Ex Parte Holahan

Patent Trials and Appeals Board

May 28, 2019

12510504 - (D) (P.T.A.B. May. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/510,504 07/28/2009
1688 7590 05/30/2019
Sandberg Phoenix & von Gontard, PC
120 S. Central Ave.
Suite 1600
St. Louis, MO 63105
FIRST NAMED INVENTOR
John L. Holahan
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.
SITH 9318Dl 2011
EXAMINER
STIJLII, VERA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/30/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTO@sandbergphoenix.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN L. HOLAHAN
Appeal2017-007778
Application 12/510,504
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
MICHAEL G. McMANUS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-007778
Application 12/510,504
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) the Examiner's Final
Rejection of claims 36-502. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b). Hearing is waived in this appeal in a paper dated April
9, 2019.
We AFFIRM and denominate our affirmance as a new ground of
rejection pursuant to 37 CPR §41.50(b).
Appellant's invention is directed to a packaged concentrate thickener
containing fully hydrated xanthan gum. (Spec. ,-J 2; claims 30 and 48).
Claim 30 is illustrative of the issues on appeal:
30. A packaged aqueous concentrate thickener composition suitable for
shipment to a home or institution of a patient having the condition of
dysphagia and suitable for addition from its packaging to a liquid food for
the patient at the home or institution in order to thicken the food and to
facilitate consumption of the food by the patient, the packaged aqueous
concentrate thickener composition consisting essentially of a fully hydrated
thickener and water, the packaged aqueous concentrate thickener
composition being so formulated that when it is mixed with the liquid food,
in a weight no greater than the weight of the liquid food, it renders the food
at least nectar thick without substantially adversely affecting the flavor and
1 The Appeal Brief on page 1 indicates that "Simply Thick, LLC" is the
assignee of record.
2 This application is a divisional of Application No. 10/485,879 which was
the subject of Appeal 2009-00546 in which the Board reversed the
Examiner's 35 U.S.C. § 103(a) rejections that included Zablocki as a
secondary reference.
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Application 12/510,504
appearance of the liquid food, whether the liquid food be water, milk, coffee,
tea, soup, or juice.
Appellant appeals the following rejection:
Claims 30-49 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Atsuko (JP l l-124342A, as translated) in view ofToshihiro (JP 07-
274915A, as translated) and Zablocki (US 6,139,895; Oct. 31, 2000).
FINDINGS OF FACT & ANALYSIS
Claims 30 and 48
The Examiner's findings and conclusions regarding Atsuko,
Toshihiro, and Zablocki are located on pages 2 to 5 of the Final Action.
Appellant argues that the claim limitations that specify that the
packaged concentrate is suitable for shipment to a home or institution and
the packaged concentrated being so formulated that when mixed with a
liquid food the food is rendered nectar thick are functional limitations and
not product-by-process limitations (App. Br. 5-6). We agree with the
Examiner that the packaging for shipment to a home or institution is an
intended use of the packaged thickener product. We disagree, however,
with the Examiner's determination that the claim phrase "the packaged
aqueous concentrate thickener composition being so formulated that when it
is mixed with the liquid food, in a weight no greater than the weight of the
liquid food, it renders the food at least nectar thick without substantially
adversely affecting the flavor ... " is a product-by-process limitation.
Rather, the phrase recites the properties of the concentrate in functional
terms. In other words, the concentrate must be formulated with the fully
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Application 12/510,504
hydrated thickener and water so that the concentrate is capable of rendering
the liquid food at least nectar thick when added in an amount no greater than
the weight of the liquid food.
With this claim construction in mind, we now address the Examiner's
§ 103 rejection. Appellant argues that Atsuko is directed to a composition
that covers a medicine and masks its flavor making it easier to swallow a
medicine (App. Br. 6). Appellant contends that Toshihiro is directed to a
jelly-like beverage that is packaged and meant to be consumed directly from
the package (App. Br. 6-7). Appellant argues that Atsuko and Toshihiro are
each complete compositions intended to be swallowed by a patient without
dilution, with each containing over 8% sweetener and added flavoring (App.
Br. 7). Appellant argues that the flavorant and sweetener would
substantially adversely affect the flavor of the liquid food which is contrary
to what is required by the claim (App. Br. 7).
Appellant does not direct us to a definition of the term "substantially"
in the Specification. Accordingly, we have no basis for determining what
level of sweetener or flavorant would substantially affect the flavor of the
concentrate. Moreover, claim 30 states "without substantially adversely
affecting the flavor." Appellants do not direct us to any standard in the
Specification by which to measure if the thickener addition adversely affects
the flavor. Indeed, the addition of the sweetened thickener may not adversely
affect the flavor of a liquid food, but may make the food more palatable.
Appellant argues that Zablocki is directed to a completely different
composition and the Examiner's reason for combining Zablocki's teachings
with Atsuko's product lacks any basis in Zablocki (App. Br. 7). Appellant
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Application 12/510,504
argues that Zablocki does not teach that by adding fully hydrated xanthan
gum the mixing time and shear can be improved (App. Br . 7 n. 1 ).
We agree that the Examiner's reason for combining Zablocki's
teaching regarding the use of fully hydrated xanthan gum as the xanthan
gum thickener in Atsuko' s product is based on a faulty reading of Zablocki.
Specifically, the Examiner finds that it would have been obvious to combine
Zablocki's fully hydrated xanthan gum for the xanthan gum in Atsuko to
improve mixing time and shear (Final Act. 4). The Examiner finds that
Zablocki at column 5, lines 27 to 32 provides a reason to combine based
upon improved mixing time and shearing (Final Act. 4). Contrary to the
Examiner's finding, Zablocki discloses at column 5, lines 27 to 32 that the
hydration of xanthan gum may be increased by increasing the mixing time or
the shearing. The Examiner's citation to Zablocki does not support the
reason for the modification.
The Examiner finds, however, that Atsuko teaches an embodiment
where water and thickener are combined in amounts that are encompassed
by those recited in claim 48. Claim 30 does not specify any amount of water
or fully hydrated thickener in terms of numerical ranges. The Examiner
finds that Atsuko' s paragraph 18 disclosure indicates that the thickener is
present in an amount from 0.1 to 5% and water is present in an amount from
80% to 99.9% (Final Act. 3). The Examiner finds that Atsuko's paragraph
18 discloses that the composition consists of thickener and water as recited
in claims 30 and 48 (Final Act. 3; Ans. 9). The Examiner finds that Atsuko
and Toshihiro are silent regarding the fully hydrated thickeners (Final Act.
4). The Examiner states, "it is not clear, if the thickeners contained in water
in the amounts corresponding [to] the recited amounts (see dependent
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claims) are fully hydrated or not .... " (Final Act. 4). In other words, the
Examiner finds that Atsuko' s combination of thickener and water may have
resulted in a fully hydrated thickener in combination with the water.
Appellant discloses that xanthan gum in an amount from 2% to 5%
and water are admixed to form a xanthan gum concentrate with a thick paste
or jelly type consistency (Spec. ,i 50). The Specification does not disclose
any necessary procedures for achieving fully hydrated xanthan gum (i.e.,
thickener); simply admixing the xanthan gum and water suffices. The
examples in the Specification, which are disclosed as non-limiting, disclose
that the fully hydrated xanthan gum is produced by agitating a mixture of
22.47 grams of xanthan gum in 477.53 grams of water for about one hour so
that no undissolved particles were visible (Spec. ,i 56). This disclosure
comports with Zablocki's disclosure that full hydration of the xanthan gum
may be expedited by increasing mixing time or shear (Zablocki col. 5, 11.
27-32). In any event, all that is necessary according to the broadest
disclosure of the Specification is mixing of the xanthan gum thickener and
water.
In light of our understanding from the Specification of what
constitutes fully hydrated xanthan gum thickener, we find that Atsuko's
paragraph 18 disclosure of mixing a thickener in an amount from 0.1 to 5%
and water in an amount from 80 to 99.9% would have taught a composition
that meets the claim requirements of a fully hydrated thickener and water.
Atsuko discloses at paragraph 6, mixing the thickening agent and water.
Atsuko discloses that the water and thickener makes a "mucoid or gel" Or 6).
Atsuko' s disclosure of a mixture having the same components in amounts
that overlap or encompass those recited in the claims and possessing the
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Application 12/510,504
same consistency as Appellant's fully hydrated thickener supports that
Atsuko's composition includes fully hydrated thickener (i.e., xanthan gum).
With regard to the recitation that when the material is added to liquid
food in an amount not more than the weight of the liquid food a nectar like
consistency results, Atsuko's identical composition would have been capable
of performing that function. In re Scheiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). In re Papesch, 315 F.2d 381 (CCPA 1963). ("A compound and all
of its properties are inseparable."). The claim limitation is conditioned upon
the composition being added to the liquid food. There is no requirement that
the composition of claims 30 and 48 actually be added to a liquid food.
We find that Toshihiro's teaching regarding the packaging of the
drink composition would have suggested combining such a teaching with
Atsuko's drink composition. Atsuko's drink composition would have to be
packaged if were to be consumed or used by an individual. Toshihiro teaches
suitable packaging for such a thickened drink composition.
Regarding dependent claims 31, 34, 35, 36-39, and 41-47,
Appellant's arguments merely state the claim limitations with an assertion
that Atsuko does not teach the limitation (App. Br. 9-10). Appellant's
argument does not address specifically or otherwise show reversible error
with the Examiner's findings and conclusions with regard to each dependent
claims as described on pages 5 to 7 of the Final Action. With regard to
claim 36 Appellant argues that despite Atsuko's broader thickener range
(i.e., 0.1 to 5 wt.%), Atsuko only exemplifies using about 0.5% thickener
(App. Br. 9). However, Atsuko's disclosure is not limited to the examples
and the broader disclosure would have suggested the claimed composition as
the range of thickener claimed (i.e., 2 to 5 wt.% fully hydrated xanthan gum
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in claim 36) is encompassed by Atsuko's thickener range (i.e., 0.1 to 5 wt.%
thickener, which may be xanthan gum). See In re Mills, 470 F.2d 649, 651
(CCP A 1972) ("[A] reference is not limited to the disclosure of specific
working examples.").
On this record, we affirm the Examiner's rejection over Atsuko,
Toshihiro and Zablocki. Because our affirmance relies on different factual
findings regarding the meaning of fully hydrated xanthan gum, we
denominate our affirmance a new ground of rejection pursuant to 37 CPR§
41.50(b).
DECISION
The Examiner's decision is affirmed with a new ground of rejection
designation.
This Decision contains a new ground of rejection pursuant to 37
CPR§ 41.50(b). 37 CPR§ 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for
judicial review."
37 CPR§ 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must
exercise one of the following two options with respect to the new
ground of rejection to avoid termination of the appeal as to the
rejected claims:
(1) Reopen Prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
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Application 12/510,504
rejected, or both, and have the matter reconsidered by the Examiner,
in which event the proceedings will be remanded to the Examiner, or
(2) Request rehearing. Request that the proceedings be reheard
under§ 41.52 by the Board upon the same record.
ORDER
AFFIRMED & New Ground of Rejection pursuant to§ 41.50(b)
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