Ex Parte Kubantseva et al

Patent Trial and Appeal Board

Sep 15, 2016

11558537 (P.T.A.B. Sep. 15, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111558,537 11/10/2006
30173 7590 09/19/2016
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
Natalia Kubantseva
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.
6750US 2405
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/19/2016 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NATALIA KUBANTSEV A, JANET L. BOYLE, and
JULIA M. SCHMELZER1
Appeal2015-002962
Application 11/558,537
Technology Center 1700
Before BEYERL YA. FRANKLIN, CHRISTOPHER L. OGDEN, and
JULIA HEANEY, Administrative Patent Judges.
OGDEN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
decision rejecting claims 1-10, 12, and 15-31 in the above-identified
application. We have jurisdiction pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is General Mills Inc.
Appeal Br. 5.
Appeal2015-002962
Application 11/558,537
BACKGROUND
Appellants' invention "relates to low moisture confectionary
coating/fil[l]ing compositions with a high percentage of sugar but a reduced
sweetness due to the presence of a sweetness reducing agent." Spec. 1: 10-
12. Independent claim 1 is representative:
1. A confectionery coating/filling composition comprising at
least about 25% by weight sugar, at least about 5% by weight
fat, and a sweetness reducing agent, wherein the moisture
content of the composition is no more than about 1.5% by
weight and the sweetness reducing agent has a formula of
B
/\-{D\,. +C02" X'.
c
wherein m is 0 or 1;
A represents a homocyclic or heterocyclic aromatic group with
one or more rmgs;
B represents a hydrogen atom, a lower aliphatic group with 1-3
carbon atoms or a phenyl group; or when m=O, A and B
together can represent a bivalent homocyclic or heterocyclic
aromatic group with two or more rings, or a methylidene group
carrying as a substituent a homocyclic or heteocyclic aromatic
group with one or more rings, an aromatic ring of A or of A and
B together, optionally having one to three substituents selected
from the group of lower alkoxy groups, lower alkyl groups,
forrnyl groups, acetyl groups, hydroxy groups, acyloxy groups
and halogen atoms;
C represents a hydrogen atom, or an alkyl group, or when m=O,
a hydroxy group or an alkoxy group;
D represents an oxygen or a sulfur; and
x+ represents a hydrogen ion or other physiologically
compatible cation; and
wherein the sweetness reducing agent is co-crystallized with at
least a portion of the sugar.
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Appeal Br. 26 (emphasis added). Claims 21, 22, and 23 are also
independent, and each of them likewise contains the limitation that the
moisture content is "no more than about 1.5% by weight." Id. at 29.
The Examiner maintains the following grounds of rejection:
I. Claims 1-9, 12, 15, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zimeri2 in view of Domino 3 and
Froseth. 4 Final Action 2--4.
II. Claim 10 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zimeri in view of Domino and Froseth, and further in
view of Lindley. 5 Final Action 4--5.
III. Claims 16-19, 22, and 26-31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Zimeri in view of Domino and Froseth,
and further in view of Halladay. 6 Final Action 5---6.
IV. Claims 23-25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zimeri in view of Domino and Froseth, and further in
view of Lees & Jackson. 7 Final Action 6-8.
2 U.S. Patent Application Pub. No. US 2004/0126464 Al (published July 1,
2004) [hereinafter Zimeri].
3 Domino Suits Sweet Needs, Candy Industry (Aug. 1, 1999) [hereinafter
Domino], http://www. all business. com/wholesale-trade/merchant-
who lesalers-nondurab le/316502- l .html (address no longer active).
4 U.S. Patent No. US 6,592,915 Bl (issued July 15, 2003) [hereinafter
Froseth].
5 U.S. Patent No. 5,045,336 (issued Sept. 3, 1991) [hereinafter Lindley].
6 U.S. Patent No. 3,821,443 (issued June 28, 1974) [hereinafter Halladay].
7 R. Lees & E.B. Jackson, Sugar Confectionary and Chocolate Manufacture
215 (1973).
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V. Claims 1-8, 12, 16-22, and 26-31 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Karwe8 in view of Halladay and
Froseth. Final Action 8-10.
VI. Claims 9 and 10 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karwe in view of Halladay and Froseth, and further in
view of Lindley. Final Action 10-11.
VII. Claim 15 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karwe in view of Halladay and Froseth, and further in
view ofKelly. 9 Final Action 11-12.
VIII. Claims 23-25 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Karwe in view of Halladay and Froseth, and further in
view of Lees & Jackson. Final Action 12-14.
DISCUSSION
A. Rejections I-IV
In response to rejections I-IV, Appellants argue claims 1, 3, 4, 6-9,
12, 15, and 20 as a group, see Appeal Br. 10-12, and state that claim 10 will
stand or fall with claim 1, see id. at 14. Appellants also separately argue
claims 2, 5, 18, 19, 21, 26-28, 30, and 31, see id. at 12-18, and argue as a
group claims 16 and 17, see id. at 14--15, claims 22 and 29, see id. at 16, and
claims 23-25, see id. at 18-19. Appellants state that claim 26 stands or falls
with claim 21. See id. at 16. Therefore, consistent with the provisions of 3 7
C.F.R. § 41.37(c)(l)(iv) (2013), we limit our discussion to claims 1, 2, 5, 16,
8 Int'l Pub. No. WO 2006/017324 A2 (published Feb. 16, 2006) [hereinafter
Karwe].
9 U.S. Patent No. 4,055,669 (issued Oct. 25, 1977) [hereinafter Kelly].
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18, 19, 21-23, 27, 28, 30, and 31. The remaining claims stand or fall with
these claims.
1. Claims 1 and 5
The Examiner finds that Zimeri teaches the composition of claims 1
and 5, including the components of sugar, fat, moisture, and sweetness
reducing agent (i.e., the known sweetness reducer Super Envision), see Final
Action 2-3, except that "Zimeri does not specifically teach that the
sweetness reducing agent is in a composition with about 1.5% or less water"
as required by claim 1, or with a moisture content of no more than about 1 %
as required by claim 5, id. at 3. However, the Examiner finds that "Zimeri
teaches it was advantageous to reduce the moisture content as low as
possible while still providing for a smooth textured product," and gives a
moisture content range of 8% or less, which encompasses the moisture
ranges in claims 1 and 5. Id. Moreover, the Examiner cites Froseth as
"evidence of a similar product filling layer with a smooth and lubricious
texture and a moisture content of about 1 % or less for the purpose of shelf
stability." Id. (citing Froseth 3:10-12, 10:55---61).
Appellants argue that the prior art teaches away from a composition in
which the moisture content is 1.5% or less (claim 1) or 1 % or less (claim 5).
See Appeal Br. 10-12, 13. In particular, Appellants argue that Zimeri
"clearly limits the minimum potential moisture content to still achieve the
desired smooth texture." Appeal Br. 10. Moreover, Appellants argue that in
Zimeri' s only example that uses a sweetness reducing agent, the composition
is "a bakable peanut butter filler with a moisture content of ~3---6 [wt. %],"
which is "almost 100% more than" the required maximum moisture value of
about 1.5% in claim 1. See id. at 10-11. Appellants argue that even a small
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(e.g., 1 % ) drop in moisture "will result in a product that has very different
consistency," id. at 11 (citing Lees & Jackson 215); therefore, "[ t ]here is no
substantial evidence that Zimeri would be able to preserve the creamy
texture of the filler while decreasing the moisture content to no more than
1.5%." Id. Appellants further argue that in Froseth, the filling layer is used
in a cereal bar in combination with an adjacent binder layer that has higher
moisture content, so "[ t ]here is no indication that a filling of such a low
moisture content can be used without a corresponding higher moisture
content binder," see id. at 11, and such a binder would not be used in the
bakeable product of Zimeri, see id. at 11-12. Appellants also argue that the
teaching of low moisture content in Froseth is incompatible with the
disclosure of Zimeri because Zimeri requires maintaining an oil-in-water
emulsion with a continuous aqueous phase, which maintains bakeability and
stability of the fat phase. See id. at 12 (citing Zimeri i-fi-147--48); see also
Reply Br. 2. Appellants also argue that Zimeri was directed to a bakeable
product, and a person of ordinary skill in the art would have understood that
baking would render a product unsuitable if the moisture content were too
low. See Reply Br. 2-3.
Having carefully considered Appellants' arguments, including the
arguments that the prior art teaches away from the combination of Zimeri
and Froseth, we find those arguments unpersuasive of reversible error in the
rejection of claims 1 and 5. First, while Zimeri teaches that the water
content in the composition should be "sufficient in amount to provide a
smooth texture to the component," Zimeri i1 48, the reference also teaches to
minimize the water content. See id. Zimeri further teaches that a moisture
range as low as 2 % may result in a "creamy product." See Zimeri Abstract.
According to the Examiner's findings (and Appellants have not directed our
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attention on this record to any factual rebuttal evidence), two percent is at
least close to, if not within, the approximate moisture content range specified
in claims 1 and 5, and would be expected to result in similar properties. See
Answer 16; see also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
("[A] prima facie case of obviousness exists when the claimed range and the
prior art range do not overlap but are close enough such that one skilled in
the art would have expected them to have the same properties.").
Moreover, Froseth teaches using less than 1 % water in the context of
producing a filling or topping that is "creamy" and having a "smooth ...
texture." Froseth 3: 10-12; see also id. at 6:52-53, 7:8-12, 10:55---61. This
is not inconsistent with Lees & Jackson; although it teaches that in creams
and fondants, a small change in moisture may result in a significant "change
in the amount of syrup phase that is present," it also teaches that "[ o ]ne of
the main quality criteria of a sample of fondant or cream is the size of the
sugar crystals present in the solid phase." Lees & Jackson 215. Thus, Lees
& Jackson teaches that at least one factor other than moisture content may
affect the creaminess of the texture. The evidence on this record as a whole
does not support Appellants' contention that a person of ordinary skill in the
art, seeking to obtain a smooth or creamy texture as taught by Zimeri, would
have been dissuaded from using a moisture content in the range specified by
claims 1 or 5.
As to Appellants' argument that Froseth only teaches low moisture
content in the context of using a separate high-moisture binder, we find no
reversible error in the Examiner's conclusion that "there is no teaching in the
prior art away from the use of a binder" in conjunction with the composition
taught by Zimeri. Answer 16-1 7. Likewise, as to Appellants' argument that
Zimeri teaches that the filling product must be bakeable or have properties
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associated with bakeability (e.g., an oil-in-water emulsion with a continuous
aqueous phase), we find no reversible error in the Examiner's determination
that Zimeri teaches that the disclosed filling may be used in either baked or
raw products. See Answer 18 (citing Zimeri i-f 3 7 (teaching to place the
creamy filling "onto or into a ... raw food product, for eating as is")).
Appellants also do not point to factual evidence, by declaration or otherwise,
showing that a person of ordinary skill in the art would not have expected
success in maintaining a continuous aqueous phase if the water content is
within the range of claims 1 or 5, or that a filling that lacks a continuous
aqueous phase would have been considered unsuitable for all known uses of
the composition disclosed by Zimeri, including use as a filling for raw food
products.
Thus, considering the evidence on this record as a whole, Appellants
have not shown reversible error in the Examiner's rejection of claims 1 and
5 over Zimeri in view of Domino and Froseth. For the same reasons, we
find no reversible error in the rejection of claims 3, 4, 6-9, 12, 15, or 20
based on the same references, or claim 10 based on the combination of
Zimeri, Domino, Froseth, and Lindley, which stands or falls with claim 1,
see Appeal Br. 14.
2. Claims 2 and 21
Claim 2 depends from claim 1 and further requires that "the
composition comprises at least about 35% by weight sugar." Appeal Br. 26.
Independent claim 21 requires that the "confectionery coating/filling
comprises at least 25% by weight sugar, from about 10 ppm to about 5000
ppm by weight [of] a sweetness reducing agent and ... a moisture content of
no more than about 1.5% by weight." Appeal Br. 29.
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The Examiner rejects dependent claims 2 and 21 based in part on the
finding that Zimeri teaches a preferred range of 25-65% sugar. See Final
Action 2 (citing Zimeri i-f 49). The Examiner further finds that "use of sugar
within the disclosed range of 25---65% would have been obvious for the
disclosed function of taste and/or stability as taught by Zimeri." Answer 17
(citing Zimeri i-f 49). Regarding claim 21, the Examiner also finds that
Domino teaches the use of a sweetness reducing agent (Super Envision) in
an amount within the range of 0.5-1 % (which is adjacent to the upper value
of 5000 ppm (0.5%) in the range specified in claim 21 ). See Final Action 3
(citing Domino 1 ).
Appellants refer to the same arguments as with claim 1, and further
argue that Zimeri only teaches the use of a sweetness reducing agent in an
embodiment with sugar content less than 35% (claim 2) or 25% (claim 21),
and argue that "there is no apparent reason why one of ordinary skill in the
art would use a higher sugar content [required by claim 2 or 21] if a reduced
sweetness is desired." Appeal Br. 13, 14.
The Examiner finds, and Appellants do not dispute, that a known
function of a sweetness reducing agent is "reducing the perception of
sweetness[,] giving the other confectionary flavors more dominance."
Answer 1 7. The Examiner's conclusions establish a prima facie reason for a
person of ordinary skill in the art to have reduced the perception of
sweetness in products with high levels of sugar. Appellants have not
directed our attention to any factual evidence that a person of ordinary skill
in the art would only have had reason to reduce the perception of sweetness
in products where the sugar content is less than 35% or 25%. Therefore, by
a preponderance of the evidence on this record, Appellants' arguments do
not persuade us of reversible error in the rejection of claims 2 or 21. For the
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same reasons, we find no reversible error in the rejection of claim 26, which
stands or falls with claim 21. See Appeal Br. 16.
3. Claim 16
Claim 16 depends from dependent claim 12 (which depends from
claim 1, discussed above), and requires that a "core food element" on which
the composition is coated "comprises a cereal bar comprising at least about
25% by weight grain products." Appeal Br. 28. In addition to the findings
regarding claims 1 and 12, the Examiner finds that Halladay teaches that the
core food element is a cereal bar comprising 20-80% grain products. See
Final Action 5 (citing Halladay 4:5-9). The Examiner determines that
"[ o ]ne of ordinary skill in the art would have been motivated for the cereal
bar to contain conventional ingredients, including 20-80% grains as taught
by Halladay. To include known cereal bar food ingredients would have been
obvious and routine determination to one of ordinary skill in the art." Id. at
6.
While Appellants note that "Halladay teaches a bar having cereal
flakes and filling in a ratio of about 50/50," Appellants argue that "Halladay
does not teach the composition of the cereal flakes. Thus, the Examiner has
not pointed to a cereal bar having a cereal portion with 25% by weight grain
products." Appeal Br. 15.
We do not find Appellants' arguments persuasive of reversible error
in the rejection of claim 16. Appellants have not directed our attention to
factual evidence contrary to the Examiner's determination that a person of
ordinary skill in the art would have understood that a cereal component "in
the form of a flake or puffed cereal," Halladay 1 :65, refers to grain products.
See Final Action 5-6; Answer 18. For the same reasons, we also find no
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reversible error in the rejection of claim 1 7, which depends from claim 16.
See Appeal Br. 28.
4. Claims 18, 19, 27, and 28
Claims 18 depends from claim 16, and requires that "at least a portion
of the confectionary coating/filling composition is coated over the at least a
portion of the cereal bar." Appeal Br. 2 8. Claim 19 also depends from
claim 16, and requires that the "cereal bar comprises two pieces and a
portion of the confectionary coating/filling is between the two pieces as a
filling and portion of confectionary coating/filling is coated over the filled
cereal bar pieces." Id. Claim 27 depends from claim 21, and requires that
"at least a portion of the confectionary coating/filling composition is coated
over the at least a portion of the food item." Id. at 31. Claim 28 also
depends from 21, and requires that "the food item comprises two pieces and
a portion of the confectionery coating/filling is between the two pieces as a
filling and portion of confectionery coating/filling is coated over the filled
food item pieces." Id.
For each of these claims, Appellants argue that "the filling of Zimeri
is an oil-in-water emulsion intended to be baked as a filling in a dough."
Appeal Br. 15-17. Thus, according to Appellants, "[t]here is no apparent
reason why one of ordinary skill in the art would look to apply a bakable
filling ingredient" as a filling or coating according to these claims. Id.
As discussed above in the context of claims 1 and 5, Zimeri states that
the creamy product may be squeezed "onto or into a cooked or raw food
product, for eating as is or after cooking." Zimeri i-f 37. Because the
teachings of Zimeri are not limited to producing a bakeable filling
ingredient, Appellants' arguments are not persuasive of reversible error in
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the Examiner's rejection of claims 18, 19, 27, or 28. Therefore, we affirm
the Examiner's decision to reject claims 18, 19, 27, or 28.
5. Claims 22, 30, and 31
Independent claim 22 is directed to a bar with a "cereal portion" that
comprises "at least about 25% weight grain products and at least about 25%
by weight sugar," among other limitations. Appeal Br. 29. As with claim
16, discussed above, the Examiner cites Halladay as teaching a cereal bar
with 20-80% grains. See Final Action 5 (citing Halladay Abstract, 4:5-9).
The Examiner determines that "[ o ]ne of ordinary skill in the art would have
been motivated for the cereal bar to contain conventional ingredients,
including 20-80% grains as taught by Halladay. To include known cereal
bar food ingredients would have been obvious and routine determination to
one of ordinary skill in the art." Id. at 6.
While Appellants note that "Halladay teaches a bar having cereal
flakes in a ratio of about 50/50," Appellants argue that "Halladay does not
teach the composition of the cereal flakes." Appeal Br. 16. Thus,
Appellants argue that "the Examiner has not pointed to a cereal bar having a
cereal portion with 25% by weight grain products and 25% by weight
sugar." Id.
As to the requirement in independent claim 22 that the cereal portion
comprise "at least about 25% weight grain products," Appeal Br. 29, we do
not find Appellants' arguments persuasive of reversible error, for the reasons
discussed above in relation to claim 16.
As to the requirement in claim 22 that the cereal portion comprises "at
least about 25% by weight sugar," Appeal Br. 29, the Examiner does not
appear to have made explicit findings that the cited prior art teaches the
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required sugar content of at least about 25% in the cereal portion. However,
we find that Halladay teaches that "[ c ]ereal binders useful for the purpose of
this invention may be made of sugar, polyhydric alcohol, oils, or
combinations of these." Halladay 3:60-62. Thus, Halladay teaches a binder
made of sugar, with or without combination with other ingredients. In
addition, Halladay teaches that in a cereal bar portion of a product to be used
with a filling, the ratio of binder to cereal may be from 20:80 to 80:20, and
preferably about 50:50. See id. at 4:5-9. Therefore, we determine that in a
bar comprising a coating as defined by claim 22 and a cereal portion
comprising at least about 25% by weight grain products, it would have been
obvious at the time of filing for a person of ordinary skill in the art to use at
least about 25% by weight sugar in the cereal portion, for the known purpose
of binding together the cereal portion.
For the above reasons, we are not persuaded of reversible error in the
Examiner's rejection of claim 22, or claim 29 which depends therefrom.
Claim 30 depends from claim 22, and requires that "at least a portion
of the confectionery coating/filling composition is coated over the at least a
portion of the cereal portion." Appeal Br. 31. Claim 31 also depends from
claim 22, and requires that "the cereal portion comprises two pieces and a
portion of the confectionery coating/filling is between the two pieces as a
filling and portion of confectionery coating/filling is coated over the filled
cereal portion pieces." Id.
For claims 30 and 31, Appellants argue that "the filling of Zimeri is an
oil-in-water emulsion intended to be baked as a filling in a dough." Appeal
Br. 17-18. Thus, according to Appellants, "[t]here is no apparent reason
why one of ordinary skill in the art would look to apply a bakable filling
ingredient" as a filling or coating according to these claims. Id.
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As discussed above in the context of claims 1 and 5, Zimeri states that
the creamy product may be squeezed "onto or into a cooked or raw food
product, for eating as is or after cooking." Zimeri i-f 37. Because the
teachings of Zimeri are not limited to producing a bakeable filling
ingredient, Appellants' arguments are not persuasive of reversible error in
the Examiner's rejection of claims 30 or 31.
For the above reasons, we affirm the Examiner's decision to reject
claims 22 and 29--31. Because the Examiner did not make explicit findings
regarding the requirement in claim 22 that the cereal portion comprises "at
least about 25% by weight sugar," we designate our affirmance of the
Examiner's decision to reject claims 22 and 29--31 under the combination of
Zimeri in view of Domino, Froseth, and Halladay (Rejection III) as a new
ground of rejection under 37 C.F.R. § 41.50(b).
6. Claim 23
Claim 23 is similar in its limitations to claim 1; however, claim 23
requires that "the sugar has an average particle size of from about 1 to about
50 microns." Appeal Br. 30. The Examiner cites Lees & Jackson as
teaching that
in the compositions of cremes and fillings, one of the main
quality criteria is the size of the sugar crystals present and a
good quality product should comprise crystals within the size
range of 5-30 microns, wherein larger crystals appear coarse to
the palate and smaller crystals appear tacky to the tongue.
Final Action 7 (citing Lees & Jackson 215). Thus, according to the
Examiner,
it would have been obvious to one of ordinary skill in the art at
the time the invention was made for the sugar in the filling as
taught by Zimeri to be of a particle size of about 5-30 microns
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in order to form a good quality product that was not coarse or
tacky as taught by Lees.
Id. at 8.
Appellants argue that the particle size taught in Lees & Jackson is "for
creams and fondants including a moisture content of 13% and 11-12%,
respectively," and that the reference teaches that a 1 % change in moisture
content can result in a 3--4% change in the amount of syrup phase. Appeal
Br. 18. We do not find this argument persuasive of reversible error in the
rejection of claim 23. The Examiner cites Lees & Jackson for its teaching
that particle size in the range required by claim 23 may lead to a desirable
texture. Moreover, we note that Zimeri teaches that "[t]he particle size ...
should be below the threshold at which graininess is perceived." Zimeri
i-f 54. Improving texture by optimizing the particle size is sufficient reason
for a person of ordinary skill in the art to have incorporated the teachings of
Lees & Jackson into the composition taught by Zimeri. See In re Keller, 642
F.2d 413, 425 (CCPA 1981) ("The test for obviousness is not whether the
features of a secondary reference may be bodily incorporated into the
structure of the primary reference .... Rather, the test is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.")
Appellants also argue that "Zimeri teaches the advantages of using
sugars that resist crystallization," and argues that "one would be discouraged
from using at least about 25% sugar having an average particle size of 1 to
50 microns in the composition of Zimeri," and that "the tendency of sugars
to crystallize at low moisture contents, in addition to the teaching that
crystallization should be inhibited, would discourage one of ordinary skill in
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the art from reducing the moisture level to the claimed amount of 1.5%."
Appeal Br. 18-19.
While Zimeri teaches the advantage of using sufficient crystallization-
reducing sugars when using sucrose, see Zimeri i-f 49, Appellants do not
point to evidence to dispute the Examiner's finding that "Zimeri teaches that
in preferred amounts 15% or greater of the sugars are liquid (paragraph
0049), thus clearly encompassing or at least making obvious the remaining
sugars (10---50%) as the alternative solid." Answer 19. Thus, by a
preponderance of the evidence on this record, we do not find Appellants'
arguments persuasive of reversible error in the rejection of claim 23. For the
same reasons, we find no reversible error in the Examiner's rejection of
claims 24 and 25.
B. Rejections V-VIII
In response to rejections V-VIII, Appellants argue claims 1--4, 6-8,
12, and 20 as a group, see Appeal Br. 19-21, and state that claims 9 and 10
stand or fall with claim 1, see id. at 23. Appellants also separately argue
claims 5, 15, 21, and 22, see id. at 21-23, and argue as a group claims 16-
19, see id. at 22, and claims 23-25, see id. at 24--25. Therefore, consistent
with the provisions of 37 C.F.R. § 41.37(c)(l)(iv) (2013), we limit our
discussion to claims 1, 5, 15, 16, and 21-23. The remaining claims stand or
fall with these claims.
1. Claims 1, 5, and 21
The Examiner finds that Karwe teaches the composition of claims 1,
5, and 21, including the sugar, fat, moisture, and sweetness reducing agent
components (i.e., the known sweetness reducer Super Envision), see Final
Action 8, except that "Karwe is silent to the moisture content of the filling as
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about 1.5% or less as required by claims 1 [and] 21," or with a moisture
content of no more than about 1 % as required by claim 5, id. at 8. However,
the Examiner cites Halladay as teaching "that in general, the moisture
content of the filling is less than 5%, preferably 2-3%." Id. at 9 (citing
Halladay 3: 19-26). Also, the Examiner cites Froseth as teaching "that when
the filling has very little water, i.e. less than about 1 %, the moisture
equilibration time is decreased and the results are a more stable product."
Id. (citing Froseth 10:55---61). Thus, the Examiner determines that
it would have been obvious to one of ordinary skill in the art for
the filling/coating as taught by Karwe to have a low moisture
content, including about 1 % or less, in order to form a more
shelf stable product as taught by Halladay and Froseth. As the
secondary prior art references teach the adjustment of moisture
content of a filling, such as taught by Karwe, one of ordinary
skill in the art would have a reasonable expectation of success.
Additionally, as the exemplary formulas and product
composition taught by Karwe do not require moisture one of
ordinary skill in the art would further have a reasonable
expectation of success in adjusting the moisture content just by
the simple process of determining the desired ingredients
disclosed by Karwe. This is the same process shown for
adjusting the moisture content in the secondary references
Halladay (column 3 lines 19-26) and Froseth (column 10 lines
55---61).
Id. at 9-10.
Appellants argue that Karwe teaches a moisture content that is
"magnitudes higher" than the range required for claim 1, because "the
disclosed moisture content is taken from a powdered cookie sample,
including the cookie portion and cream portion, rather than the cream filling
alone." Appeal Br. 19-20. Appellants argue that Karwe teaches that "it is
known that higher moisture retention in products can enhance the retention
of some health promoting nutraceutical compounds." Id. at 20. Moreover,
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Appellants argue that because Lees & Jackson teach that only a 1 % change
in water content can produce a 3--4% change in the amount of syrup phase,
"it would not be possible to preserve the creamy texture of the filler or
provide a stable base for the omega-3 fatty acids of Karwe while decreasing
the moisture content to no more than about 1.5%, after a 400 fold moisture
content reduction." Id.; see also id. at 22 (discussing claim 21). Appellants
also argue that because it was the primary objective of Karwe to provide an
omega-3 fortified food product, the Examiner's reasoning is insufficient to
show that a person of ordinary skill in the art would have reduced the
moisture content from what is disclosed by Karwe. See id. at 21; see also id.
at 22 (arguing that reducing the moisture "would destroy the invention of
Karwe").
As discussed above, although Lees & Jackson teaches that a small
change in moisture in creams and fondants may result in a significant
"change in the amount of syrup phase that is present," it also teaches that
"[ o ]ne of the main quality criteria of a sample of fondant or cream is the size
of the sugar crystals present in the solid phase." Lees & Jackson 215. Thus,
Lees & Jackson teaches that at least one factor other than moisture content
may affect the creaminess of the texture. Thus, Lees & Jackson does not
support Appellants' contention that a person of ordinary skill in the art,
seeking to obtain a smooth or creamy texture as taught by Karwe, would
have been dissuaded from using a moisture content in the range specified by
claims 1, 5, or 21.
Karwe teaches that "higher moisture retention in products can
enhance the retention of some health promoting nutraceutical compounds."
Karwe 9. This teaching is limited to use of "some" nutraceutical additives,
and Appellants have not directed our attention to any teaching in Karwe or
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elsewhere that criticizes, discredits, or otherwise discourages compositions,
in general, containing the specific moisture ranges required by claims 1, 5,
or 21. See In re Fulton, 391F.3d1195, 1201 (Fed. Cir. 2004) ("The prior
art's mere disclosure of more than one alternative does not constitute a
teaching away from any of these alternatives" if it "does not criticize,
discredit, or otherwise discourage the solution claimed."). Moreover, the
benefit of enhanced retention of some nutraceuticals is only one
consideration among several that a person of ordinary skill in the art might
have considered, including the concern for increasing shelf stability as
taught by Halladay and Froseth. "The fact that the motivating benefit comes
at the expense of another benefit ... should not nullify its use as a basis to
modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another." Winner Int'! Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000). Thus, by a preponderance of the evidence on this record,
we are not persuaded of reversible error in the Examiner's determination that
a person of ordinary skill in the art would have been motivated by the
benefit of increased shelf stability, as taught by Halladay and Froseth, to
decrease the moisture content disclosed by Karwe to the range specified by
claims 1, 5, or 21. For the same reasons, we find no material error in the
rejection of claims 2--4, 6-10, 12, 20, and 26-28.
2. Claim 15
Claim 15 depends from claim 12, and further requires that "the
confectionary coating/filling is aerated." Appeal Br. 28. The Examiner cites
Kelly as teaching this limitation, see Final Action 11 (citing Kelly 4: 11--42,
8:24--33), and determines that a person of ordinary skill in the art
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would have been motivated to aerate the binder, as was known,
as taught by Kelly, in order to form a final binder solution and
thus a final product which was lighter and less dense. To
perform a known operation on a binder solution for its known
and intended function would have been obvious and routine
determination to one of ordinary skill in the art.
Id. at 12.
Appellants argue that "Karwe specifically discloses mixing the filling
composition at a low speed," and that "a major hurdle in the production of
fortified foods is the stability of the fatty acids during processing." Appeal
Br. 24. According to Appellants, Karwe teaches that "following addition of
the omega-3 fatty acids, the composition is only mixed for a few second[s]
followed by mixing by hand," id. (citing Kelly 14), and that "[h]igh
temperatures and the presence of oxygen may lead to an undesirable
increased oxidation of EPA and DHA," id. (citing Kelly 3). Thus,
Appellants argue as follows:
Id.
One of ordinary skill in the art would understand that care
should be taken when adding and processing sensitive
ingredients such as omega-3 fatty acids. Thus, one would not
look to Kelly for a teaching of aerating the filling composition
of Karwe since Karwe teaches mixing at low speeds and
aeration could compromise the omega-3 fatty acids of the
composition.
While Karwe teaches that "[h ]igh temperatures and the presence of
oxygen may lead to an undesirable increased oxidation of EPA and DHA,"
see Karwe 3, Appellants have not pointed to evidence disputing the
Examiner's finding that "Karwe teaches that high temperatures are not used
during processing in order to prevent degradation." Final Action 8 (citing
Karwe 13: 12-14). Moreover, we note that Karwe discloses creams suitable
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for use with raw food products "for eating as is," without necessarily
exposing the product to high temperatures involved in cooking. See Karwe
5. Thus, Appellants have not provided persuasive evidence sufficient to
show that Karwe teaches away from aeration during low temperature
mixing. Moreover, while Karwe provides an example of preparing a filling
for a sandwich cookie in which the recipe calls for one to add a nutritive oil
mixture and then "mix a few seconds (15 max)" with a mixer, see Karwe 14,
this recipe does not specify a mixing speed, and does not provide an
explanation for limiting the mixing time. Thus, Appellants have not
provided persuasive evidence in support of the contention that the sandwich
cookie recipe in Karwe teaches away from aeration.
Therefore, based on the preponderance of the evidence on this record,
we are not persuaded of reversible error in the Examiner's rejection of claim
15.
3. Claim 16
The Examiner finds that Halladay teaches a "core food element" that
is a cereal bar comprising 20-80% grain products. Final Action 9 (citing
Halladay 4:5-9). The Examiner determines that"[ o ]ne of ordinary skill in
the art would have been motivated for the cereal bar to contain conventional
ingredients, including 20-80% grains as taught by Halladay. To include
known cereal bar food ingredients would have been obvious and routine
determination to one of ordinary skill in the art." Id. at 10.
Appellants respond to the Examiner's rejection with substantially the
same arguments as discussed above in the context of rejections I-IV.
Compare Appeal Br. 22 with id. at 14--15. In particular, Appellants argue
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that "the Examiner has not pointed to a cereal bar having a cereal portion
with 25% by weight grain products." Appeal Br. 22.
For the reasons discussed above in the context of rejections I-IV, we
do not find Appellants' arguments persuasive of reversible error in the
rejection of claim 16. For the same reasons, we also find no reversible error
in the rejection of claims 17-19, which depend from claim 16.
4. Claim 22
As with claim 16, discussed above, the Examiner cites Halladay as
teaching a cereal bar with 20-80% grains. See Final Action 9 (citing
Halladay Abstract, 4:5-9). The Examiner determines that "[o ]ne of ordinary
skill in the art would have been motivated for the cereal bar to contain
conventional ingredients, including 20-80% grains as taught by Halladay.
To include known cereal bar food ingredients would have been obvious and
routine determination to one of ordinary skill in the art." Id. at 10.
Appellants respond to the Examiner's rejection with substantially the
same arguments as discussed above in the context of rejections I-IV.
Compare Appeal Br. 23 with id. at 16. In particular, Appellants argue that
"the Examiner has not pointed to a cereal bar having a cereal portion with
25% by weight grain products and 25% by weight sugar." Id.
For the reasons discussed above in the context of rejections I-IV, we
do not find Appellants' arguments persuasive of reversible error in the
rejection of claim 22, and we determine that in a bar comprising a coating as
defined by claim 22 and a cereal portion comprising at least about 25% by
weight grain products, it would have been obvious at the time of filing for a
person of ordinary skill in the art to use at least about 25% by weight sugar
in the cereal portion, for the known purpose of binding together the cereal
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portion. Likewise, we are not persuaded of reversible error in the rejection
of claims 29-31 which depend from claim 22. Because the Examiner did
not make explicit findings regarding the requirement in claim 22 that the
cereal portion comprises "at least about 25% by weight sugar," we designate
our affirmance of the Examiner's decision to reject claims 22 and 29-31
under the combination of Karwe in view of Halladay, and Froseth (Rejection
V) as a new ground of rejection under 37 C.F.R. § 41.50(b).
5. Claim 23
Citing Lees & Jackson, the Examiner determines that
it would have been obvious to one of ordinary skill in the art at
the time the invention was made for the sugar in the filling as
taught by Karwe to be of a particle size of about 5-30 microns
in order to form a good quality product that was not coarse or
tacky as taught by Lees.
Id. at 14.
As in response to rejection IV, discussed above, Appellants argue that
the particle size taught in Lees & Jackson is "for creams and fondants
including a moisture content of 13% and 11-12%, respectively," and that the
reference teaches that a 1 % change in moisture content can result in a 3--4 %
change in the amount of syrup phase. Compare Appeal Br. 24 with id. at 18.
We do not find this argument persuasive of reversible error in the rejection
of claim 23, for the reasons discussed above in the context of rejections I-
IV.
In addition, Appellants argue that Karwe teaches a composition that is
"completely different" from that disclosed in Lees & Jackson, which uses,
for example, "a large amount of gelatin." Appeal Br. 25. Thus, Appellants
argue that "[i]t is unreasonable to suggest the cream of Karwe to be modified
to contain sugars of the specified size disclosed in Lees and Jackson." Id.
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Appellants also argue, as with claim 1, that "reducing the moisture content
of Karwe to the level specified in Halladay or Froseth may render Karwe
unsatisfactory ... for its intended purpose." Id.
For the reasons discussed above in relation to claim 1 (rejection V),
we find no reversible error in the Examiner's determination that a person of
ordinary skill in the art would have been motivated by the benefit of
increased shelf stability, as taught by Halladay and Froseth, to decrease the
moisture content disclosed by Karwe to the range specified by claim 23.
Moreover, the Examiner cites Lees & Jackson not for a specific composition
that may be bodily incorporated into the disclosure of Karwe, but for its
teaching that particle sizes in the range required by claim 23 may lead to an
improved texture. See Keller, 642 F.2d at 425.
Thus, by a preponderance of the evidence on this record, we do not
find Appellants' arguments persuasive of reversible error in the rejection of
claim 23. For the same reasons, we find no reversible error in the
Examiner's rejection of claims 24 and 25, which depend therefrom.
NEW GROUND OF REJECTION
We designate the analysis as stated herein in support of our
affirmance of the Examiner's decision to reject claims 22 and 29--31
(Rejections III and V) as a new ground of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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
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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 prosecution will be remanded to
the examiner. The new ground of rejection is binding upon the
examiner unless an amendment or new Evidence not previously
of Record is made which, in the opinion of the examiner,
overcomes the new ground of rejection designated in the
decision. Should the examiner reject the claims, appellant may
again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under§ 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
DECISION
The Examiner's decision rejecting claims 1-10, 12, and 15-31 under
35 U.S.C. § 103(a) is affirmed, and a new ground of rejection is designated
based upon our analysis as stated herein with respect to claims 22 and 29-31
(Rejections III and V).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED; NEW GROUND OF REJECTION PURSUANT TO
37 C.F.R. § 41.50(b)
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