Ex Parte Haindl et al

Board of Patent Appeals and Interferences

Jan 25, 2011

10984187 (B.P.A.I. Jan. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RUDOLF F. HAINDL and HANS MANDL
__________

Appeal 2010-010014
Application 10/984,187
Technology Center 1700
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Before DEMETRA J. MILLS, LORA M. GREEN, and STEPHEN WALSH,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL1
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-5, 7-15, and 17-19. We have jurisdiction
under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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STATEMENT OF THE CASE
Claim 1 is the only independent claim on appeal, and reads as follows:
1. A dairy product of firm consistency having a homogeneous structure
and comprising a plurality of adjacent cells, each cell having
a core comprising a milk protein,
an inner shell around the core, the inner shell comprising milk fat, and
an outer shell around the inner shell, the outer shell comprising gelatin
enriched with at least one component of a milk product.

The following ground of rejection is before us for review:
Claims 1-5, 7-15, and 17-19 stand rejected under 35 U.S.C. § 103(a)
as being rendered obvious by the combination of Christensson2 and Lamb.3
We reverse.
ISSUE
Has the Examiner established by a preponderance of the evidence that
the combination of Christensson and Lamb renders obvious the dairy
product of claim 1?

FINDINGS OF FACT
FF1 The Specification teaches that the present invention is drawn to “a
process for the production of a dairy product containing gelatine and cream
wherein the ingredients are mixed, heated and put into the pack.” (Spec. 1.)
FF2 In the process, “skimmed milk is mixed with the gelatine in a mixing
tank, that mixture is then left to soak and in further succession it is mixed
with the remaining ingredients.” (Id.)

2 Christensson et al., WO 92/22215, published December 23, 1992.
3 Lamb, GB 1,467,422, published March 16, 1977.
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FF3 Specifically, the Specification teaches:
In step I skimmed milk 1 is heated in a mixing tank 2 to a
temperature which is between 25 ºC and 40 ºC. A food gelatine
2 in granule form can then be stirred into that heated skimmed
milk 1 with a turbomixer, for example of the Ytron type. . . . .
After the gelatine is stirred into the skimmed milk the
mixture is left to soak for at least 15 minutes and preferably
approximately half an hour. After that soaking operation the
mixture is heated for about 1 minute at about 60 ºC in order to
promote mixing of the gelatine with the skimmed milk.
In step III cream 3 with for example 15% by weight of
fat is added. In further succession, in this preferred
embodiment, high-fat cream 5 is added in step IV to that
mixture which contains at least cream and gelatine enriched
with skim milk and which has a fat content of about 13%-14%,
in order to obtain an end product with a fat content of about
15%.

(Id. at 4.)
FF4 The Examiner’s statement of the rejection may be found at pages 3-4
of the Answer.
FF5 Specifically, the Examiner finds that Christensson teaches “a product
comprising cream, skim milk, and gelatin, wherein the gelatin is dissolved
with the skim milk prior to the addition of the cream.” (Ans. 3 (citing Claim
1 and the Example of Christensson).)
FF6 Specifically, Christensson teaches in the Example that “[i]n order to
simplify the adding of gelatin and salt, these are suitably first mixed with
part of the water/skim milk at a temperature at which the gelatin is melted
and liquid.” (Christensson, p. 6.)
FF7 The Examiner finds that Lamb teaches “a packaged whipping cream
comprising gelatin, cream, and separated milk, where the gelatin is blended
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with the separated milk prior to the addition of the cream and further
processing.” (Ans. 3 (citing Lamb, claims 1 and 8).)
FF8 Claims 1 and 8 of Lamb are reproduced below:
1. A method of stabilizing whipping cream comprising the
steps of dispersing a stabilizer in one or a mixture of separated
milk, low fat cream, milk, and water; and blending the stabilizer
dispersion with high-fat cream of a known percentage fat in a
predetermined ratio to form stabilized cream.

8. A method as claimed in any preceding claim wherein the
stabilizer is one or a mixture of gelatine, sodium
carboxymethylcellulose, carregheenan, sodium alginate or
xanthan gum.

FF9 The Examiner notes that the “claims appear to differ as to the gelatin
characteristics . . . .” (Ans. 4.)
FF10 The Examiner concludes that “[i]n the absence of a showing to the
contrary, the gelatin characteristics . . . would be obvious to that of
Christensson . . . and Lamb as the gelatin utilized is conventional in the art.”
(Id.) The Examiner concludes that the “production of a cellular structure
would be no more than obvious to that of Christensson . . . and Lamb as the
same components are used.” (Id.)

PRINCIPLES OF LAW
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d 977,
988 (Fed. Cir. 2006). Thus, while the analysis under 35 U.S.C. § 103 allows
flexibility in determining whether a claimed invention would have been
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obvious, KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still
requires showing that “there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. An invention
“composed of several elements is not proved obvious merely by
demonstrating that each of its elements was, independently, known in the
prior art.” Id. The obviousness analysis “should be made explicit,” and it
“can be important to identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” Id. “We must still be careful not to allow
hindsight reconstruction of references to reach the claimed invention without
any explanation as to how or why the references would be combined to
produce the claimed invention.” Innogenetics, N.V. v. Abbott Labs., 512
F.3d 1363, 1374 n.3 (Fed. Cir. 2008).
In general, a limitation is inherent if it is the “natural result flowing
from” the explicit disclosure of the prior art. Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1379 (Fed. Cir. 2003). “Inherency . . . may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
MEHL/Biophile Int'l. Corp. v. Milgraum, 192 F.3d 1362, 1365 (Fed. Cir.
1999)( quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)).

ANALYSIS
Appellants argue that the Examiner has not set forth a prima facie case
of obviousness. (App. Br. 3.) Appellants argue that both Christensson and
Lamb “are completely silent as to the cellular structure of the disclosed
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products.” (Id.) Appellants assert further that “the Examiner has not
provided any reasoning whatsoever as to how the ‘use of gelatin’ would
render obvious a plurality of cells” as required by claim 1. (Id. at 5.)
We agree with Appellants that the Examiner has failed to set forth a
prima facie case of obviousness. While we agree with the Examiner that
Christensson and Lamb teach dairy products comprising a milk product and
gelatin, the Examiner has not provided any reasoning as to why the addition
of gelatin would result in a dairy product having the structure required by
claim 1.
To the extent that the Examiner is relying on inherency (see Ans. 5
(“It is not seen how the claimed product differs from that of the prior art.”),
the Examiner has not provided an explanation as to why the claimed
structure would be inherent. Stated differently, while the Examiner notes
that Christensson and Lamb teach the addition of gelatin to skim milk or
separated milk, the Examiner has provided no evidence or scientific
reasoning as to why the ordinary artisan would expect the structure of the
dairy product required by claim 1 to result from that step alone.

CONCLUSION OF LAW
We conclude that the Examiner has not established by a
preponderance of the evidence that the combination of Christensson and
Lamb renders obvious the dairy product of claim 1. We thus reverse the
rejection of claims 1-5, 7-15, and 17-19 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Christensson and Lamb.

Appeal 2010-010014
Application 10/984,187

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REVERSED

alw

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