Ex Parte Hussein

Board of Patent Appeals and Interferences

Jun 30, 2008

10443085 (B.P.A.I. Jun. 30, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte AHMED HUSSEIN
____________

Appeal 2008-1519
Application 10/443,085
Technology Center 1700
____________

Decided: June 30, 2008
____________

Before BRADLEY R. GARRIS, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 19-35. We have jurisdiction under 35 U.S.C. §
6(b).

Appeal 2008-1519
Application 10/443,085

I. BACKGROUND
According to the Specification “[t]he invention is directed to a
pourable dessert liquid product comprising a dairy or non-dairy protein
source, fat, sweetener, stabilizer, emulsifier, and a flavoring agent.” (Spec. 1,
¶ 1.) This pourable dessert liquid product may be used to form dessert
cakes (such as “Tres Leches” type cakes, sponge cakes soaked with a blend
of three milks), ready-to-use nutritious beverages, and any food products
where condensed and/or evaporated milk is called for (Spec. 1 ¶¶ 2-3 and 3,
¶ 1). Moreover, the liquid dessert product may be frozen (Spec. 1, ¶ 3 and 3,
¶ 2). The claims are directed to liquid dessert compositions (e.g. claim 19),
a dessert product of cake and the liquid dessert composition (e.g. claim 20),
a process of making liquid dessert compositions (e.g., claim 29), and a
frozen dessert composition (e.g., claim 31). Claims 19, 20, 29, and 31 are
illustrative of the products and process:
19. A ready-to-use liquid dessert composition comprising:

about 4 to 12 wt % of a protein source;
about 4 to 12 wt % fat;
about 10 to 25 wt % sweetener;
between 0.01 % and 1 wt % stabilizer; and
about 0.05 to 1 wt % emulsifier.

20. A dessert comprising cake and the liquid dessert composition of
claim 19, wherein the weight ratio of the cake to the liquid dessert
composition ranges from 1:1 to 1:2.5.

29. A process of making a ready-to-use liquid tres-leches dessert
composition comprising:

forming a dry blend of protein, stabilizer, emulsifier and
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optional dry sweetener;

preparing an aqueous solution of the dry blend with water
and optional liquid sweetener;

heating the aqueous solution; and
adding fat to the aqueous solution,
wherein the composition comprises:

about 2% to about 20% protein;
about 4 to about 12% fat;
about 10% to about 25% sweetener;
between 0.01 % and 1 wt % stabilizer; and
about 0.05 to about 1% emulsifier

31. A frozen dessert composition comprising:
about 8% protein;
about 8% fat;
about 19% sweetener;
about 0.03% stabilizer; and
about 0,3% emulsifier.

The Examiner maintains the following rejections:1
A. Claims 19-35 rejected under the judicially created doctrine of
obviousness-type double patenting as unpatentable over claims 1-3, 8,
12-15, 17, 18, 20, 21, 34, and 42 of US 6,569,485 B2 issued on May
27, 2003 to Hussein;
B. Claims 33-35 rejected under 35 U.S.C. § 112, ¶ 1 for lack of written
descriptive support;

1 The Examiner has withdrawn the rejection of claims 33-35 under 35 U.S.C
§ 112, ¶ 1 for lack of enablement (Ans. 2).
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C. Claims 19, 21-23, and 33-35 under 35 U.S.C. § 102(b) as anticipated
by Gilmore (US 4,208,444 issued Jun. 17, 1980 to Gilmore et al.);
D. Claims 20, 24-28, 31, and 32 under 35 U.S.C. § 103(a) as
unpatentable over Gilmore in view of Bundus (US 4,307,123 issued
Dec. 22, 1981 to Bundus); and
E. Claims 29 and 30 under 35 U.S.C. § 103(a) as unpatentable over Dell
(US 4,451,492 issued May 29, 1984 to Dell et al.) in view of Bundus.

II. DISCUSSION

A. Obviousness-type Double Patenting
Appellant advances no arguments against the obviousness-type double
patenting rejection (Br. 8-14; Reply Br. 3).2 We, therefore, summarily
affirm with respect to this rejection.

B. Written Descriptive Support
The Examiner finds that there is no written descriptive support for the
language “wherein the composition produces an unstable foam when
whipped” as recited in claim 33 (Ans. 5).
Appellant contends that there is inherent support in the description
and in the examples of the Specification. In addition, Appellant relies upon
the Perks Declaration as evidence that Examples 1 and 2 of the original
Specification produce the required unstable foam when whipped (Br. 9).
The Examiner responds that “unstable” is a relative term undefined by
Appellant, claims 33-35 do not preclude a whipping agent, but require a

2 Citations to the Brief are to the corrected Appeal Brief filed May 1, 2007.
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stabilizer, and it is unclear how the claimed composition can be unstable
when whipped when, in fact, the claims require a stabilizer (Ans. 8).
The issue to be resolved is: has Appellant overcome the Examiner’s
finding of lack of written descriptive support by showing that the claimed
property is inherently described in the examples of the original
Specification?
We answer that question in the affirmative.
As a first matter, by pointing to the fact that the Specification did not
disclose the unstable foaming limitation, the Examiner satisfied the initial
burden of presenting evidence or reasons why those of ordinary skill in the
art would not recognize in the disclosure a description of the invention
defined by claims 33-35. See In re Wertheim, 541 F.2d 257, 263-64 (CCPA
1976) (“we are of the opinion that the PTO has the initial burden of
presenting evidence or reasons why persons skilled in the art would not
recognize in the disclosure a description of the invention defined by the
claims. By pointing to the fact that claim 1 reads on embodiments outside
the scope of the description, the PTO has satisfied its burden.”). Therefore,
the burden shifted to Appellant to show written descriptive support. Id. at
264. Appellant may meet that burden by showing that what is claimed is
inherently present in what was originally disclosed in the Specification. Id.
at 264; see also Kennecott Corp. v. Kyocera Int'l, Inc., 835 F.2d 1419, 1421-
22 (Fed. Cir.1987) (parent application's lack of express disclosure of
inherent "equiaxed microstructure" property did not deprive c-i-p's claims to
a sintered ceramic body having said property of the benefit of parent's filing
date).
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Perks indicates that she reproduced Examples 1 and 2 of the
Specification (Perks Dec. ¶ ¶ 4-5), whipped the resulting compositions for
15 minutes (Perks Dec. ¶ 8), and observed that “[n]either Example 1 nor
Example 2 of the subject application produced a stable foam; they could not
form peaks, as is characteristic of a stable foam. Whipping was continued to
20 minutes and still no peaks formed.” (Perks Dec. ¶ 9). There is no dispute
that the Perks Declaration faithfully reproduces Examples 1 and 2 of the
Specification (Ans. 8), rather the Examiner questions the meaning of
“unstable” and questions how the composition can be unstable given the
presence of a stabilizer in the composition. However, Appellant’s
experimental evidence shows that, in fact, the stabilizer levels in Examples 1
and 2 are not great enough to allow the formation of peaks (Perks Dec. ¶ 9).
Moreover, Appellant points out that those of ordinary skill in the art
understood the meaning of “unstable foam” as incapable of forming peaks
and, in fact, Gilmore, one of the references applied as prior art evidence of
unpatentability, equates foam stability with “the ability to hold shape.”
(Gilmore, col. 1, ll. 21-25). The totality of the evidence weighs in favor of a
conclusion that the composition of Examples 1 and 2, when whipped,
inherently produces an unstable foam.
Appellant has overcome the Examiner’s finding of lack of written
descriptive support by showing that the claimed property is inherently
described in the examples of the original Specification and the Examiner has
not sufficiently rebutted the Appellant’s evidence of inherency.
We, therefore, do not sustain the rejection of claims 33-35 under 35
U.S.C. § 112, ¶ 1 for lack of written descriptive support.

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C. Anticipation by Gilmore
The Examiner rejects claims 19, 21-23, and 33-35 as anticipated by
Gilmore. Appellant separately argues two claim groupings: group (1)
claims 19 and 21-23 and group (2) claims 33-35. We select one claim from
each group to decide the issues on appeal. For the first group we select
claim 19, for the second we select claim 33.
1. Group (1): Claims 19 and 21-23
Claim 19 is directed to a composition containing a protein source, fat,
sweetener, stabilizer, and emulsifier in specific concentration ranges. The
Examiner finds that Gilmore describes the claimed composition in column 2,
lines 45-51. In this regard, the Examiner acknowledges that several of
Gilmore’s concentration ranges merely overlap the claimed concentration
ranges (Ans. 5-6). Specifically, Gilmore’s protein range, about 1-5%,
merely overlaps the about 4-12% range of claim 19; Gilmore’s stabilizer
range, about 0.20-2.2%, merely overlaps the between 0.01-1% range of
claim 19; and Gilmore’s emulsifier range of about 0.1-1.2% merely overlaps
with the about 0.05-1% range of claim 19.
Appellant contends that, in a case such as this, where multiple ranges
merely overlap with the claimed ranges and none of the reference examples
fall within the range of the claims, there can be no anticipation, citing
Atofina v. Great Lakes Chemical Corp., 441 F.3d 991, 999 (Fed. Cir. 2006)
(Br. 11-12).
The Examiner responds that
Appellant's reliance on Atofina, to support appellant's
contentions with respect to the 35 U.S.C. 102(b) rejection, is
not convincing. Although the range of each of Gilmore et al's
composition components merely overlap the range of each
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component claimed by appellant, as appellant contends, such an
overlap is sufficient to anticipate each of appellant's claimed
ranges since any point disclosed in a prior art reference which is
within a claimed range is sufficient to anticipate such a claimed
range.
(Ans. 8).
The law of anticipation does not support the Examiner’s position. In
order to anticipate, a reference must identify something falling within the
claimed subject matter with sufficient specificity to constitute a description
thereof within the purview of § 102. In re Schaumann, 572 F.2d 312, 317
(CCPA 1978). A genus including an untold number of species does not
anticipate a much smaller claimed species or sub-genus. See In re Meyer,
599 F.2d 1026, 1032 (CCPA 1979) (holding that the genus of “alkaline
chlorine or bromine solution” of the reference did not “describe”, within the
meaning of § 102, the claimed species of alkali metal hypochlorite “since the
genus would include an untold number of species.”). Where a reference
embraces a very limited number of compounds closely related to one another
in structure, that reference provides a description of those compounds just as
surely as if they were identified in the reference by name and, therefore,
anticipates each of those compounds. Schaumann, 572 F.2d at 315. But in
the case of numerical ranges of concentrations for an ingredient, there are an
untold number of possible concentrations within the range, and in such a
case the broader ranges and overlapping ranges may not “describe” a much
narrower or overlapping claimed range. See Atofina v. Great Lakes Chem.
Corp., 441 F.3d 991, 1000 (Fed. Cir. 2006) (broader prior art temperature
range of 100-500°C did not describe the narrower claimed range of 330-
450°C “with sufficient specificity to anticipate” nor did the overlapping
prior art oxygen to methylene chloride molar ratio of 0.001-1.0% describe
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“with sufficient specificity” the claimed 0.1-5.0 % molar ratio). Moreover,
the rejection here requires the selection of concentrations from multiple
ranges that merely overlap. Such picking and choosing is not permitted in
the context of anticipation. See In re Arkley, 455 F.2d 586, 587 (CCPA
1972) (picking and choosing amongst various possible suggested
combinations may be entirely proper in the making of a 103, obviousness
rejection, where the applicant must be afforded an opportunity to rebut with
objective evidence any inference of obviousness which may arise from the
similarity of the subject matter which he claims to the prior art, but it has no
place in the making of a 102, anticipation rejection.).
We determine that the Examiner failed to establish that Gilmore
sufficiently specifically describes, within the meaning of § 102, a
composition having the claimed ingredients in the ranges required by the
claims.

2. Group (2): Claims 33-35
With respect to claim 33, this claim requires that the composition
“produces an unstable foam when whipped.” The Perks Declaration shows
that Gilmore produces a stable foam when whipped (Perks Dec. ¶ 10).
Furthermore, Gilmore expressly teaches that the composition is “whippable”
and produces a stable foam (Gilmore, title; col. 2, l. 31; Example 1).
We determine that the Examiner failed to establish that Gilmore
sufficiently specifically describes, within the meaning of § 102, a
composition having the claimed ingredients in the ranges required by claim
33 which produces an unstable foam when whipped.

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3. Conclusion
We do not sustain the rejection of claims 19, 21-23, and 33-35 as
anticipated by Gilmore.

D. Obviousness over Gilmore and Bundus
The Examiner rejects claims 20, 24-28, 31 and 32 under 35 U.S.C. §
103(a) as unpatentable over Gilmore in view of Bundus.
Appellant contends that “[n]one of the compositions of claims 19-28
and 31-35 are obvious over Gilmore” because one of ordinary skill in the art
“would not be motivated to make the particular selections necessary to
obtain the claimed invention for at least the reason that Gilmore is directed
to a completely different type of composition with very different properties”
than the claimed composition, and “Bundus fails to remedy the deficiencies
of Gilmore for at least the reason that Bundus does not provide motivation to
alter the special properties of Gilmore that make it fundamentally different
from the claimed invention.” (Br. 13). We note that in support of
Appellant’s position that the composition is “completely different” than the
claimed composition, Appellant argues that “the claimed composition is a
liquid dessert composition (claim 19) that produces an unstable foam when
whipped (claim 33).”
As a first matter, we note that Appellant’s argument that the
composition is completely different than the claimed composition focuses on
a non-rejected limitation, i.e., the unstable foam formation limitation of
claim 33. None of the rejected claims are limited to compositions which
form unstable foams. The rejected claims, i.e., claims 20, 24-28, 31, and 32
are directed to liquid dessert compositions (claims 24, 26-28), a dessert
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comprising cake and a liquid dessert composition (e.g., claims 20 and 25),
and a frozen dessert (claims 31 and 32). Gilmore and Bundus are directed to
dessert compositions having the same basic ingredients as claimed. While
the Gilmore and Bundus compositions are whippable, none of the rejected
claims exclude whippable compositions.
Further Appellant contends that
there would have been no motivation to "modify the amount of
protein used in the composition in order to obtain a stable
emulsion" because Gilmore's composition is already stable. In
addition, there would have been no motivation to modify
Gilmore by decreasing the amount of stabilizer because to do so
would cause it to no longer be whippable, which would render
it unsuitable for its intended purpose.
(Reply Br. 3).
This argument appears to be directed to the Examiner’s rejection of claims
24 and 31. With respect to claims 24 and 31, the Examiner finds that
Gilmore describes a composition with the claimed ingredients and that while
Gilmore does not disclose the claimed concentrations of protein and
stabilizer, it would have been obvious to modify the amount of protein to
obtain a stable emulsion, this purpose being taught by Bundus, and it would
have been obvious to modify the amount of stabilizer based on the fact that
the amount of stabilizer can vary widely, as disclosed by Bundus (Ans. 6-7).
The issue to be resolved is: has Appellant shown that the Examiner
reversibly erred in concluding that it would have been obvious to one of
ordinary skill in the art to formulate a dessert composition with the claimed
ingredients in amounts within the claimed ranges?
Gilmore teaches a whippable dessert topping composition including a
water-dispersible or soluble protein (col. 4, ll. 23-24) and a stabilizing gum
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(col. 3, ll. 58-59) as well as fats, sweeteners, and emulsifiers (col. 2, ll. 45-
51). Gilmore does not specify the purpose of the protein. The function of
the stabilizer is “to offer bodying and water binding properties to the
combination, and also to significantly improve the ability of the composition
to withstand freezing and thawing without adverse effects.” (Col. 4, ll. 3-7).
In a preferred embodiment, the whippable topping composition contains
about 1-5 % of the edible protein and about 0.20-2.2% stabilizer (col. 2, ll.
45-51).
Bundus teaches a dessert composition similar to that of Gilmore, i.e.,
it contains protein, fat (lipid material), stabilizer, sweetener, and optionally
emulsifier (compare Bundus, col. 1, l. 66 to col. 2, l. 9 and col. 3, ll. 64-67
with Gilmore, col. 2, ll. 45-51) that is whippable and can be frozen (Bundus,
col. 2, ll. 14-17). Bundus teaches that “[t]he protein is used in an amount
sufficient when combined with the other ingredients of the composition to
provide a stable emulsion. The amount of protein depends on the source and
quality of the protein as well as the type of final product desired” and
Bundus provides guidance on levels for different protein sources and desired
products (Bundus, col. 2, ll. 49-63). Bundus also teaches that the amount of
stabilizer “is that amount sufficient to prevent ice crystal growth without
substantially affecting the taste and mouth feel of the final composition.
Since some stabilizers are more effective than others, the amount used can
vary widely. Exact amounts can be easily determined by one skilled in the
art.” (Bundus, col. 4, ll. 29-44).
Based on the above guidance provided by Gilmore and Bundus, those
of ordinary skill in the art would have understood that the concentration of
protein and stabilizer in whippable, freezable dessert compositions is
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dependent on the specific protein source and stabilizer compound selected as
well as the properties desired in the end product. The evidence also suggests
that optimal concentrations for such dessert compositions were obtained by
experimentation which is routine and within the capabilities of those of
ordinary skill in the art. See KSR Int’l. Co. v. Teleflex Inc., 127 S. Ct. 1727,
1740 (2007) (stating that “if a technique has been used to improve one
device, and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill”). Under the
circumstances, the burden shifts to Appellant to show the result would have
been unexpected to one of ordinary skill in the dessert formulation art. See
In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[I]t is not inventive to
discover the optimum or workable ranges by routine experimentation.”); In
re Boesch, 617 F.2d 272, 276 (CCPA 1980) (a prima facie case of
obviousness may be rebutted where the result of optimizing a result effective
variable are unexpectedly good).
While the Examiner limited the rejection to claims 20, 24-28, 31, and
32, we note that Gilmore and Bundus also serve as evidence that the
compostions of claims 19 and 21-23 would have been obtainable through
routine experimentation as discussed above. This is particularly so since the
references describe using the ingredients in ranges overlapping those of
claim 19. We note that Gilmore suggests the use of non fat dry milk as
required by claim 21 (col. 4, l. 27); the use of corn syrup and sucrose as
sweeteners as required by claim 22 (col. 3, ll. 48-51); the use of palm kernel
oil as the fat as required by claim 23 (col. 2, ll. 54-55).
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Because we extend the rejection over Gilmore and Bundus to claims
19 and 21-23, we denominate our decision as involving a new ground of
rejection against these claims under our authority pursuant to 37 C.F.R. §
41.50(b).

E. Obviousness over Dell and Bundus
The Examiner rejected claims 29 and 30 under 35 U.S.C. § 103(a) as
unpatentable over Dell and Bundus.
Claims 29 and 30 are argued as a group (Br. 14). We select claim 29
to decide the issues on appeal.
Appellant contends that “Dell is directed to a completely different
composition with very different properties” because Dell is directed to a
frozen whipped topping and not a liquid (Br. 14). According to Appellant,
“Dell would have to be modified by picking and choosing certain amounts
of each ingredient broadly disclosed in Dell” but one would not be
motivated to modify the compositions “in such a way that the properties
sought by Dell would not be achieved.” (Br. 14). Bundus, according to
Appellant, does not remedy the deficiencies of Dell (Br. 15).
The Examiner finds that Dell discloses a liquid dessert composition
with the claimed ingredients and that Bundus teaches a similar composition
(Ans. 7).
There is no dispute that the combination of Dell and Bundus suggests
the method steps of claim 29. The issue on appeal arising from the
contentions of Appellant and the Examiner is: has Appellant shown that the
Examiner reversibly erred in finding that, given the disclosures of Dell and
Bundus, those of ordinary skill in the art would have been capable of
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formulating a liquid dessert composition having the claimed ingredients in
the claimed concentration ranges?
We answer this question in the affirmative based on our analysis
above regarding the abilities of those of ordinary skill in the art to perform
routine experimentation to find the optimal concentrations of the protein, fat,
sweetener, stabilizer and emulsifier based on the disclosure of Bundus. We
also note that the compositon of Dell is liquid at least before whipping if not
after freezing.
Appellant has not shown that the Examiner reversibly erred in
concluding that formulating the composition of claim 29 would have been
within the capabilities of one of ordinary skill in the art.

III. CONCLUSION
In summary, we sustain the rejection of claims 19-35 under the
judicially-created doctrine of obviousness-type double patenting; the
rejection of claims 20, 24-28, 31, 32 under 35 U.S.C. § 103(a) over Gilmore
in view of Bundus; and the rejection of claims 29 and 30 under 35 U.S.C. §
103(a) over Dell in view of Bundus.
We do not sustain the rejection of claims 33-35 under 35 U.S.C. § 112,
¶ 1 as lacking written descriptive support; nor do we sustain the rejection of
claims 19, 21-23, and 33-35 under 35 U.S.C. § 102(b) as anticipated by
Gilmore.
We enter a new ground of rejection of claims 19 and 21-23 under 35
U.S.C. § 103(a) as unpatentable over Gilmore in view of Bundus.

IV. DECISION
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The decision of the Examiner is affirmed and a new ground of
rejection entered.

V. TIME PERIOD FOR RESPONSE
In addition to affirming the Examiner's rejection(s) of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review."
37 C.F.R. § 41.50(b) also provides that the Appellant, 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
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

Should the Appellant elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.

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If the Appellant elects prosecution before the Examiner and this does
not result in allowance of the application, abandonment or a second appeal,
this case should be returned to the Board of Patent Appeals and Interferences
for final action on the affirmed rejection, including any timely request for
rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED
NEW GROUND ENTERED 37 C.F.R. § 41.50(b)

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