Ex Parte Kierbye et al

Patent Trials and Appeals Board

May 20, 2019

13578650 - (D) (P.T.A.B. May. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/578,650 10/09/2012
64574 7590
BLANK ROME LLP
Crystal J. Corsey
ONE LOGAN SQUARE
PHILADELPHIA, PA 19103
05/22/2019
FIRST NAMED INVENTOR
Ida Kierbye
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.
139559-00101 9756
EXAMINER
MORNHINWEG, JEFFREY P
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
05/22/2019 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):
corsey-c@blankrome.com
BRPhilaPatent@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IDA KIERBYE and JACOB TOFT NIELSEN
Appeal2018-006555
Application 13/578,650
Technology Center 1700
Before LINDA M. GAUDETTE, CHRISTOPHER C. KENNEDY, and
JANEE. INGLESE, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL 1
1 This Decision includes citations to the following documents: Specification
filed Aug. 13, 2012 ("Spec."); Non-Final Office Action dated Mar. 20, 2017
("Non-Final Act."); Appeal Brief filed Oct. 19, 2017 ("Br."); and
Examiner's Answer dated Feb. 26, 2018 ("Ans.").
Appeal2018-006555
Application 13/578,650
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision twice rejecting claims 1, 2, 5, 6, 9, 19-23, 25, 26, 28, 29, 34-36,
38-40, 42-46, 48, 50-52, 55, and 64-68. 3
We AFFIRM.
The "invention relates to filled milk products comprising sweet
buttermilk solids, vegetable lipid and one or more additional carbohydrate
sources." Spec. 1: 6-7. The inventors describe a filled milk as a special milk
product containing vegetable lipids that replace or supplement some of the
milk fat. Id. at 1: 12-13. The invention is directed primarily to providing a
filled milk product having improved organoleptic properties or an improved
nutritional profile. Id. at 1 :27-28. Claim 1 is representative of the appealed
claims, and is reproduced below.
1. A filled milk product comprising:
sweet buttermilk solids in an amount of 5-80% (w/w)
relative to the dry weight of the filled milk product;
a vegetable lipid source, and
a first carbohydrate source
wherein the filled milk product, when standardized to a solids
content corresponding to 10 g powdered filled milk product in
90 g water, has a pH in the range of pH 6-8 at 25 degrees C,
and
where the filled milk product comprises:
a total amount of protein in the range of 5-25% (w/w)
relative to the dry weight of the filled milk product,
a total amount of carbohydrate in the range of 40-70
(w/w) relative to the dry weight of the filled milk
product, and
2 The Appellants identify Arla Foods amba as the real party in interest. Br. 3.
3 We have jurisdiction under 35 U.S.C. § 6(b).
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Appeal2018-006555
Application 13/578,650
a total amount of lipids in the range of 5-50% (w/w)
relative to the dry weight of the filled milk product.
Appeal Br. 15 (Claims Appendix).
The Examiner relied on the following prior art as evidence of
unpatentability:
Anderson
Carrie
Kuslys
Achs
us 4,935,255
us 5,962,062
us 5,993,873
US 2005/0181095 Al
June 19, 1990
Oct. 5, 1999
Nov. 30, 1999
Aug. 18, 2005
Sodini et al., Compositional & Functional Properties of Buttermilk: A
Comparison Between Sweet, Sour, & Whey Buttermilk, 89:2 J. OF DAIRY SCI.
525-36 (2006) ("Sodini").
On appeal, the Examiner maintains the following grounds of rejection
under 35 U.S.C. § 103(a) (Ans. 2-13):
1. claims 1, 2, 5, 6, 9, 25, 26, 28, 29, 34-36, 38-40, 42, 44-46, 48,
and 68 over Kuslys in view of Sodini;
2. claims 19-23 and 43 over Kuslys in view of Sodini and Achs;
3. claims 50-52, 55, and 64-66 over Kuslys in view of Sodini and
Anderson; and
4. claim 67 over Kuslys in view of Sodini and Carrie.
The Examiner found Kuslys discloses a filled milk product as recited
in claim 1 with the exception that Kuslys does not explicitly disclose (1) that
the buttermilk solids are "sweet" buttermilk, (2) a pH of 6-8 at the
conditions recited in claim 1, (3) a total amount of protein in the range of 5-
25%, and (4) a total amount of carbohydrate in the range of 4-70%. Non-
Final Act. 3. The Examiner found one of ordinary skill in the art would have
modified Kuslys to include these features based on Sodini's disclosure. Id. at
4-6.
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Application 13/578,650
The Appellants' arguments in support of patentability as to all
appealed claims are based on claim 1 limitations. See Br. 13. The respective
positions of the Examiner and the Appellants raise the following issues on
appeal: ( 1) Have the Appellants identified reversible error in the Examiner's
finding Sodini suggests the use of sweet buttermilk solids in Kuslys's milk
powder, and, if not, (2) have the Appellants shown that the weight of the
evidence, taking into account the evidence of unexpected results, favors a
conclusion of non-obviousness? We answer these questions in the negative
for the reasons stated in the Answer and below. Any additional arguments
raised by the Appellants and not discussed explicitly in this Decision have
been fully addressed by the Examiner and are unpersuasive for the reasons
stated in the Answer.
We tum first to the issue of whether Appellants have identified
reversible error in the Examiner's finding that Sodini suggests the use of
sweet buttermilk solids in Kuslys' s milk powder. The Appellants concede
that Kuslys discloses a process for preparing a food product powder
comprising emulsifier, lipid, and milk powder, and explicitly teaches
preparation of an emulsion comprising less than 5% "sweet buttermilk" as
the emulsifier. Br. 7-8 (further noting that although the concentration of
sweet buttermilk in the emulsion is between 1 and 5%, the solids in the final
food product would be much lower because the emulsion is mixed with milk
powder before drying). The Appellants argue that because Kuslys makes this
explicit reference to sweet buttermilk, one of ordinary skill in the art would
understand Kuslys's use of the more generic term "buttermilk" in describing
the components of the milk powder (see Kuslys 3 :27-29) as referring to
another type of buttermilk, e.g., whey buttermilk. Br. 8.
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Appeal2018-006555
Application 13/578,650
The Appellants' argument is not persuasive. Although there is more
than one type of buttermilk, as evidenced by Sodini (see Sodini, Abstract),
the Examiner has shown that the prior art would have given direction to
select sweet buttermilk solids for use in Kuslys' s milk powder. See Ans. 13-
15; PharmaStem Therapeutics, Inc. v. ViaCell, Inc., 491 F.3d 1342, 1364
(Fed. Cir. 2007) ( explaining that an obviousness rejection predicated on
selection of one or more components from numerous possible choices may
be appropriate if the prior art provides direction as to which of many
possible choices is likely to be successful.). We agree with the Examiner that
Kuslys' s use of sweet buttermilk powder as an emulsifier would have
suggested to the ordinary artisan that sweet buttermilk powder could be
successfully used as the milk powder in Kuslys' s food product powder. See
Ans. 14. We also are persuaded that Sodini's disclosure that sweet
buttermilk is similar in composition to skim milk and that commercial
buttermilk is sweet buttermilk and, therefore, readily available, would have
suggested the use of sweet buttermilk powder as the milk powder in
Kuslys's food product powder. See id.; Sodini, Abstract, 526 ("Most of the
work on the functionality of buttermilk as a food ingredient has been done
with sweet buttermilk, which is the major source of commercial
buttermilk.").
The Appellants concede that Kuslys discloses that skimmed milk
powder and sweet buttermilk powder are equivalents for purposes of use as
an emulsifier. Br. 7-8; see Kuslys 2:48-50. The Appellants disagree,
however, with the Examiner's finding (see Non-Final Act. 4) that Sodini
suggests the interchangeability of sweet buttermilk powder and skimmed
milk powder when used as a milk powder. Br. 9. The Appellants argue that
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Application 13/578,650
although "Sodini teaches that the composition of sweet and cultured
buttermilk is similar to skim milk except for the fat content. Sodini does not
teach that taste and storage stability is similar." Id. at 10.
The Appellants' argument is not persuasive. "[M]otivation to modify
a prior art reference to arrive at the claimed invention need not be the same
motivation that the patentee had." Alcon Research, Ltd. v. Apotex Inc., 687
F.3d 1362, 1368 (Fed. Cir. 2012) (citing KSR Int'! Co. v. Teleflex, Inc., 550
U.S. 398, 420 (2007) (stating that it is error to look "only to the problem the
patentee was trying to solve")); see In re Translogic Tech., Inc., 504 F.3d
1249, 1259 (Fed. Cir. 2007) (explaining that a reference's teachings and its
obvious variants are relevant prior art, even if the reference addresses a
problem which differs from that addressed by a patent applicant.). Kuslys
discloses that the aim of the invention is to eliminate the need for a second
spray-drying step in preparing a recombined milk powder, and to prepare a
recombined powder with a fat content greater than 15% and which is not
limited to a lipid phase which is purely of milk origin. Kuslys 1: 15-16.
Kuslys discloses that "[i]t is essential ... to prepare the emulsion with a high
lipid ( one or several) content, with an emulsifier and water." Id. at 2:33-35.
Kuslys does not indicate organoleptic properties or improved nutritional
profile are of concern. Rather, Kuslys broadly discloses that the milk powder
that "is mixed with the emulsion may be skimmed milk powder alone or a
mixture or skimmed milk powder and buttermilk powder or powder
containing milk powder, whey powder, lactose or other milk ingredients in
combination with micronutrients, such as trace elements and vitamins." Id.
at 3:27-32. We agree with the Examiner (see Ans. 14-16) that Sodini's
disclosure that sweet buttermilk is similar in composition to skim milk and
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Application 13/578,650
that commercial buttermilk is sweet buttermilk supports a finding that the
ordinary artisan would have used sweet buttermilk as the buttermilk powder
component of Kuslys' s milk powder.
For the reasons stated above and in the Office Action and Answer, we
are not persuaded of reversible error in the Examiner's finding that one of
ordinary skill in the art would have utilized sweet buttermilk solids as one of
the components of Kuslys's milk powder.
We tum next to the issue of whether Appellants have shown that the
weight of the evidence, taking into account the evidence of unexpected
results, favors a conclusion of non-obviousness. The Appellants contend the
Specification provides evidence that the substitution of a significant amount
of skimmed milk powder with sweet buttermilk powder unexpectedly results
in products having a creamier, more full-bodied mouthfeel than conventional
filled milk products. Br. 12. We have reviewed the examples described in
the Specification, but do not find them persuasive of unexpected results for
the reasons explained by the Examiner. See Ans. 19-22. We add that the
examples are unpersuasive of unexpected results because it is not clear
whether the prior art filled milk products to which the claimed products were
compared represented the closest prior art products, e.g., Kuslys. See, e.g.,
Spec. 41:1, 14-15; In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir.
1991) ("[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art.").
We have considered the Appellants' arguments to the extent
applicable to all four grounds of rejection, but are not convinced of
reversible error in the Examiner's conclusion of obviousness. Accordingly,
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Application 13/578,650
we sustain the rejections of claims 1, 2, 5, 6, 9, 19-23, 25, 26, 28, 29, 34-36,
38-40, 42-46, 48, 50-52, 55, and 64-68.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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