Ex Parte Gusek et al

Board of Patent Appeals and Interferences

Jan 31, 2008

10272486 (B.P.A.I. Jan. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TODD W. GUESK,
BASSAM F. JIRJIS
and IAN C. PURTLE
____________

Appeal 2007-3415
Application 10/272,486
Technology Center 1700
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Decided: January 31, 2008
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 41-44, 133-139,
and 141-170, the only claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
The invention relates to a method for processing cocoa mass into
cocoa powder and cocoa butter using a liquefied saturated hydrocarbon
Appeal 2007-3415
Application 10/272,486

solvent. Spec. [0005]. Claim 161 is illustrative of the invention and is
reproduced below:
161. A process for treating cocoa mass comprising:

continuously mixing cocoa mass, which comprises at least about 20
wt.% cocoa butter, and a liquefied hydrocarbon solvent in a static mixer at a
temperature of about 10ºC to about 45ºC to provide a slurry, wherein the
liquefied hydrocarbon solvent comprises at least about 90 wt.% butane, and
the total mass ratio between the mass of the liquefied saturated hydrocarbon
solvent and the mass of the cocoa mass is no more than about 2:1;

continuously separating the slurry to provide a stream enriched in
cocoa butter and a stream enriched in cocoa solids, and

desolventizing the stream enriched in cocoa solids after separating to
provide cocoa powder with a cocoa butter content no more than about 2
wt.%;

wherein the mixing step is carried out with a mixing time before
separation of no more than about 110 seconds and is conducted without use
of a dynamic mixer.

The Examiner relies on the following prior art references to show
unpatentability:
Perry, R. and Green, D., "Perry's Chemical Engineers' Handbook," 6th
Edition, McGraw-Hill, 19-22 (1984).

Purtle 6,066,350 May 23, 2000
The Examiner rejected claims 41-44, 133-139, and 141-170 under
35 U.S.C. § 103 as unpatentable over Purtle in view of Perry.
Appellants do not present separate arguments as to any particular
claim. Accordingly, we decide the appeal on the basis of independent claim
161. 37 C.F.R. § 41.37(c)(1)(vii).
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The Examiner finds that Purtle discloses the invention as claimed in
claim 161 with the exception of (1) a recitation of a specific mixing time and
(2) a specific disclosure that the solvent and cocoa mass are passively mixed
with a static mixer. (Ans. 4-5). The Examiner contends that it would have
been obvious to vary the mixing time in Purtle’s process based on the
desired amount of cocoa butter in the final product. (Ans. 5). The Examiner
further contends that it would have been obvious to one of ordinary skill in
the art at the time of the invention to have used a motionless mixer in
Purtle’s process based on Perry’s disclosure that such mixers provide
enhanced heat transfer and uniform residence times. (Ans. 5).
Appellants contend that the present Specification provides the only
motivation to modify Purtle’s process to achieve the claimed invention and,
therefore, the Examiner’s rejection is based on improper hindsight
reasoning. Appellants essentially argue that the Examiner has not supplied
the requisite factual findings and reasons necessary to establish that one of
ordinary skill in the art at the time of the invention would have been
motivated to: (1) modify Purtle’s mixing times and total solvent to cocoa
mass ratios, and (2) use a motionless mixing device in Purtle’s process.
With respect to Purtle’s mixing times and total solvent to cocoa mass
ratios, Appellants maintain that “the Examiner has selectively pointed to
process parameters from disconnected embodiments discussed in Purtle ‘350
– a discriminatory pick and choose strategy that has been repeatedly been
[sic] ruled impermissible as the basis for an obviousness rejection.” (Reply
Br. 3). According to Appellants, Purtle’s embodiments employ higher
extraction times and total solvent to cocoa mass ratios than those claimed.
(Reply Br. 4). Appellants argue that one of ordinary skill in the art at the
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time of the invention would not have had a reasonable expectation of
success in reducing these parameters. (Reply Br. 3). In other words,
Appellants maintain that one of ordinary skill in the art would anticipate
achieving a less efficient extraction operation by reducing the extraction
times and the total solvent to cocoa mass ratios of Purtle’s embodiments.
(Reply Br. 3).
With respect to the use of a motionless mixing device, Appellants
argue that Purtle clearly uses a dynamic mixing device. (Reply Br. 2).
Appellants note that Purtle “contains absolutely no mention or suggestion of
the use of a static mixer” and only a dynamic mixing device, i.e., a tank
equipped with a mixer paddle is depicted in Purtle’s drawings. (Reply Br.
2). Appellants further argue that the Examiner failed to provide a reasonable
basis for concluding that one of ordinary skill in the art would have been
motivated to employ a motionless mixing device in Purtle’s process based
on “the mere existence of static mixers, as evidenced by the citation to
Perry’s.” (Reply Br. 2).
Based on the contentions of the Examiner and the Appellants, the
issues presented are: Has the Examiner made proper and sufficient factual
findings to establish that it would have been prima facie obvious, within the
meaning of 35 U.S.C. § 103(a): (1) to have employed the claimed mixing
times and total solvent to cocoa mass ratios in Purtle’s process? and (2) to
have used a motionless mixing device in Purtle’s process? We answer these
questions in the affirmative.

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Claim limitation: “wherein the mixing step is carried out with a mixing time
before separation of no more than about 110 seconds”
A prima facie case of obviousness exists where the prior art and
claimed ranges overlap, as well as in those cases where the claimed range
and the prior art range, though not overlapping, are sufficiently close that
one skilled in the art would have expected them to have the same properties.
See In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997). Purtle discloses
that the volume of the mixing vessel should be sufficient to provide “a
residence time of about 2-10 minutes.” (Ans. 7 (citing Purtle, col. 11, ll. 41-
43)). Like Purtle, Appellants preface their mixing time with the term
“about”, indicating that the inventors did not intend to limit the claimed
ranges to their exact end-points. See In re Harris, 409 F.3d 1339, 1343
(Fed. Cir. 2005). Thus, the Examiner reasonably concluded that one of
ordinary skill in the art would have expected a mixing time of 110 seconds
to produce a process stream having similar properties to those produced by
Purtle’s step of mixing for about 120 seconds. The burden was, therefore,
properly shifted to Appellants to present persuasive arguments or evidence
refuting the Examiner’s prima facie showing of obviousness, e.g., evidence
which establishes that the claimed mixing time provides a new and
unexpected result. See In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996)
(Even though “[a] modification results in great improvement and utility over
the prior art, it may still not be patentable if the modification was within the
capabilities of one skilled in the art, unless the claimed ranges produce a
new and unexpected result which is different in kind and not merely in
degree from the results of the prior art."). Appellants have not met this
burden.
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Claim limitation: “the total mass ratio between the mass of the liquefied
saturated hydrocarbon solvent and the mass of the
cocoa mass is no more than about 2:1”
In an obviousness determination, the relevant inquiry is: what would
the prior art as a whole have suggested to the ordinary artisan? See KSR
Int’l Co. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006) (While the analysis in support of an
obviousness determination should “identify a reason that would have
prompted a person of ordinary skill in the art to combine the elements” in
the manner claimed, the “analysis [of whether the subject matter of a claim
is obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”) The Examiner found, and Appellants do not dispute, that the
amount of solvent required in treating cocoa mass is dependent on the level
of fat in the cocoa mass and the production requirements. .1 (Ans. 6). This

1 In rejecting claim 161, the Examiner also specifically relied on the
experimental method in column 20 of Purtle, in which extractions were
conducted in two steps using solvent to feed ratios of 2:1. (Ans. 4).
Appellants maintain that the claimed total mass ratio refers to “the ratio of
the overall amount of solvent used in all extraction and optional wash
operations” and “is not, as suggested in the Office Actions, the solvent to
feed ratio in a single extraction stage of a multi-stage extraction process.”
(App. Br. 6). Appellants argue that because each of Purtle’s stages employs
a 2:1 solvent/cocoa liquor ratio, the total solvent/cocoa ratio is 4:1. (Reply
Br. 3). We do not agree with Appellants’ narrow claim construction. The
Specification states that “[i]n considering the total ratio, the total process is
considered including the mixing step and any washes in the separation.”
Spec. [0055] (emphasis added). In our view, this statement does not amount
to an explicit definition of the claim term “total mass ratio” as equal to the
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finding is clearly supported by Purtle’s disclosure that the ratio of solvent to
cocoa mass may be varied depending on initial fat content of the cocoa mass
(see, e.g., Purtle, col. 12, ll. 19-23 (noting that cocoa mass having a lower fat
content requires less solvent)) and that the extraction process may be either
one stage or multi-stage (see, e.g., Purtle, col. 8, ll. 48-52). Thus, in our
view, the Examiner reasonably concluded that achieving the claimed total
mass ratio would have involved nothing more than the determination of a
workable or optimum range for a parameter recognized in the prior art as
being result effective and, therefore, would have been obvious to one of
ordinary skill in the art at the time of the invention. See In re Woodruff,
919 F.2d 1575, 1578 (CCPA 1976); In re Boesch, 617 F.2d 272, 276 (CCPA
1980); In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Appellants appear to suggest that Purtle teaches away from the
claimed total mass ratio because one of ordinary skill in the art would have
expected a reduction in efficiency by lowering the total solvent to cocoa
mass ratio (Reply Br. 3). However, this argument is not persuasive in
overcoming the Examiner’s prima facie showing of obviousness because
Appellants have not established that one of ordinary skill in the art would
have actually been discouraged from using the claimed total mass ratio. See
ratio of the sum total of all solvent used in the process to the cocoa mass.
Rather, claim 161 limits the total mass ratio in the recited mixing step.
Appellants’ use of the term “comprising” in claim 161 means that additional
processing steps, including additional solvent extraction steps, are not
precluded. In other words, while claim 161 limits the solvent to cocoa mass
ratio in the first mixing step to 2:1, claim 161, given its broadest reasonable
construction, does not preclude the addition of solvent in subsequent steps
such that the ratio of solvent used in all process steps to cocoa mass would
exceed 2:1.

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In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Cf. In re Mayne, 104 F.3d
1339, 1343-44 (Fed. Cir. 1997) (noting that unsupported assertions are not
sufficient to establish that “the claimed invention exhibits some superior
property or advantage that a person of ordinary skill in the relevant art would
find surprising or unexpected”)
Claim limitation: “the mixing step . . . is conducted
without use of a dynamic mixer”
Contrary to Appellants’ contention, the Examiner also properly
established that use of a motionless mixing device in Purtle’s method would
have involved nothing more than the predictable use of a known prior art
element according to its established function. See KSR, 127 S. Ct. at 1739
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
While drawings are useful in understanding a disclosed invention2, we do
not agree with Appellants’ assertion that Purtle’s simple depiction of a tank
equipped with a mixer paddle would have led one of ordinary skill in the art
to conclude that Purtle’s processing equipment is limited to a dynamic
mixing device, since Purtle broadly refers to a “mixing vessel” or “mixer”
(see, e.g., col. 11, ll. 41-62 and col. 12, ll. 43-58). Moreover, contrary to
Appellants’ contention, we find that the Examiner provided a reasonable
basis to conclude that one of ordinary skill in the art would have been
motivated to employ a static mixing device in Purtle’s process based on
Perry’s disclosure that these types of mixers were known in the art and had

2 Cf. Autogiro Co. of Am. v. United States, 384 F.2d 391, 398 (Ct. Cl. 1967)
(“In those instances where a visual representation can flesh out words,
drawings may be used in the same manner and with the same limitations as
the specification.”)
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the advantage of providing enhanced heat transfer and uniform residence
times (Ans. 5).3 See KSR, 127 S.Ct. 1727, 1740 (2007) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976))(“When a patent ‘simply arranges
old elements with each performing the same function it had been known to
perform’ and yields no more than one would expect from such an
arrangement, the combination is obvious.”).

ORDER
The decision of the Examiner rejecting claims 41-44, 133-139, and
141-170 under 35 U.S.C. § 103 as unpatentable over Purtle in view of Perry
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)(i)(iv).
AFFIRMED

cam

3 We note that Purtle references the same edition of Perry’s for a
description of centrifuges useful in the disclosed process. (Purtle, col. 11,
ll. 46-49).

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Application 10/272,486

SCOTT T. PIERING
CARGILL, INC.
P O BOX 5624
MINNEAPOLIS, MN 55440-5624
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