Ex Parte Kallioinen et alDownload PDFPatent Trial and Appeal BoardNov 29, 201712201620 (P.T.A.B. Nov. 29, 2017) 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. 12/201,620 08/29/2008 Harri KALLIOINEN GPK-227-168 9776 23117 7590 12/01/2017 NIXON & VANDERHYE, PC 901 NORTH GLEBE ROAD, 11TH FLOOR ARLINGTON, VA 22203 EXAMINER PRAKASH, SUBBALAKSHMI ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 12/01/2017 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): PTOMAIL@nixonvan.com pair_nixon @ firsttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HARRI KALLIOINEN and RETTA TIKANMAKI1 Appeal 2017-004340 Application 12/201,620 Technology Center 1700 Before PETER F. KRATZ, BEVERLY A. FRANKLIN, and DEBRA L. DENNETT, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify the real party in interest as Valio Ltd. Appeal 2017-004340 Application 12/201,620 Appellants request our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 8, 14—18, 20, 23—25, 27, and 28. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). STATEMENT OF THE CASE Claim 8 is illustrative of Appellants’ subject matter on appeal and is set forth below (with text in bold for emphasis): 8. A lactose-free or low-lactose milk product with a ratio of ash to protein of about 0.2 by weight and protein and calcium contents similar to or higher than those of milk raw material comprising a nanofiltration retentate fraction rich in protein of a lactose-hydrolyzed milk raw material, and a nanofiltration permeate fraction containing milk minerals of a nanofiltration permeate of a lactose-hydrolyzed milk raw material. The Examiner relies on the following prior art references as evidence of unpatentability: Tossavainenet al. US 2005/0214409 A1 Sept. 29, 2005 (hereafter “Tossavainen”) Singer EP0250623 Jun. 27, 1986 Leruyet et al. W02001093689 Al Dec. 13, 2001 (hereafter “Leruyet”) S.H. Choi, et al., “Development of Lactose-hydrolyzed Milk with Low Sweetness Using Nanofiltration” Division of Animal Resources and Life Science, Sangji University, Wonju, 220-702, Korea (June 2007) (hereafter “Choi”). 2 Appeal 2017-004340 Application 12/201,620 THE REJECTIONS 1. Claims 8, 23, and 24 are rejected under 35 U.S.C. §112, second paragraph, as being indefinite. 2. Claims 8, 23, and 24 are rejected under 35 U.S.C. § 103(a) over Choi. 3. Claims 14, 15, 17, 18,20, 27 and 28 are rejected under 35 U.S.C. §103 (a) as being unpatentable over Choi in view of Tossavainen. 4. Claim 16 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Choi in view of Tossavainen, as applied to claims 14 and 15 above, and further in view of Singer. 5. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Choi in view of Tossavainen as applied to claim 14 above and further in view of Leruyet. ANALYSIS Rejection 1 On pages 2—3 of the Final Office Action, the Examiner rejects claim 8 and the dependent claims (claim 23 and claim 24) as being indefinite, stating that “[i]t is unclear whether the lactose free or low-lactose milk product comprises the retentate and permeate fractions, or whether the milk raw material comprises these fractions.” This rejection is also set forth on page 2 of the Answer. We agree with Appellants’ stated position as set forth on pages 7—8 of the Appeal Brief and on pages 1—2 of the Reply Brief. Therein, Appellants persuasively explain that one of ordinary skill in the art would understand that a milk raw material itself would not comprise two fractions of a lactose-hydrolyzed milk raw material, and thus would understand that 3 Appeal 2017-004340 Application 12/201,620 the recited milk raw material cannot be both raw and lactose hydrolyzed. Appellants state further that a person having ordinary skill in the art would understand that the lactose-free or low-lactose milk product, and not the milk raw material, comprises the retentate and permeate fractions. We agree and note that definiteness is evaluated from the perspective of one skilled in the relevant art. See In re Packard, 751 F.3d 1307, 1312 (Fed. Cir. 2014). Also, the words of a claim must be given their “plain meaning” unless the plain meaning is inconsistent with the Specification. The plain meaning is the ordinary and customary meaning that would be given to the term by one of ordinary skill in the art. Phillips v. AWHCorp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Appellants convincingly explain the plain meaning of the claim terms in support of their stated position. Appeal Br. 9. In view of the above, we reverse Rejection 1. Rejections 2—5 The Examiner’s stated positon regarding Rejection 2 is set forth on page 3 of the Final Office Action wherein the Examiner rejects claims 8, 23, and 24 as being obvious over Choi. This rejection is also set forth on page 3 of the Answer. Therein, the Examiner refers to Table 1 of Choi for teaching a milk product as including both retentate and permeate fractions. Ans. 3. The Examiner uses this interpretation of Choi in calculating the ash to protein ratio value in an effort to meet the ash to protein ratio value as claimed by Appellants. Final Act. 3, Ans. 3, and 9-10. 4 Appeal 2017-004340 Application 12/201,620 Appellants argue that the retentate shown in Choi’s Table 1 is not a lactose-tree or low-lactose milk product. Appeal Br. 10 and 11. Appellants further explain that the "Lactose-hydrolyzed milk" shown in Choi's Table 1 is not nanofiltrated; rather, only the lactose of the raw milk is hydrolyzed. Reply Br. 2—3. Appellants further argue that the "Retentate" and "Permeate" shown in Choi’s Table 1 are obtained after nanofiltration of the lactose-hydrolyzed milk. Reply Br. 3. Thus, Appellants submit that the lactose-hydrolyzed milk shown in Table 1 of Choi does not include both the retentate and the permeate, contrary to the Examiner’s stated interpretation. Reply Br. 3; see Choi, p. 992. Therefore, Appellants submit that Choi's Table 1 does not teach a final lactose-hydrolyzed milk product as recited in their claim 8. Appellants state that Table 1 only discloses compositions of raw milk, a lactose-hydrolyzed milk (which is not nanofiltrated), and a retentate and a permeate obtained after nano filtration of lactose-hydrolyzed milk.2 Notably, the Examiner does not adequately address this specific point raised by Appellants in the Answer. Ans. 8—10. On pages 9-10 of the Answer, the Examiner states that Choi’s Figure 1 indicates that the retentate is reconstituted to form a low lactose milk product, however, but this does not fully address Appellants’ point made that the lactose- hydrolyzed milk shown in Table 1 of Choi does not include both the retentate and the permeate (as required by the instant claims). 2 The “Materials and Methods” section of Choi, beginning on page 990, column 1, describes how the raw milk is processed, in support of Appellants’ stated positon in the record. The Examiner does not direct us to contrary evidence in this regard. 5 Appeal 2017-004340 Application 12/201,620 We are thus persuaded by Appellants’ arguments as discussed, supra, that the Examiner’s position is flawed because the Examiner erroneously views the lactose-hydrolyzed milk shown in Choi’s Table 1 as including both the retentate and the permeate. Ans. 3. Regarding the calculation of the ash to protein ratio value, the Examiner states that “it is believed that a ratio of the ash and protein would be maintained in concentration and dilution”. Ans. 10. However, this also does not address the point raised (and reiterated on page 3 of the Reply Brief) by Appellants that Choi’s Table 1 does not teach a lactose- hydrolyzed milk including both the retentate and the permeate as required by the claims. “[Ojbviousness requires a suggestion of all limitations in a claim." CFMT, Inc. w Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)). We thus reverse Rejection 2. With regard to Rejections 3—5, the additional secondary references applied in these rejections were not used by the Examiner to address the aforementioned deficiency of Choi, and therefore, for the same reasons that we reversed Rejection 1, we also reverse these rejections. DECISION Each rejection is reversed. ORDER REVERSED 6 Copy with citationCopy as parenthetical citation