Ex Parte Horiuchi

Patent Trial and Appeal Board

May 18, 2017

12516700 (P.T.A.B. May. 18, 2017)

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.
12/516,700 06/05/2009 Hiroshi Horiuchi 17291/022001 1184
22511 7590 05/22/2017
O SH ATT ANfi T I P
EXAMINER
TWO HOUSTON CENTER DUBOIS, PHILIP A
909 FANNIN, SUITE 3500
HOUSTON, TX 77010 ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/22/2017 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):
docketing@oshaliang.com
hathaway@oshaliang.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL
AND APPEAL BOARD
Ex parte HIROSHI HORIUCHI
Appeal 2016-007061
Application 12/516,700
Technology Center 1700
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
AVELYN M. ROSS, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-007061
Application 12/516,700
Appellant appeals under 35 U.S.C. § 134(a) the final rejection of
claims 1—5, 7, 8, 10-14, 16, 17, and 19—21. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellant’s invention is directed to a method for producing fermented
milk with enough hardness and smoothness, such as set-type yogurt, that
includes a step of applying an ultrahigh temperature (UHT) treatment after
deoxygenating a yogurt mixture (Spec. 11).
Claim 1 is illustrative:
1. A method for producing fermented milk using a yogurt mix, the
method comprising:
a first deoxygenating step of decreasing an oxygen concentration in a
raw milk comprising 9.5 wt% or less of Solids not fat to produce the yogurt
mix;
an ultra high temperature sterilization step of heating the yogurt mix
for a duration longer than 1 second at a temperature higher than 110 degrees
Celsius to produce a sterilized raw milk; and
a fermentation step of fermenting a starter raw milk that is prepared
by adding a starter to the sterilized raw milk to produce the fermented milk,
wherein the fermented milk is set type yogurt.
Appellant appeals the following rejection:1
1 The Examiner withdrew the 35 U.S.C. § 103(a) rejection of claims 1-5, 7,
8, 10-14, 16, 17, and 19-21 over Kamiya in view of Brabandere and Anon
(Ans. 6).
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Appeal 2016-007061
Application 12/516,700
Claims 1—5, 7, 8, 10-14, 16, 17, and 19—21 are rejected under 35 U.S.C. §
103(a) as unpatentable over Horiuchi (US 2006/0040016 Al, pub. Feb. 23,
2006) in view of Charm (US 4,975,246, pat. Dec. 4, 1990) and Anon (Anon,
Yogurt Production, Cornell University,
http://www.milkfacts.info/Milk%20Processing/Yogurt%20Production.htm.).
Appellant argues independent claim 1 only (App. Br. 9-13).
FINDINGS OF FACT & ANALYSIS
The Examiner’s findings and conclusions regarding Horiuchi, Charm
and Anon are located on pages 2 to 6 of the Answer.
Appellant argues that the claims are limited to forming “set-type
yogurt” which is a term of art that does not include milk beverages or soft
yogurts (App. Br. 10). Appellant argues that the recited steps in claim 1 that
include deoxygenating the yogurt mix before the UHT treatment results in
the unexpected result of producing yogurt with sufficient hardness to be
called set-type yogurt (App. Br. 11). Appellant contends that none of the
prior art teaches a deoxygenating step before the sterilization step (i.e., the
high temperature short time or UHT step) (App. Br. 11). Appellant argues
that the applied prior art teaches applying the sterilization step before the
fermentation step, not the deoxygenation step. Id. Appellant contends that
one of ordinary skill in the art would not have combined Charm’s UHT step
with Horiuchi because Appellant’s Figure 1 shows that applying UHT does
not produce yogurt having sufficient hardness (App. Br. 13). Appellant
contends that Horiuchi, Charm and Anon fail to teach the beneficial use of a
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Appeal 2016-007061
Application 12/516,700
deoxygenation step in combination with UHT when the solids-not-fat
concentration is 9.5% or lower. Id.
Appellant’s arguments fail to address specifically the Examiner’s
finding that Horiuchi teaches in 118 that the deoxygenation step may be
applied at any period of production up to fermentation (Ans. 10). Horiuchi
discloses that deoxygenation may be performed at the stage of blending the
raw material mix (| 18). Horiuchi’s disclosure is not limited solely to the
examples where the deoxygenation is done prior to fermentation as argued
by Appellant. Rather, Horiuchi’s broader disclosure would have included a
step of deoxygenating the mixture after blending the raw material mix and
before heat treatment. Horiuchi exemplifies using a sterilizing heat
treatment prior to inoculating the yogurt mixture for fermentation (| 28).
We are unpersuaded by Appellant’s argument that one of ordinary
skill in the art would not have combined Charm’s UHT process with
Horiuchi because Appellant’s Figure 1 shows that acceptable curd tension
(i.e., 30 g) would not be achieved. As found by the Examiner, Figure 1 also
shows that when a deoxygenation step is applied to usual UHT treated milk,
an acceptable curd tension is achieved (Ans. 8). Appellant’s Figure 1 show
two groupings of milk. The grouping on the left-hand side of the Figure
shows how a milk treated in the usual way with UHT or HTST or milk
treated with UHT after deoxygenating would ferment at 43 °C. The grouping
on the right-hand side of Figure 1 shows the results for the same types of
milk except that fermentation occurs at low temperature (i.e., 37°C). The
right-hand side of Figure 1 shows that when UHT-treated milk is low
temperature fermented and deoxygenated an acceptable curd tension is
achieved. In other words, Appellant’s alleged criticality of deoxygenating
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Appeal 2016-007061
Application 12/516,700
prior to UHT treatment and argument that it was surprising/unexpected to be
able to produce yogurt with acceptable curd tension using UHT treated milk
are undermined by Appellant’s Figure 1.
Regarding, Appellant’s argument that Horiuchi, Charm and Anon fail
to teach the beneficial use of a deoxygenation step in combination with UHT
when the solids-not-fat concentration is 9.5% or lower, the Examiner finds
and Appellant does not dispute that Anon teaches that all yogurt must have
at least 8.25% solids not fat content (Ans. 12-13). Accordingly, the use of
raw mix having less than 9.5 wt% solids not fat would have been obvious if
a person desired to make yogurt as in Horiuchi that is suitable for
consumption as a yogurt.
On this record, we affirm the Examiner’s § 103 rejection.
DECISION
The Examiner’s decision 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)(l)(iv).
ORDER
AFFIRMED
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