Ex Parte Lai et al

Patent Trial and Appeal Board

Mar 20, 2017

11962201 (P.T.A.B. Mar. 20, 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.
11/962,201 12/21/2007 Chron-Si Lai 9249USO! (35226/04646) 7643
106587 7590 03/22/2017
Ahhntt T ahnratnries; EXAMINER
Department 108140, Bldg. RP3-2
3300 Stelzer Road
LATHAM, SAEEDA MONEE
Columbus, OH 43219-3034 ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/22/2017 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRON-SI LAI, JOSEPH E. WALTON,
JIM-WEN R. LIU, and KATI E. SHEARER
Appeal 2016-002975
Application 11/962,201
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
CASHION, 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—19. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appeal 2016-002975
Application 11/962,201
Claims 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. Nutritional emulsions comprising fat, protein, and
carbohydrate, including:
(A) an induced viscosity fiber system, and
(B) a V-complex located within an aqueous phase of the
emulsion and comprising a food grade surfactant complexed
with a polydextrose having an average degree of polymerization
of at least about 10,
wherein the nutritional emulsions have a first viscosity at
20°C of less than about 100 cps, a second viscosity at a
temperature of from 0°C to 8°C that is at least about 50 cps
higher than said first viscosity, and an induced viscosity of at
least about 300 cps.
Appellants (see Appeal Brief, generally) request review of the
following rejections from the Examiner’s Final Office Action:
I. Claims 1, 2, and 7—19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Aldred et al. (US 2005/0233045 Al, published October
20, 2005) (“Aldred”) and Yuan (US 5,755,890, issued May 26, 1998).
II. Claims 3—6 rejected under 35 U.S.C. § 103(a) as unpatentable
over Aldred, Yuan, and Wolf et al. (US 2002/0193344 Al, published
December 19, 2002) (“Wolf’).
The Examiner’s Final Action (Final Act. 9—11) also includes the
following rejection that was not reproduced in the Appeal Brief by
Appellants or withdrawn by the Examiner in the Answer:
III. Claims 1 and 12—15 provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable over
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claims 1—5 and 10-15 of copending Application No. 11/962,198 in view of
Wolf.
For Rejection 1, Appellants present arguments for independent claim
1 and relies on these arguments in addressing the rejection of claims 2 and
7—19. See Appeal Brief, generally. In addressing Rejection II, Appellants
rely on the arguments presented when discussing claim 1 and do not address
or further distinguish the additionally cited secondary reference based on the
additional limitations of the respectively rejected claims. Id. at 20.
Accordingly, we select claim 1 as representative of the subject matter before
us on appeal for the prior art rejections. Claims 2—19 stand or fall with
claim 1.
OPINION
The Prior Art Rejections
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of representative
claim 1 for the reasons presented by the Examiner. We add the following
for emphasis.
Claim 1 is directed to nutritional emulsions including a V-complex
comprising a food grade surfactant complexed with a polydextrose having
an average degree of polymerization of at least about 10 that provides the
nutritional emulsions with a viscosity profile of a first viscosity at 20° C of
less than about 100 cps and a second viscosity at a temperature of from 0° C
to 8° C that is at least about 50 cps higher than said viscosity. App. Br. 7—8.
The Examiner found Aldred teaches a nutritional emulsion comprising
protein, fat, a carbohydrate and a polydextrose (maltodextrin) and
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emulsifiers that differs from the claimed invention in that Aldred does not
disclose using a V-complex comprising a food grade surfactant complexed
with a polydextrose having an average degree of polymerization of at least
about 10 as claimed. Final Act. 2—3; Aldred H 104, 112, 119, 123, 127,
148. The Examiner found Yuan teaches a nutritional emulsion comprising a
starch-emulsifier composition for use as an opacifier in foods and beverages
such as skim milk, and texturizing agent to prepare dairy products. Final
Act. 3; Yuan Abstract, col. 1,11. 60-62, col. 2,11. 37-40. The Examiner
found Yuan discloses the starch-emulsifier composition is a complex formed
from an emulsifier (food surfactant) and a short chain amylose component of
the starch, the short chain amylose having a degree of polymerization of
from about 6 to about 60 that is indicative of the polydextrose maltodextrin.
Final Act. 3^1; Yuan col. 3,11. 20-23, 59-67, col. 5,11. 53-56. The
Examiner found Yuan discloses a dried starch-emulsifier composition that is
effective for enhanced combination with food products as opacifiers and
texturizing agents. Final Act. 4; Yuan col. 2,11. 22-44. The Examiner
determined it would have been obvious to one skilled in the art to
incorporate Yuan’s dried starch-emulsifier composition in the food product
of Aldred in view of Yuan’s teachings. Final Act. 4. While the Examiner
recognized that Aldred and Yuan do not teach a second viscosity at 0 °C to 8
°C that is at least 50 cps higher than the first viscosity, the Examiner found
the combined teachings of the prior art result in the same composition as
claimed and, therefore, the second viscosity would be inherent in the
composition. Final Act. 4; Ans. 10—11.
Appellants argue Yuan fails to teach the claimed V-complex because
Yuan refers to the complexes as starch-emulsifier complexes and not to
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Application 11/962,201
short-chain amylose-emulsifier complexes. App. Br. 15. According to
Appellants, Yuan’s disclosure does not support the Examiner’s position that
the short-chain amylose forms a part of a complex because Yuan
distinguishes between the between starch, amylose, and short-chain amylose.
App. Br. 15; Yuan col. 1,11. 12—13, col. 3,11. 9—12. Appellants argue that
the short chain amylose is only optionally present after the starch-emulsifier
complexes are formed. App. Br. 15—16.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 10—11. As noted by the Examiner, Yuan also discloses
the formation of amylose-emulsifier complexes. Ans. 11; Yuan col. 5,11.
53—54. Moreover, Yuan discloses starch is composed primarily of an
amylose component and amylopecting component and that it is the amylose
component that can form complexes with lipids. Yuan col. 1,11. 10—32. In
addition, Yuan discloses using emulsifiers capable of forming a complex
with amylose as particularly preferred for use in the invention. Id. at col. 3,
11. 64—66. Given this disclosure in Yuan, Appellants have not adequately
explained why one skilled in the art would not have understood that Yuan’s
starch-emulsifier complexes are amylose-emulsifier complexes.
Appellants argue the cited art does not teach or suggest an emulsion
having the viscosity profile of a first viscosity at 20° C of less than about
300 cps and a second viscosity at a temperature of from 0° C to 8° C that is
at least about 50 cps higher than said viscosity. App. Br. 16—17. Appellants
further argue the Examiner has not established the claimed viscosity profile
is inherent to the nutritional emulsion resulting from the combined teachings
of the cited art. Id. at 16.
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We find these arguments unavailing. The mere recitation of a
property or characteristic not disclosed by the prior art does not necessarily
confer patentability. Cf. In re Skoner, 517 F.2d 947, 950 (CCPA 1975).
Where the Examiner establishes a reasonable belief that the property or
characteristic recited in the claims would have been inherent to the product
or process, the burden of proof shifts to Appellants to show that this
characteristic or property is not possessed by the prior art. See In re Best,
562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed.
Cir. 1990).
As shown above, the Examiner established that the product of the
combined prior art and the product of the claimed invention are both
directed to nutritional emulsions comprising protein, fat, a carbohydrate, an
induced viscosity fiber system and a complex formed from a polydextrose
(maltodextrin) and an emulsifier (food surfactant). That is, the Examiner has
established that the product of the claimed invention appears to be the same
or substantially similar to the product of the combined prior art. Thus, the
Examiner has provided a reasonable basis for one skilled in the art to expect
the nutritional emulsions of the prior art and of the claimed invention to have
the same properties. Accordingly, the burden shifted to Appellants to
demonstrate that the viscosity profile of the claimed nutritional emulsion
was not possessed by the prior art. In re Best, 562 F.2d at 1255. Appellants
have not adequately explained or directed us to any evidence showing why
the nutritional emulsion from the combined teachings of the cited art does
not necessarily or inherently possess the disputed property.
Appellants argue Yuan is concerned with opacifying or texturizing
nutritional emulsions while Aldred is concerned with providing liquid or
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spoonable compositions that have good satiety effects. App. Br. 18. Thus,
Appellants argue there is nothing in Aldred to suggest to one skilled in the
art any benefit to substituting the starch-emulsifier composition, as disclosed
in Yuan, for the carbohydrate and emulsifier in the compositions of Aldred.
Id. at 17—18. That is, Appellants argue the Examiner has not provided a
reason to combine the teachings of the cited art. App. Br. 17—18; Reply Br.
3-5.
We are unpersuaded by Appellants’ arguments for the reasons
presented by the Examiner. Final Act. 4; Ans. 12-13. The Examiner found
both references are directed to nutritional food and beverages comprising a
starch-emulsifier composition. Final Act. 3^4; Aldred H 104, 112, 119,
123, 127, 148; Yuan col. 2,11. 22-57, col. 3,11. 20-23, 59-67, col. 6,11. 5-
11. The Examiner found Yuan discloses a dried starch-emulsifier
composition that is effective for enhanced combination with food products
as opacifiers and texturizing agents. Final Act. 4; Yuan col. 2,11. 22-44.
The Examiner determined it would have been obvious to one skilled in the
art to incorporate Yuan’s dried starch-emulsifier composition in the food
product of Aldred in view of Yuan’s teachings. Final Act. 4. Thus, the
Examiner provided a reason for combining the teachings of the prior art.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Appellants
have not adequately explained why the Examiner’s articulated reason is
insufficient to combine the teachings of the cited art.
Appellants argue Aldred teaches away from inclusion of Yuan’s
hydrolyzed starches in the disclosed compositions. App. Br. 19. According
to Appellants, Aldred discloses it is especially preferred that the edible
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compositions are substantially free from hydrolyzed starch. App. Br. 19;
Aldred 194.
We are unpersuaded by these arguments for the reasons provided by
the Examiner. Ans. 13. It is well settled that a reference may be relied upon
for all that it would have reasonably suggested to one having ordinary skill
in the art, including non-preferred embodiments. Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (“all disclosures of the prior
art, including unpreferred embodiments, must be considered”) (quoting In re
Lamberti, 545 F.2d 747, 750 (CCPA 1976)). The disclosed examples and
preferred embodiments do not constitute a teaching away from a broader
disclosure or non-preferred embodiments. In re Susi, 440 F.2d 442, 446 n.3
(CCPA 1971).
As noted by the Examiner, Aldred does not specifically exclude
hydrolyzed starch, as short chain amylase, or teach any detrimental effects of
its inclusion in the composition. Ans. 13. Further, Appellants do not direct
us to any portion of Aldred that supports Appellants’ assertion that the
preference for not using hydrolyzed starch necessarily limits Aldred’s
broader disclosure of using other forms of starch. In fact, paragraph 94 of
Aldred discloses the presence of certain amounts of hydrolyzed starch is
appropriate for the disclosed compositions. Thus, Appellants have not
distinguished the claimed invention from the combined teachings of the
cited art.
Accordingly we affirm the Examiner’s prior art rejections of claims
1—19 under 35 U.S.C. § 103 (a) for the reasons presented by the Examiner
and given above.
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Application 11/962,201
Obviousness-type Double Patenting
The Examiner rejected claims 1 and 12—15 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over claims
1—5 and 10-15 of copending Application No. 11/962,198 in view of Wolf.
Final Act. 9—11.
Appellants have not identified any reversible error in the Examiner’s
obviousness-type double patenting rejection. See Appeal Brief, generally.1
Therefore, we summarily affirm the Examiner’s obviousness-type double
patenting rejection for the reasons presented by the Examiner.
ORDER
The Examiner’s prior art rejection of claims 1—19 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s rejection of claims 1 and 12—15 on the ground of
nonstatutory obviousness-type double patenting is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
1 We note Appellants requested the rejection be held in abeyance until
allowable subject matter is indicated in the application on page 2 of the
After-Final Response dated March 4, 2015.
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