Ex Parte HolahanDownload PDFPatent Trial and Appeal BoardFeb 19, 201310542506 (P.T.A.B. Feb. 19, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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. 10/542,506 07/15/2005 John L. Holahan SITH 9317W1 5924 1688 7590 02/19/2013 Polster, Lieder, Woodruff & Lucchesi, L.C. 12412 Powerscourt Dr. Suite 200 St. Louis, MO 63131-3615 EXAMINER JONES, DAMERON LEVEST ART UNIT PAPER NUMBER 1618 MAIL DATE DELIVERY MODE 02/19/2013 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 JOHN L. HOLAHAN __________ Appeal 2011-005740 Application 10/542,506 Technology Center 1600 __________ Before ERIC GRIMES, LORA M. GREEN, and ULRIKE W. JENKS, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 39-45.1 We have jurisdiction under 35 U.S.C. § 6(b). 1 Claims 57-89 are also pending, but stand withdrawn from consideration (App. Br. 5). Appeal 2011-005740 Application 10/542,506 2 STATEMENT OF THE CASE The Specification teaches: Swallowing problems in humans include difficulty in swallowing, inability to swallow, and discomfort in swallowing. These problems are collectively termed dysphagia. Dysphagia is a common unfortunate secondary condition that accompanies (i.e,. is concomitant with) many primary human disease states …. (Spec. 1, ¶ 2.) The Specification teaches further that a way to manage dysphagia is to thicken beverages before consumption, as it “provides better bolus control, greater oral stimulation, and when swallowed, if incompletely propelled into the esophagus, it helps prevent undesired and potentially fatal aspiration of fluids into the lungs” (id. at 2, ¶ 4). The Specification teaches that “[b]everage dispensers are mixing devices which combine a fresh water feed with concentrates to make a final beverage,” wherein “[e]ach stream meets at the nozzle and the nozzle design mixes the streams together to make the final beverage” (id. at 12, ¶ 51). As taught by the disclosure, a thickener concentrate is mixed with fresh potable water, which may then be combined with a beverage concentrate at the nozzle to provide a thickened beverage (id. at 15, ¶ 67). Alternatively, the thickener concentrate, water, and optional beverage concentrate are pumped directly to the nozzle, where they are combined (id. at 15-16, ¶ 68). Appeal 2011-005740 Application 10/542,506 3 Claim 39 is the only independent claim on appeal, and reads as follows: 39. A process for the production of homogenous single phase thickened beverages suitable for consumption by a person suffering from dysphagia, the process comprising connecting a source of aqueous liquid thickener to a dispensing machine that is capable of dispensing non-thickened beverages. The following grounds of rejection are before us for review: I. Claims 39-45 stand rejected under 35 U.S.C. § 112, first paragraph, as containing new matter (Ans. 9). II. Claims 39-45 stand rejected under 35 U.S.C. § 112, second paragraph, as being indefinite (Ans. 10). III. Claims 39-41 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Wierlo2 (Ans. 3). IV. Claims 39-45 stand rejected under 35 U.S.C. § 103(a) as being rendered obvious by the combination of an admission of Appellant, Wierlo, and Uzuhashi3. We reverse. ANALYSIS New Matter The Examiner finds that the phrase “aqueous liquid thickener” in claim 39 constitutes new matter (Ans. 9-10). According to the Examiner, 2 Wierlo, US 3,830,407, Aug. 20, 1974. 3 Uzuhashi et al., US 6,455,090 B1, Sept. 24, 2002. Appeal 2011-005740 Application 10/542,506 4 “review of the specification indicates that reference is made to an ‘aqueous liquid’ (see paragraph [0079]), an ‘aqueous based beverage’ (see paragraph [0016]), and a ‘liquid aqueous food’ (see paragraph [0029]), not an ‘aqueous liquid thickener’” (id. at 9). Appellant argues that “those skilled in the art would instantly recognize that the term ‘aqueous liquid thickener’ means a thickener having a liquid water base” (App. Br. 13). Appellant asserts that the “aqueous liquid thickener” is described throughout the Specification, specifically citing paragraph 54 of the Specification (id. at 14). The disclosure as originally filed need not provide “in haec verba support for the claimed subject matter at issue,” rather, the disclosure should convey to one skilled in the art that the inventor was had possession of the invention at the time of filing. Purdue Pharma L.P. v. Faulding Pharmaceutical Co., 230 F.3d 1320, 1323 (Fed. Cir. 2000) (citations omitted). The Specification teaches: The concentration may vary depending on the equipment and the thickener employed. In an aspect, a sufficient quantity of thickener powder for the concentrate thickener being prepared is admixed with water in a suitable mixing vessel. A preferred mixing vessel comprises a container which is of a size reasonably accommodating the amounts of thickener powder and water desired to be suitably mixed. The vessel typically is a commercially sized tank, the particulars of which are not critical and may or may not include a cover, a particular shape, the presence of baffles, and/or a heat jacket. Other suitable useful mixing vessels include a drinking cup, bowls, household containers which can be open or closed top, a kitchen top mixer system, as well as any suitably sized container which will Appeal 2011-005740 Application 10/542,506 5 accommodate the amount of water and thickener to be suitably admixed. (Spec. 13, ¶ 54.) Thus, we agree with Appellant that the skilled artisan would understand that Appellant had possession of an “aqueous liquid thickener” at the time of filing of the instant disclosure. The Examiner finds further that the disclosure as filed does not provide support for the ranges recited in claims 44 and 45 (Ans. 10). According to the Examiner, “in claim 44, an endpoint of 1 % is not disclosed in the specification,” and in claim 45, “the range 0.3% and 1 % of the beverage are not set forth in the disclosure” (id.). Appellant argues, citing Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991) (“ranges found in applicant’s claims need not correspond exactly to those disclosed in [the specification]; issue is whether one skilled in the art could derive the claimed ranges from the ... disclosure”), that the skilled artisan “could easily derive the claimed ranges from the specification” (App. Br. 15). As to claim 44, Appellant argues that the Specification teaches that “the concentration of thickener in the thickener concentrate is ‘between about 1 and about 10% thickener by weight’” (id. at 16 (quoting Specification ¶ 53)). Thus, Appellant asserts, that claim 44 is only slightly narrower, as it only eliminated the term “about” (App. Br. 16). As to claim 45, Appellant argues that the Specification teaches that the “‘thickener comprises xanthan gum whose concentration ranges from about 0.01 % to about 5% by wt. of a final ready to drink liquid (water Appeal 2011-005740 Application 10/542,506 6 based) food and preferably from about 0.1 % to about 2% of a final ready-to- consume liquid aqueous food’” (id. (quoting Spec. ¶ 29)). We again agree with Appellant that the skilled artisan would have been able to derive the claimed ranges from the disclosure as filed, such that the inventor had possession of the now claimed invention at the time of filing. First, as to claim 44, claim 44 is drawn to “[a] process in accordance with Claim 42 where the xanthan gum is between 1 % and 10% of the thickener concentrate.” The Specification teaches: The amount of thickener employed in a concentrate thickener will depend greatly on the specific thickener chosen, its specific thickening properties, and the processing equipment employed. In general, the amount employed will be an effective amount, such as between about 1 and about 10% thickener by weight. Most typically the amount employed will be between about 1 and about 5% thickener by weight. (Spec. 13, ¶ 53.) Based on the above teaching, we agree with Appellant that the skilled artisan would have understood that Appellant had possession of the range in claim 44 at the time of filing. Claim 45 is drawn to “[a] process in accordance with Claim 42 where the xanthan gum is between 0.3% and 1 % of the beverage.” The Specification teaches: In an aspect, the thickener comprises xanthan gum whose concentration ranges from about 0.01% to about 5% by wt. of a final ready to drink liquid (water based) food and preferably from about 0.1% to about 2% of a final ready-to-consume liquid aqueous food. Appeal 2011-005740 Application 10/542,506 7 (Spec. 7, ¶ 29.) Based on the above teaching, we agree with Appellant that the skilled artisan would have understood that Appellant had possession of the range in claim 45 at the time of filing. Indefiniteness According to the Examiner, the phrase “a source of aqueous liquid thickener” is indefinite (Ans. 10). The Examiner concludes “is unclear if Appellant is referring to an ‘aqueous liquid’ (see specification paragraph [0079]), an ‘aqueous based beverage’ (see specification paragraph [0016]), a ‘liquid aqueous food’ (see specification paragraph [0029]), or the soluble food fiber thickeners of claim 42, for example” (id.). Appellant argues that “in the context of claim 39, it is respectfully submitted that the phrase ‘liquid aqueous thickener’ would be plainly understood by those skilled in the art to mean a water-based liquid thickener concentrate containing sufficient thickener that when it is added to a beverage it makes the beverage suitable for consumption by a person suffering from dysphagia” (App. Br. 17-18). We agree with Appellant. “The standard of indefiniteness is somewhat high; a claim is not indefinite merely because its scope is not ascertainable from the face of the claims.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1342 (Fed. Cir. 2003). Rather, “[a] claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention.” Id. Here, the skilled artisan would have been apprised of the scope of “a source of aqueous liquid Appeal 2011-005740 Application 10/542,506 8 thickener” in view of the teachings of the Specification, and thus we reverse the rejection. As to claim 41, the Examiner concludes that the “claim as written is ambiguous because of the phrase ‘sufficient pressure drop’ …. [as] it is unclear what pressure drop is necessary in order to obtain the desired results of the instant invention” (Ans. 11). Appellant argues that the claim specifies what is meant by a “‘sufficient pressure drop,’” as the claim requires that the “‘beverages exit the dispenser at the correct thickness, with a homogenous appearance and are ready to drink, whether the beverage thickness is increased by inclusion of the thickener concentrate or not’” (App. Br. 19). We agree with Appellant, and reverse the rejection. Anticipation and Obviousness The Examiner rejects claims 39-41 as being anticipated by Wierlo (Ans. 3). The Examiner finds that Wierlo teaches an apparatus for dispensing thickened beverages, wherein the apparatus comprises a dispensing nozzle and a combination agitator-mixer-scraper (id.). The Examiner also finds that Wierlo teaches “that unflavored substances such as ice cream, milkshakes, slush, ice or frozen custard flows toward and exit nozzle the substance comes in contact flavored syrup” (id. at 3-4). The Examiner thus finds that “both Appellant and Wierlo disclose a process for the production of a homogenous single phase thickened beverage comprising connecting a Appeal 2011-005740 Application 10/542,506 9 thickener to a dispensing machine and a switch mechanism for controlling the amount of thickener present” (id. at 4). Appellant argues that the Wierlo does not teach a “process comprising connecting a source of aqueous liquid thickener to a dispensing machine that is capable of dispensing non-thickened beverages” (App. Br. 21). According to Appellant, “Wierlo connects a source of unthickened liquid to a freezer in his dispenser, where he converts the liquid to a partially liquid, partially solid ‘ice cream, frozen custard, milkshakes, slush, ice, etc’” (id. at 22). To anticipate, every element and limitation of the claimed invention must be found in a single prior art reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). Wierlo provides “an improved dispensing freezer the use of which permits the operator to conveniently and selectively dispense from the same machine milkshakes and the like having a variety of flavors” (Wierlo, col. 1, ll. 14-18). The “basic ingredient is stored in an unflavored condition and flavored as it is dispensed” (id. at col. 1. ll. 18-19). Thus, the dispensing machine of Wierlo does not dispense un-thickened beverages, it only dispenses products that have been thickened by freezing. In addition, Wierlo does not teach a process in which a source of aqueous liquid thickener, such as that disclosed in the Specification, is connected to a dispensing machine. Thus, Wierlo does not anticipate claim 39, and the rejection is reversed. As to the obviousness rejection, the Examiner does not rely on either Appellant’s admission or Uzuhashi to remedy the above deficiencies of Appeal 2011-005740 Application 10/542,506 10 Wierlo (see Ans. 5-9). Thus, we reverse the obviousness rejection for the reasons set forth above with respect to the anticipation rejection. SUMMARY The appealed rejections are reversed. REVERSED lp Copy with citationCopy as parenthetical citation