Ex Parte Gutknecht et al

Patent Trial and Appeal Board

May 27, 2016

13037292 (P.T.A.B. May. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/037,292 02/28/2011
78298 7590 05/31/2016
JayM. Brown
JAY BROWN LAW FIRM
P.O. Box 1407
Cary, NC 27512
FIRST NAMED INVENTOR
Jon R. Gutknecht
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
FFlOOOlUSU 6589
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAILDATE DELIVERY MODE
05/31/2016 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 JON R. GUTKNECHT and JOHN B. OVITT
Appeal2015-000589
Application 13/03 7 ,292
Technology Center 1700
Before BEYERL YA. FRANKLIN, N. WHITNEY WILSON, and
WESLEY B. DERRICK, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
November 5, 2013, decision finally rejecting claims 1, 2, 5-16, 18-22, and 24
("Final Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We reverse.
1 Appellants identify the Real Party in Interest as Franklin Foods Holdings
Inc. (Appeal Br. 3).
Appeal2015-000589
Application 13/037 ,292
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to a 10-step process for making cheese
(Abstract). Details of the claimed process are set forth in representative claim 1,
which is reproduced below from the Claims Appendix (step numbers and
emphasis added):
1. A process, comprising:
( 1) providing a dilute aqueous liquid acid whey protein
composition having a pH being equal to or less than about 5 .1 and
containing acid whey proteins;
(2) filtering the dilute aqueous liquid acid whey protein
composition, forming a concentrated aqueous liquid acid whey
protein composition containing acid whey proteins;
(3) combining together the concentrated aqueous liquid acid
whey protein composition and an edible caustic composition in
suitable proportions to increase the pH to a substantially neutral
pH being within a range of between about 6.5 and about 7.5;
( 4) heating the concentrated aqueous liquid acid whey
protein composition having the substantially neutral pH to an
elevated temperature to denature the acid whey proteins, forming a
concentrated aqueous liquid denatured acid whey protein
composition;
( 5) providing a milk composition containing butterfat and
substantial concentrations of native casein and whey proteins;
( 6) combining together the milk composition and the
concentrated aqueous liquid denatured acid whey protein
composition, forming a dairy mix containing butterfat and a
protein composition including native casein and whey proteins and
denatured acid whey proteins;
(7) inoculating the dairy mix with lactic acid - producing
bacteria;
(8) culturing the lactic acid - producing bacteria in the dairy
mix, forming a curd and a whey;
(9) separating the curd from the whey; and
(10) recovering the curd as a cheese product.
2
Appeal2015-000589
Application 13/037 ,292
DISCUSSION
Claims 1, 2, 5-16, 18-22, and 242 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Brooks3 in view of Cha. 4 Appellants limit their
arguments to claim 1 (see Appeal Br. 5-10). Accordingly, our analysis will
focus on the rejection of claim 1 over Brooks in view of Cha.
Appellants argue that the Examiner has not established that step ( c) of
claim 1 is taught or suggested by the prior art (see, e.g., Appeal Br. 7-9).
The Examiner finds that Brooks discloses "adjusting the pH of the acid whey
to ensure that the desired range is targeted and the finished product does not
have an acidic or sour flavor" (Final Act. 6, citing Brooks i-f 29). Therefore,
according to the Examiner, a person of ordinary skill in the art "would have
been motivated to adjust, in routine processing, the pH of the acid whey
composition to obtain a desired flavor in the finished product" (Final Act. 6).
Appellants also contend that performing step ( c) - increasing the pH
of the concentrated aqueous liquid acid whey protein composition to between
about 6.5 and 7 .5 - before performing step ( d) - heating the composition
from step ( c) to denature the acid whey proteins - provides certain
advantages, as set forth in Paragraph 16 of the Specification (Appeal Br. 6).
In response, the Examiner finds that Brooks discloses that flavor and
microbial stability are a function of pH which would provide a person of skill
in the art with a reason to adjust the pH to the claimed value of about 6.5 to
7.5 (Ans. 6-7, citing Brooks i-fi-128 and 29). The Examiner finds that because
2 The rejection of claim 24 under 35 U.S.C. § 112, first, second, and fourth
paragraphs has been withdrawn. Advisory Action mailed February 11,
2014.
3 Brooks et al., U.S. Patent Pub. 2008/0160133 Al, published July 3, 2008.
4 Cha et al., U.S. Patent Pub. 2004/0219273 Al, published November 4, 2004.
3
Appeal2015-000589
Application 13/037 ,292
Brooks teaches that flavor is a function of pH, a person of skill in the art
might have sought to increase the pH to the claimed range, and that any
resulting microbial problems could be addressed with anti-microbial agents
or storage conditions (Ans. 7).
However, as noted by Appellants, Brooks specifically states that pH
levels above 5.5 make the composition "more susceptible to microbial
growth" (Brooks i-f 29). Moreover, Brooks also teaches that the final pH of
its composition is generally lower than 5.5, and preferably from about 4.2 to
5.3. Cha also discloses that its composition has a pH of about 3.5 to about
5.5 (Cha i-f 19). The Examiner has not pointed to anything specific in Brooks
or Cha which would have suggested raising the pH to the claimed range of
about 6.5 to 7.5.
In order to sustain an obviousness rejection, the Examiner must
provide articulated reasoning with some rational underpinning to support a
legal conclusion of obviousness. In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006). The evidence of record does not establish that it would have been
obvious to raise the pH in step (c) to a value from about 6.5 to about 7.5. The
cited art indicates that a maximum pH of 5.5 is generally preferred, and does
not provide any incentive or reason to raise the pH to a value of 6.5 to 7.5.
Therefore, we reverse the rejection of claim 1. Because all of the
remaining claims on appeal depend from claim 1, we also reverse the
rejection of the remaining claims.
4
Appeal2015-000589
Application 13/037 ,292
CONCLUSION
We REVERSE the rejection of claims 1, 2, 5-16, 18-22, and 24 over
Brooks in view of Cha.
REVERSED
5