Schade,2 Porter,3 with evidentiary support from Francis;4

1 The “Status of Claims” section of Appellants’ Brief indicates that only
claims “1-3, 7, 9-11, 13 and 16-20” were rejected (App. Br. 4), but this is
inconsistent with the Brief’s indication of “appeal . . . of claims 1-7, 9-11
and 13-20” (id. at 1).
2 Hans R. Schade et al., US Patent No. 4,079,151, Mar. 14, 1978.
3 Stuart C. Porter et al., US Patent No. 4,643,894, Feb. 17, 1987.
4 Frederick J. Francis, ENCYCLOPEDIA OF FOOD SCIENCE AND TECHNOLOGY,
Second Edition, Vol. 1:2271 (John Wiley & Sons, Inc. 1999).
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• claims 4-6 under 35 U.S.C. § 103(a) as unpatentable over Schade,
Porter, and Leusner;5
• claims 14 and 15 under 35 U.S.C. § 103(a) as unpatentable over
Schade, Porter, and Cerda;6 and
• claims 10, 11, and 13,7 provisionally, on the ground of nonstatutory
obviousness-type double patenting over claims 11-14 of copending
Application No. 11/114,485.

OBVIOUSNESS
Principles of Law
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).

The Issues and Analysis
A. The rejection of claims 1-3, 7, 9-11, 13, and 16-20 over Schade,
Porter, and Francis.

Claim 1
Claim 1 recites “the coating composition is applied in the form of a
liquid slurry having a temperature ranging from about 95 to 150°C,” and that

5 Steven J. Leusner, US Patent No. 5,919,503, July 6, 1999.
6 Javier Cerda et al., Patent No. US 6,174,553 B1, Jan. 16, 2001.
7 The Examiner’s Answer lists “Claims 10-13” (Ans. 11), but Claim 12 was
cancelled.
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the coating composition comprises “about 1-15% by weight of a humectant.”
Appellants dispute that the slurry (i) application temperature and
(ii) humectant content would have been obvious.
(i) Schade applied a heated slurry to food particles, and in the
application step the food particles were at 67-107°C, the application zone
was at 121°C, and the solvent in the slurry was heated up to 93°C, which the
Examiner “considered to be about 95°C.” (Ans. 5.) The Examiner also
concluded that the closeness of the claimed and prior art temperature ranges
weighed in favor of obviousness. (Id. at 5-6.)
According to Appellants, “Schade et al. does not disclose applying a
coating composition in the form of a liquid slurry having a temperature
ranging from about 95 to 150°C.” (App. Br. 8.) Appellants contend that
Schade did not teach heating the liquid coating but instead taught heating the
application zone, and “it would be unreasonable to conclude that the
composition reaches the minimum temperature of 95°C as it is applied to the
food pieces, as required by claim 1.” (Id. at 9.)
It is undisputed that Schade’s slurry solvent was at about 95°, and the
slurry was sprayed onto food particles that were at 107°, in an application
zone that was at 121°. We think this evidence supports the Examiner’s
finding that Schade’s slurry had a temperature of 95° when it was applied.
Appellants argue that that factual conclusion is “unreasonable”, but offer no
reasonable explanation showing how, if the slurry solvent was at 95°, and
applied to hotter objects, in a hotter application zone, that the slurry itself
was not at least 95° when applied. We agree with the Examiner that
Appellants process overlaps, at its low end, Schade’s process of applying
slurry at 95°, and would have been prima facie obvious in that aspect. Even
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abutting ranges are prima facie obvious. See In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003).
(ii) Although Schade did not describe using a humectant, Porter
taught adding 3% glycerin to maltodextrin coatings to minimize cracking
and brittleness. (Ans. 8 and 13, citing Porter’s example 1.) The Examiner
concluded it would have been obvious to add glycerin to Schade’s coating to
improve the coating properties. (Ans. 8)
Appellants contend that Porter taught adding glycerin as a plasticizer
that makes the coating sticky, although it also makes the coating non-brittle
and non-cracking, and in order to overcome the stickiness, Porter also added
a detackifier. (App. Br. 10.) Appellants then argue that “[s]ince Porter et al.
teaches away from the use of one plasticizer by itself, one of ordinary skill in
the art would not have been motivated to use just one plasticizer disclosed in
Porter et al. in the composition of Schade et al.” (Id.)
Porter taught, in relevant part: “[t]he plasticizers are used in a range
of 3.5 to 15% by weight of the coating mixture, alone or in some
combination, with 5 to 10% being preferred. Certain plasticizers cause
considerable tackiness during tablet coating, but in combination with another
plasticizer used as a detackifier, the tack is considerably reduced or
eliminated.” (Porter, col. 2, ll. 57-63.) Appellants point to no evidence that
glycerin is one of the “certain plasticizers” that cause tackiness. And as the
term “comprising” means that Appellants’ claims are open to the optional
inclusion of one of Porter’s detackifiers, we find Appellants’ contentions
unpersuasive.
Claims 7 and 9 have not been argued separately and therefore stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
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Claim 2
Claim 2 further defines the method of claim 1 by adding that “the base
includes low sugar dried food pieces.” The Examiner concluded it would
have been obvious to select a low-sugar cereal base to be coated with
Schade’s low-sugar coating because Schade “speak[s] to the desirability of
limiting the amount of sucrose in foodstuffs.” (Ans. 6.)
Appellants represent that they “find[ ] no such teaching of the
desirability of limiting the amount of sucrose in the prior art base food
product. Therefore, the Examiner has failed to articulate how the applied
prior [art] is being utilized in rejecting claim 2, such that no prima facie base
of obviousness has been proven.” (App. Br. 11.)
The first paragraph of Schade’s “Background of the Invention” stated:
“[l]essening sucrose content is believed by some to reduce the incidence of
dental caries. Generally speaking, there is a growing desire to lessen sucrose
intake as a part of food products that are pre-sweetened.” (Schade, col. 1, ll.
21-24.) This evidence supports the Examiner’s finding, and we therefore
affirm the rejection of claim 2.

Claim 3
Claim 3 further defines the method of claim 1 by adding that the
“slurry has a moisture content ranging from about 5-10% by weight.”
The Examiner determined that adjusting the moisture content in
Schade’s slurry would have been obvious:
Regarding the moisture content of the slurry as required
by amended claims 1 and 3, Schade et al. speak to the increase
in viscosity and decrease in drying time depending on the
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amount of solvent (i.e. water) in the coating solution (col. 7
lines 1-27). The adjustment of the amount of moisture in the
composition to alter the characteristics of the coating would
have required no more than routine experimentation by one of
ordinary skill and would have been expected to provide a
predictable result based on the variables of the coating process
including the droplet size, distance from the object to be coated,
etc.

(Ans. 6.)
Appellants contend that
[i]n the Advisory Action, the Examiner simply states that
Schade et al. provides motivation for one of ordinary skill to
reduce the moisture content in order to improve the adhesive
properties of the coating solution. However, the Examiner does
not acknowledge that the claim requires a moisture content
ranging from about 5-10% by weight. There is no teaching of
the claimed range in Schade et al. or Porter et al. Therefore, no
prima facie case of obviousness has been proven for claim 3.

(App. Br. 11-12.)
We note that in Schade’s disclosure of the best mode, the coating
contained 33% water. (Schade, col. 6, ll. 6-11.) Appellants did not dispute
the obviousness of claim 1’s 5-25% moisture content over Schade’s 33%.
We agree with Appellants that the rejection did not identify an explicit
teaching of 5-10% moisture content in either Schade or Porter, but that
argument is insufficient to establish error by the Examiner. The absence of
an explicit range disclosure does not mean that 5-10% would not have been
within routine skill for an artisan following Schade’s teachings. “[T]he
discovery of an optimum value of a variable in a known process is usually
obvious.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368 (Fed. Cir. 2007).
The rationale for determining the optimal parameters for prior art result
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Application 11/114,453

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effective variables “flows from the ‘normal desire of scientists or artisans to
improve upon what is already generally known.’” Id. (quoting In re
Peterson, 315 F.3d at 1330).

Claim 10
Claim 10 defines a coated comestible “wherein the coating is a glassy,
non-sticky coating at room temperature.”
The Examiner’s position is that “[o]ne of ordinary skill would have
recognized that the coating of Schade et al. could be applied to result in a
frosty appearance. However, if a glassy appearance were desired it was
known to be possible to alter the application of the coating to achieve such a
result.” (Ans. 7.)
Appellants contend that the Examiner “improperly started with a
hypothetical that a glassy appearance would even be desired in connection
with the prior art.” (App. Br. 12.) We agree. A rejection must articulate a
reason for changing the prior art, but the rejection at hand only hypothesizes
that there might be a reason for doing so. On this record, we must reverse
the rejection. As claim 11 is dependent on claim 10, we reverse the rejection
as to that claim as well.

Claim 13
Claim 13 is dependent on claim 10. Because the rejection of claim 10
is reversed, we reverse the rejection as to claim 13 as well.

Claim 16
Claim 16 reads:
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16. A coating composition suitable for use to coat a food product to
provide a low sugar pre-sweetener coating or binder, comprising:
from about 0.5 to 1.5% by weight of a high potency sweetener;
85-90% by weight of a high conversion maltodextrin or low
conversion corn syrup having a dextrose equivalence ranging from about 5-
less than 40 and a degree of polymerization of at least 3; and
about 1-15% by weight of a humectant, wherein the coating is a
glassy, nonsticky coating at room temperature.

We interpret the claim as defining a coating “suitable for use to coat a
food product,” i.e., before the composition has been applied to the food
product. On this record, it appears that the manner of applying the coating
will determine whether a composition will form a coating having either a
glassy or a frosted appearance. Although the “wherein” clause states the
coating “is” glassy, the claimed composition for use as a coating does not
become a coating until it is applied to a food product, and “is” not yet a
glassy or any other kind of coating. If the rejection demonstrates that the
prior art taught or suggested a coating composition suitable for coating food,
comprising the listed ingredients, and which was capable of forming a glassy
coating if applied to a food product using an appropriate technique, we will
affirm the rejection.
The Examiner’s position is that “[o]ne of ordinary skill would have
recognized that the coating of Schade et al. could be applied to result in a
frosty appearance. However, if a glassy appearance were desired it was
known to be possible to alter the application of the coating to achieve such a
result.” (Ans. 7.)
Appellants contend that “one of ordinary skill in the art would not be
motivated to alter the application of the coating disclosed in Schade et al. to
produce a glassy non-sticky coating as claimed such that the Examiner's
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basis for the rejection fails and there is no prima facie case of obviousness.”
(App. Br. 14.) This argument is unpersuasive. The claim defines a
composition before it is applied as a coating, i.e. before it becomes a glassy
coating. The claim is not a method claim, nor is it a product-by-process
claim. We are persuaded by the evidence that the claimed composition
suitable for use as a coating was suggested by Schade and Porter. Whether
Schade and Porter suggested using it to form a glassy coating is irrelevant.
Appellants also contend that “[c]laim 1[6] also requires about 1-15%
by weight of a humectant.” (App. Br. 14.) We agree with the Examiner’s
position for the same reasons discussed earlier with regard to the humectant
used in claim 1.
Claims 17-19 have not been argued separately and therefore stand or
fall with claim 16. 37 C.F.R. § 41.37(c)(1)(vii).

Claim 20
Claim 20 is dependent on claim 13. Because the rejection of claim 13
is reversed, we reverse the rejection as to claim 20 as well.

B. The rejection of claims 4-6 over Schade, Porter, and Leusner.
Claim 4 reads:
4. The method of claim 3 wherein the low sugar coated base
includes at least one particulate, said particulate ranging in size
from about 0.5 to 4 mm.

The Issue
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The Examiner found that Leusner taught “coated base pieces . . .
compris[ing] a variety of particulates, including raisins, nuts, dried fruit,
etc.” (Ans. 10, citing Leusner, col. 8, ll. 26-28.)
Appellants contend that Leusner did not disclose a particulate
included in a coated base. (App. Br. 16.)
Analysis
Leusner taught: “In other variations, the finish R-T-E cereal flakes
can be admixed with a variety of added ingredients such as raisins, nuts,
marbits, dried fruit pieces, and mixtures thereof.” (Leusner, col. 8, ll. 26-
28.)
The evidence does not support the rejection’s finding that Leusner
taught coated base pieces comprising particulates because Leusner taught
admixing the finished R-T-E cereal with particulates. According to
Leusner’s disclosure, the finished R-T-E cereal was already coated, and
Leusner’s particulates would thus not have been coated because they were to
be added to a coated cereal. The rejection established the obviousness of
“includ[ing] non-cereal pieces with coated cereals” (Ans. 10), but claim 4
requires preparing a “coated base includ[ing] at least one particulate.” As
claims 5 and 6 are dependent on claim 4, we reverse the rejection as to those
claims as well.

C. The rejection of claims 14 and 15 over Schade, Porter, and Cerda.
Appellants did not request review of this rejection (see Appeal Brief
6-7), choosing to let claims 14 and 15 stand or fall with claim 10 (id. at 13).
As we reverse the rejection of claim 10, we also reverse the rejection of
dependent claims 14 and 15 .
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NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
Claims 10, 11, and 13 are rejected. Claims 10 and 13 read:
10. A sweetened dry coated comestible, comprising:
about 40% to 95% by weight of a base of food pieces;
and from about 5 to 60% by weight of a coating on at
least a portion of the base pieces, said coating including:
from about 0.01 to 2% by weight of a high potency sweetener;
80-99.9% of a high conversion maltodextrin or low conversion
corn syrup having a dextrose equivalence ranging from about 5-
less than 40 and a degree of polymerization of at least 3; and
about 1-15% by weight of a humectant, wherein the coating is a
glassy, non-sticky coating at room temperature.

13. The comestible of claim 10 wherein the coating has a Tg
of at least 20°C.

The Issue
Appellants contend the rejection fails to address how “a glassy, non-
sticky coating at room temperature” limitation is in claims 11-14 of the ‘485
application. (App. Br. 16.) Copending claim 11 requires that the corn syrup
solids of its coating are “in the form of powder having particle size having a
particle size ranging from about 100 to 600 microns.” According to
Appellants, “it is unclear how the coating would have a ‘glassy’ appearance.
Powder would result in a matte coating.” (Id.)
The Examiner found this argument unpersuasive because “the coating
of both sets of claims has the same composition.” (Ans. 20.)
The issue with respect to this rejection is whether it is reasonable to
conclude that a glassy coating and a powder coating are the same
composition.

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Findings of Fact
Copending claims 11-14 in the ‘485 application read:
11. A sweetened dry coated comestible, comprising:
about 40% to 95% by weight of the comestible of a base of
food pieces;
from about 5 to 60% by weight of the comestible of a
coating on at least a portion of the base pieces, said coating
including from about 0.1 to 1.5% by weight of a high potency
sweetener and about 80-99.9% by weight of a high conversion
maltodextrin or low conversion corn syrup solids having a
dextrose equivalence ranging from about 5-less than 40 and an
average degree of polymerization of at least 3 and wherein the
corn syrup solids are in the form of powder having a particle
size ranging from about 100 to 600 microns.

12. The comestible of claim 11 wherein the at least a portion
of the comestible base is an R-T-E cereal base.

13. The comestible of claim 12 wherein the coating
additionally comprises about 1-15% by weight humectant.

14. The comestible of claim 11 wherein the coating has a Tg
of at least 20°C.

Analysis
Appellants suggest that because the claims in the copending ‘485
application have been rejected over “completely different prior art,” this
“clearly reflect[s] on the distinctions between the claim sets. (App. Br. 16.)
We give this argument no weight because it is entirely possible that two
different sets of prior art references could describe exactly the same thing, a
more stringent test than required.
The claims of the ‘485 Application must be interpreted consistently
with their Specification which indicates that “the present coating
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compositions are glassy non sticky particulates at room temperature.” (Spec.
11/114,485 at 14, ll. 3-7.) Cf. In re Bassell Poliolefine Italia S.P.A.,
547 F.3d 1371, 1378 (Fed. Cir. 2008) (the disclosure of a copending
application may be used to learn the meaning of claims and to interpret the
coverage of a claim). Thus, we also give no weight to Appellants’ statement
that “it is unclear how the coating would have a ‘glassy’ appearance,”
because the inventors of the copending claims explicitly disclosed that the
coating was glassy. (App. Br. 16.)
As to Appellants’ contention that the powder of the copending claims
would result in a matte coating, rather than the “glassy” coating as claimed,
there is no evidence of that hypothetical result, nor is there evidence that
matte means “not glassy” in this context. Moreover, copending claim 14
defines its coating as having “a Tg of at least 20°C,” the same glass transition
temperature as rejected claim 13.

SUMMARY
We affirm the rejection of claims 1-3, 7, 9, and 16-19 under 35 U.S.C.
§ 103(a) as unpatentable over Schade, Porter, and Francis.
We reverse the rejection of claims 10, 11, 13, and 20 under 35 U.S.C.
§ 103(a) as unpatentable over Schade, Porter, and Francis.
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We reverse the rejection of claims 4-6 under 35 U.S.C. § 103(a) as
unpatentable over Schade, Porter, Francis, and Leusner.
We reverse the rejection of claims 14 and 15 under 35 U.S.C. § 103(a)
as unpatentable over Schade, Porter, Francis, and Cerda.
We affirm the provisional rejection of claims 10-13 on the ground of
nonstatutory obviousness-type double patenting over claims 11-14 of
copending Application No. 11/114,485.
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-IN-PART

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