Ex Parte Kothapalli et al

Patent Trial and Appeal Board

Nov 27, 2017

13434593 (P.T.A.B. Nov. 27, 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.
13/434,593 03/29/2012 Aparna Kothapalli 7653US02 6748
106306 7590 11/29/2017
DIEDERIKS &WHITELAW, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/29/2017 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):
mail@dwpatentlaw.com
gmi.mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte APARNA KOTHAPALLI and CRAIG SHERWIN
Appeal 2017-002329
Application 13/434,5931
Technology Center 1700
Before JEFFREY T. SMITH, JEFFREY R. SNAY, and BRIAN D. RANGE,
Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3—7, 9-11, 13, 14, 16—29, and 33—35. We have
jurisdiction. 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 According to Appellants, the real party in interest is General Mills, Inc.
App. Br. 3.
Appeal 2017-002329
Application 13/434,593
STATEMENT OF THE CASE2
Appellants describe the invention as relating to “a batter that is
extradable and flourless and that can be used to make a shelf-stable, ready-
to-eat baked food product that is high in fiber.” Spec. 12. In particular, the
invention may form a high fiber yet gluten free food product. Id. at || 8—9.
Claims 1 and 26, reproduced below with emphases added to certain key
recitations, is illustrative of the claimed subject matter:
1. An extradable batter for use in providing a shelf-stable,
ready-to-eat high-fiber food product, said batter comprising:
at least 10 wt-% powdered fiber;
at least one fat component chosen from an oil and a
shortening, said shortening having a solid fat content of about 2
% to about 30 % at ambient temperature;
a humectant;
a sweetener;
a leavening agent; and
about 15 wt-% to 25 wt-% of free water;
wherein said batter is flourless, does not include starch
compensating for the lack of flour and is extruded in a continuous
form, and wherein said ready-to-eat high-fiber food product
contains about 5 grams or more of fiber per serving and
substantially maintains after being baked a desired shape,
structure and moisture content.
2 In this opinion, we refer to the Final Office Action dated January 13, 2016
(“Final Act.”), the Appeal Brief filed June 10, 2016 (“App. Br.”), the
Examiner’s Answer dated September 30, 2016 (“Ans.”), and the Reply Brief
filed November 28, 2016 (“Reply Br.”).
2
Appeal 2017-002329
Application 13/434,593
26. A shelf-stable, ready-to-eat high-fiber food product, said
product comprising:
at least 10 wt-% powdered fiber;
at least one fat component chosen from an oil and a shortening,
said shortening having a solid fat content of about 2 % to about 30 %
at ambient temperature;
a humectant;
a sweetener;
a leavening agent; and
less than 25 weight percent of free water;
wherein said ready-to-eat high-fiber food product is flourless,
does not include starch compensating for the lack of flour,
contains about 5 grams or more of fiber per serving and substantially
maintains after being baked a desired shape, structure and moisture
content, and wherein a force required to break said ready-to-eat high-
fiber food product does not exceed 10,000 g-force.
App. Br. 17, 19-20 (Claims App’x).
REJECTION
On appeal, the Examiner maintains the rejection of claims 1, 3—7, 9—
11, 13, 14, 16—29, and 33—35 under 35 U.S.C. § 103 as unpatentable over
Fulton, U.S. Patent Application No. 2010/0303997 Al, December 2, 2010
(hereinafter “Fulton”) in view of O’Connor et al., U.S. Patent Application
NO. 2007/0065554 Al, March 22, 2007 (hereinafter “O’Connor”). Ans. 3.
ANALYSIS
The Examiner finds that Fulton3 teaches a starch-free, flour-free, high-
fiber dough that generally includes the ingredients recited by, for example,
Appellants’ claim 1. Ans. 3—7. The Examiner finds that Fulton does not
3 The Examiner refers to Fulton as “Futton.” See, e.g., Ans. 4. Because
Appellants understood the Examiner, this error is harmless.
3
Appeal 2017-002329
Application 13/434,593
disclose a humectant as recited in claims 1 and 26 and does not teach
recitations of certain dependent claims. Id. at 4. The Examiner finds,
however, that O’Connor teaches a batter-like composition with humectant
and meeting the other recitations. Id. at 4—7. The Examiner provides a basis
for combining teachings of Fulton and O’Connor. Id. at 6.
Claims 1 and 25 each recite “about 15 wt-% to 25 wt-% of free
water.” App. Br. 17 (Claims App’x). Appellants argue that the Examiner
has not adequately addressed this recitation. Id. at 6. In particular,
Appellants argue that Fulton “mandates the use of, at most, a low amount of
free water in making the dough.” Id. The Examiner agrees that Fulton
teaches the uses of bound water rather than free water. Ans. 8. Fulton
states, for example, that in embodiments some or all of the water comes
from protein sources (e.g., eggs) or the fat source (e.g., butter). Fulton 136.
Fulton emphasizes the need to control water and use of “very small
quantities of free water.” Id. at || 48 49. All of Fulton’s examples make
use of water in eggs and butter rather than using additional water. Compare
id. at Tables 3—21 (not including water aside from bound water in eggs and
butter as ingredients) with Spec. 1 60 (adding 15—25% water).
The Examiner finds that Fulton teaches dough containing 10-40%
water by weight and also discloses 10-40% water “primarily constrained in
fat or liquid protein fraction.” Ans. 5 (citing Fulton || 23, 33). The
Examiner does not, however, find that Fulton teaches free water of a range
overlapping that of claim 1. Rather, the Examiner determines that “the use
of a specific type of water is a processing step,” that there is no distinction
between a product prepared with free water and one prepared with bound
4
Appeal 2017-002329
Application 13/434,593
water, and that the “Fulton product does not differ compositionally from the
claimed product.” App. Br. 8.
We agree with Appellants’ that the Examiner’s position is not
adequately explained. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
(“[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.”). The Examiner acknowledges that there is a difference
between free and bound water and agrees that Fulton teaches the use of
bound water (Ans. 8). Moreover, given the teachings of Fulton, a
preponderance of the evidence supports that use of free and bound water are
not the same and do not achieve the same results. App. Br. 6—8.
While the Examiner is correct that how a product is prepared
(standing alone) does not determine patentability of a product claim (Ans.
8), the product claims at issue here require that the product comprises a
stated percentage of free water. Given the context above, the Examiner does
not adequately address why a person of ordinary skill in the art would
understand Fulton as teaching “about 15 wt-% to 25 wt-% of free water” as
recited in claims 1 and 25. The Examiner’s findings concerning O’Conner
also do not address this issue. We therefore do not sustain the Examiner’s
rejection of claim 1 and 25. We also do not sustain the rejection of claims
3—7, 9-11, 13, 14, 16—24, 33, and 34 because those claims each depend from
claim 1 or 25.
Claim 26, in contrast to claims 1 and 25, recites “less than 25 weight
percent of free water.” Claim 26’s product can therefore comprise zero or
very little free water. Cf. In reMochel, 470 F.2d 638, 640 (C.C.P.A. 1972)
5
Appeal 2017-002329
Application 13/434,593
(“the phrase ‘up to’ of claim 2 includes zero as the lower limit”) (citations
omitted). The range of claim 26 therefore overlaps with the range of free
water taught by Fulton. Appellants’ arguments regarding free water are
therefore unpersuasive as applied to claim 26. See In re Peterson, 315 F.3d
1325, 1329 (Fed. Cir. 2003) (“A prima facie case of obviousness typically
exists when the ranges of the claimed composition overlap the ranges
disclosed in the prior art.”).
Claim 26 also recites that the “[batter] is flourless, does not include
starch compensating for the lack of flour. . . .” Appellants argue that Fulton
employs milled psyllium husk and seed flour and only avoids
“predominantly starch based flours.” App. Br. 14. The Examiner finds that
Fulton teaches the “flourless” recitation of claim 26 based on construing
“flourless” in claim 26 as “referring to starch-containing flour.” Ans. 12.
Appellants do not propose a construction for the term “flourless”
despite Appellants’ argument squarely raising claim construction as an issue.
During prosecution, an application’s claims are given their broadest
reasonable scope consistent with the specification. In re Am. Acad, of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Here, the context of both
Appellants’ Specification and claim 26 supports the Examiner’s claim
construction. The Specification states “[fjlour, and in particular wheat flour,
contains gluten, the protein responsible for given structure to flour-based
formulas.” Spec. 1 6. The Specification also indicates, for example, that its
products may contain ground oat fiber or rice fiber. Id. at 122. There is no
reason to adopt a more narrow construction of “flourless” that would
exclude, for example, use of the gluten-free rice flour contemplated by the
Specification. A claim construction that excludes the preferred
6
Appeal 2017-002329
Application 13/434,593
embodiments is rarely correct. See, e.g., InterDigital Commc ’ns, LLC v.
U.S. Int’l Trade Comm’n, 690 F.3d 1318, 1326 (Fed. Cir. 2012) (citations
omitted). Moreover, claim 26 states that the batter “does not include starch
compensating for the lack of flour.” If, as Appellants contend, flour could
include gluten-free ground seeds, there would be no need to compensate.
Appellants’ argument therefore fails to establish that the Examiner erred in
finding that Fulton teaches a “flourless” product as recited in claim 26.
Appellants also argue that Fulton does not teach the break force
recited by claim 26 (App. Br. 13), does not teach the desirable water activity
(aw) recited by claim 28 (id. at 14—15; see also Spec. 132 (defining aw)), and
does not teach the moisture content recited by claim 29 (App. Br. 15—16).
With respect to break force and water activity, the Examiner finds
that, a person of skill in the art would have found it obvious to vary these
characteristics to reach a desired hardness, taste, and/or shelf stability. Ans.
12, 14. See In re Boesch, 617 F.2d at 276 (“[DJiscovery of an optimum
value of a result effective variable in a known process is ordinarily within
the skill of the art.”); In re Alter, 220 F.2d 454, 456 (CCPA 1955) (“where
the general conditions of a claim are disclosed in the prior art, it is not
inventive to discover the optimum or workable ranges by routine
experimentation.”). With respect to moisture content, the Examiner finds
that Fulton teaches a range that overlaps with that of claim 29. Id. at 14
(citing Fulton 124 (teaching 2—10% water by weight). In re Peterson, 315
F.3d at 1329. Appellants do not persuasively dispute these findings and do
not establish Examiner error.
We therefore sustain the Examiner’s rejection of claims 26, 28, and
29. Appellants do not separately argue claims 27 or 35, and those claims
7
Appeal 2017-002329
Application 13/434,593
depend from claim 26. App. Br. 14. We therefore group those claims with
26, and those claims also fall with claim 26. 37 C.F.R. § 41.37(c)(l)(iv)
(2013).
DECISION
For the above reasons, we affirm the Examiner’s rejection of claims
26—29 and 35. We reverse the Examiner’s rejection of claims 1, 3—7, 9-11,
13, 14, 16-25,33, and 34.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
8