Ex Parte Kodali et al

Board of Patent Appeals and Interferences

Mar 25, 2011

10934098 (B.P.A.I. Mar. 25, 2011)

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.
10/934,098 09/03/2004 Dharma R. Kodali P5632USA-CIP2 4865
7590 03/28/2011
General Mills, Inc.
Number One General Mills Boulevard
Minneapolis, MN 55426
EXAMINER
TRAN LIEN, THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/28/2011 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte DHARMA R. KODALI, JENNIFER E. FOLSTAD,
MICHAEL R. POLZIN, TAMRA R. HAESE,
VENKATACHALAM NARAYANASWAMY,
and DENNIS A. LONERGAN
____________

Appeal 2009-014507
Application 10/934,098
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFREY T. SMITH, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection
of claims 1-8 and 18-24. We have jurisdiction under 35 U.S.C. § 6.
Appeal 2009-014507
Application 10/934,098

2
Appellants’ invention relates to an anhydrous trans fat
replacement system and methods of making and using the same.
Claim 1 is illustrative:
1. An anhydrous trans fat replacement system for a
farinaceous food product comprising:

an expanded, low-density carbohydrate; and

at least one edible oil,

wherein the at least one edible oil is physically entrained
within the expanded, low-density carbohydrate at a ratio of at least
one part edible oil to one part expanded, low-density carbohydrate to
form an anhydrous trans fat composition that can be used to replace
saturated fats in a food product.

The Examiner relied on the following references in rejecting
the appealed subject matter:
Becher 4,609,555 Sept. 02, 1986
Caton 4,810,307 Mar. 07, 1989
Kepplinger 6,149,961 Nov. 21, 2000
Claims 1-8 and 18-24 stand rejected under 35 U.S.C. §103(a)
as unpatentable over the combined teachings of Kepplinger, Becher,
and Caton.

OPINION1

1 Appellants have not presented separate arguments for all of the
rejected claims. Rather, Appellants’ arguments are principally
directed to independent claims 1, 18, 21 and 24. Any claim not
separately argued will stand or fall with the independent claims. See
37 C.F.R. § 41.37(c)(1)(vii) (2010).
Appeal 2009-014507
Application 10/934,098

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The issue on appeal is: Did the Examiner err in determining
that the combination of Kepplinger and Becher, would have led a
person of ordinary skill in the art to form an anhydrous trans fat
replacement system comprising a ratio of at least one part edible oil
to one part expanded, low-density carbohydrate, as required by
independent claims 1, 18, 21 and 24?2 We answer this question in
the affirmative.
We REVERSE.
We reverse the stated rejections for the reasons set forth by
the Appellants.
The Examiner found that Kepplinger describes a fat substitute
formulation comprising a Shea nut extract blend with a diluent fat to
produce a plasticized Shea nut extract. The Examiner determined it
would have been obvious to a person of ordinary skill in the art to
select low-density maltodextrin so that the maltodextrin could
absorb the oil to form matrices or walls as taught in Kepplinger.
The Examiner found that Becher discloses maltodextrin has the
ability to bind both water and fat. (Ans. 4). The Examiner
concluded that it would have been obvious to determine the ratio of
oil to maltodextrin depending on the fact content wanted for the fat
substitute and the thickness of the walls or matrices for the
composition. (Ans. 5). The Examiner determined that the ratio of
oil to maltodextrin is a result effective variable which can be
determined by one of ordinary skill in the art. (Id.).

2 The Examiner relied upon Caton for describing commercially
available maltodextrin. (Ans. 4).
Appeal 2009-014507
Application 10/934,098

4
Appellants argue there is no disclosure or teaching in the cited
prior art references that would have suggested an anhydrous trans fat
replacement system having a ratio of at least one part edible oil to
one part expanded, low-density carbohydrate as required by the
independent claims. (App. Br. 11-13). Appellants further argues
that Becher describes a maximum of 0.5 parts oil to starch
hydrolysate which is significantly lower than the ratio of oil to
carbohydrate required by the claimed invention. (App. Br. 12).
Appellants contend that the Examiner’s rejection is premised upon
hindsight because the only suggestion regarding varying the amount
of oil to maltodextrin within the ratio specified by the claimed
invention comes from Appellants’ Specification rather than the
evidence relied upon by the Examiner. (App. Br. 13).
After a thorough review of the present record, we agree with
Appellants that the Examiner has not provided evidence that would
have led a person of ordinary skill in the art to form an anhydrous
trans fat replacement system comprising a ratio of at least one part
edible oil to one part expanded, low-density carbohydrate, as
required by the claimed invention absent reliance upon Appellants’
Specification. The Examiner has not identified evidence that would
have led a person of ordinary skill in the art to modify the ratio of oil
to carbohydrate above the level described in Becher. The Examiner
has not identified evidence, absent Appellants' Specification,
sufficient to support that the characteristics to be achieved by
varying the ratio of oil to carbohydrate is a result effective variable.
A particular parameter must first be recognized as a result-effective
Appeal 2009-014507
Application 10/934,098

5
variable, i.e., a variable which achieves a recognized result, before
the determination of the optimum or workable ranges of said
variable might be characterized as routine experimentation. In re
Antonie, 559 F.2d 618, 620 (CCPA 1977) (The claimed wastewater
treatment device had a tank volume to contractor area of 0.12
gal./sq. ft. The prior art did not recognize that treatment capacity is
a function of the tank volume to contractor ratio, and therefore the
parameter optimized was not recognized in the art to be a result-
effective variable.). See also In re Boesch, 617 F.2d 272 (CCPA
1980) (prior art suggested proportional balancing to achieve desired
results in the formation of an alloy).
For the forgoing reasons, the Examiner has not satisfied the
initial burden of presenting a prima facie case of obvious. During
examination, the Examiner bears the initial burden of establishing a
prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992). The Examiner’s mere conclusory statements are
not sufficient to support the prima facie case of obviousness.
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal
conclusion of obviousness.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
For the foregoing reasons we reverse the Examiner’s stated
rejections.

Appeal 2009-014507
Application 10/934,098

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DECISION
The 35 U.S.C. § 103 rejection of claims 1-8 and 18-24 is
reversed.

REVERSED

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