Ex Parte Nakamura et alDownload PDFPatent Trial and Appeal BoardNov 28, 201714342260 (P.T.A.B. Nov. 28, 2017) Copy Citation 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. 14/342,260 02/28/2014 Yoshitaka Nakamura 20488.0011USWO 7639 52835 7590 11/30/2017 HAMRE, SCHUMANN, MUELLER & LARSON, P.C. 45 South Seventh Street Suite 2700 MINNEAPOLIS, MN 55402-1683 EXAMINER HEGGESTAD, HELEN F ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 11/30/2017 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): PTOMail @hsml. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHITAKA NAKAMURA, TAKAHIRO KANNO, MEGUMUIGAWA, TAKESHI TAKAHASHI, YOSHIHARU MUKAI, and AKEMIUTSUMI1 Appeal 2017-002483 Application 14/342,260 Technology Center 1700 Before JEFFREY B. ROBERTSON, MONTE T. SQUIRE, and AVELYN M. ROSS, Administrative Patent Judges. SQUIRE, Administrative Patent Judge. DECISION ON APPEAL2 Appellants appeal the Examiner’s decision finally rejecting claims 1, 4, 6, 8, and 10, which constitute all the claims pending in this application. 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C. § 6(b). 1 Appellants identify Meiji Co., Ltd. and Showa University as the real party in interest. App. Br. 3. 2 In our Decision, we refer to the Specification filed February 28, 2014 (“Spec.”); Final Office Action dated February 16, 2016 (“Final Act.”); Appeal Brief dated July 18, 2016, 2016 (“App. Br.”); Examiner’s Answer to the Appeal Brief dated October 4, 2016 (“Ans.”); and Reply Brief dated November 30, 2016. Appeal 2017-002483 Application 14/342,260 We AFFIRM. The Claimed Invention Appellants’ disclosure relates to food products for enhancing chewing ability. Spec. 11; Abstract. Claim 1 is illustrative of the claimed subject matter on appeal and is reproduced below from the Claims Appendix to the Appeal Brief (App. Br. 22—23) (key disputed claim language italicized and bolded and indentation added): 1. A baked food product for enhancing chewing ability for small children, comprising: at least one type of main raw material selected from the flour group consisting of wheat flour, rice flour and starchy flour, at least one type of thickening agent selected from the group consisting of soya protein, milk protein, chicken egg, syrup, xanthan gum, guar gum and carrageenan; and a secondary raw material comprising glycerol, wherein the at least one type of main raw material and the at least one type of secondary raw material are added in amounts sufficient so that the baked food product has a breaking stress within a range of 0.3 x 107 N/m2 or more and 4.5 x 107 N/m2 or less, a breaking strain within a range of 20% or more and 65% or less, a brittleness stress within a range of 0 N/m2 or more and 2 x 106 N/m2 or less, and a cohesiveness within a range of 0.1 or more and 0.5 or less, wherein based on 100 parts by mass of the entire raw materials, the soya protein accounts for a proportion that is 1 part by mass or more and 10 parts by mass or less, the milk protein accounts for a proportion that is 1 part by mass or more and 10 parts by mass or less, the chicken egg accounts for a proportion that is 1 part by mass or more and 10 parts by mass or less, the syrup 2 Appeal 2017-002483 Application 14/342,260 accounts for a proportion that is 4 parts by mass or more and 40 parts by mass or less, the xanthan gum accounts for a proportion that is 0.02 parts by mass or more and 0.2 parts by mass or less, the guar gum accounts for a proportion that is 0.02 parts by mass or more and 0.2 parts by mass or less, and the carrageenan accounts for a proportion that is 0.02 parts by mass or more and 0.2 parts by mass or less, wherein the amount of the secondary raw material is within a range of 0.5parts by mass or more and 16parts by mass or less based on the 100 parts by mass of the entire raw material, and wherein a width is within a range of 18mm or more and 28mm or less, a thickness is within a range of 7mm or more and 1 4mm or less, and a length is within a range of 50mm or more and 100mm or less. The References The Examiner relies on the following prior art references3 as evidence in rejecting the claims on appeal: Romanowski et al., US 2009/0311197 A1 Dec. 17, 2009 (hereinafter “Romanowski”) Koo et al., US 2011/0290197 Al Dec. 1,2011 (hereinafter “Koo”) The Rejections On appeal, the Examiner maintains the following rejections: 1. Claims 1, 4, 6, 8, and 10 are rejected under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite for 3 The Examiner has withdrawn and no longer relies on the Sugino reference (US 4,978,551, issued Dec. 18, 1990) in combination with Romanowski and Koo in rejecting the claims on appeal. Ans. 9 3 Appeal 2017-002483 Application 14/342,260 failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention (“Rejection 1”). Ans. 2, 3; Final Act. 3. 2. Claims 1, 4, 6, 8, and 10 are rejected under pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Romanowski in view of Koo (“Rejection 2”). Ans. 3, 4. OPINION Having considered the respective positions advanced by the Examiner and Appellants in light of this appeal record, we affirm the Examiner’s rejections based on the fact finding and reasoning set forth in the Answer to the Appeal Brief, which we adopt as our own. We highlight and address specific findings and arguments below for emphasis. Rejection 1 The Examiner rejects claims 1, 4, 6, 8, and 10 under § 112 for indefmiteness. Ans. 2, 3. In particular, the Examiner determines that the phrase “wheat flour, rice flour and starchy flour” of claim 1 is indefinite because wheat and rice flours contain mostly starch and render the recitation “starchy flour” redundant. Id. at 3. Appellants argue that the Examiner’s rejection should be reversed because a person possessing the ordinary level of skill in the pertinent art in light of the Specification would understand that “starchy flour” refers to “flour made from starch, and is not the same as wheat flour or rice flour.” App. Br. 9 (internal quotations omitted); see also Reply Br. 1—2 (same). To satisfy 35 U.S.C. § 112, second paragraph, the question to be answered is whether the ordinarily skilled artisan would understand what is 4 Appeal 2017-002483 Application 14/342,260 claimed when that claim is read in light of the specification. Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). Based on our review of the claim language and the Specification and for reasons provided by the Examiner at page 3 of the Answer and page 3 of the Final Office Action, we do not find Appellants’ argument persuasive of reversible error in the Examiner’s rejection. We concur with the Examiner’s determination (Ans. 3) that the phrase “wheat flour, rice flour and starchy flour” is indefinite because both wheat flour and rice flour comprise mostly starch. Contrary to what Appellants argue, we do not find that in light of the Specification one of ordinary skill in the art reading the claims would have understood the meaning of the term “starchy flour” and the scope of what is being claimed. The Specification does not define the term “starchy flour” or provide a clear distinction between what is meant by “starchy flour” on the one hand and “wheat flour” and/or “rice flour” on the other hand. For example, although paragraph 29 discloses that “wheat flour, rice flour, starch flour, and the like” can be used in the claimed composition, the paragraph also discloses “rice starchy flour” and “wheat starchy flour” as flours that can be used. Spec. 129. Accordingly, we affirm the Examiner’s § 112 rejection of claims 1, 4, 6, 8, and 10 for indefmiteness. Rejection 2 Claim 1 The Examiner determines that the combination of Romanowski and Koo suggests a food composition satisfying all of the limitations of claim 1 and thus, would have rendered the claim obvious. Ans. 4—8 (citing 5 Appeal 2017-002483 Application 14/342,260 Romanowski || 21, 51, 57, 58, 61, 62, 118, 119, Tables 1, 2, 8, 12; Koo | 104 (Example 1)). Appellants argue that the Examiner’s rejection should be reversed because the Examiner’s “suggested combination” fails to teach or suggest the physical properties recited in claim 1. Reply Br. 2; App. Br. 10. In particular, Appellants contend that the cited art does not teach or suggest the “breaking stress,” “breaking strain,” and “cohesiveness” as required by claim 1. App. Br. 10, 13; Reply Br. 2. Appellants also contend that without the Sugino reference, the rejection cannot be maintained because the Examiner relies on Sugino for teaching the physical properties recited in the claim. Reply Br. 2. Appellants further argue that “[tjhere is no motivation for one skilled in the art to make the suggested combination.” App. Br. 13. In particular, Appellants contend that: (1) one of skill in the art would not “look to Sugino to modify the hard biscuit properties of Romanowski” (id. at 12—13); (2) the combination of Sugino, Romanowski, and Koo would “render the purpose of Sugino inoperable for its intended purpose” (id. at 14); and (3) one of skill in the art would not have been led to modify Romanowski’s composition based on Koo’s Example 1 (Reply Br. 3—4). We do not find Appellants’ arguments persuasive of reversible error in the Examiner’s rejection. On the record before us, we find that the preponderance of the evidence and sound technical reasoning support the Examiner’s analysis and determination that the combination of Romanowski and Koo suggests all of the limitations of claim 1 and conclusion that the combination would have rendered the claim obvious. Romanowski || 21, 51, 57, 58, 61, 62, 118, 119, Tables 1, 2, 8, 12; Koo 1104 (Example 1). 6 Appeal 2017-002483 Application 14/342,260 As the Examiner finds (Ans. 4—6), Romanowski teaches a baked teething biscuit composition comprising wheat flour, powdered milk, salt, eggs, beef bouillon, sorbitol, and glycerol and overlapping the claimed amounts for each of the ingredients recited in claim 1. Romanowski H 21, 51, 57, 58, 61, 62, 118, 119, Tables 1, 2, 8, 12. In particular, as the Examiner finds (Ans. 9), Tables 2 and 12 of Romanowski disclose compositions with a glycerol contents falling within the claimed range of “0.5 parts by mass or more and 16 parts by mass or less.” Romanowski, Tables 2, 12. As the Examiner further finds (Ans. 7—8), Koo teaches a dental pet chew product comprising flour and glycerol that can be heated to temperatures ranging from 30—90° C to obtain a particular dryness/hardness. Koo 68, 104 (Example 1). Appellants’ arguments do not reveal any reversible error in the Examiner’s factual findings and analysis in this regard. The Examiner also provides a reasonable basis and identifies a preponderance of the evidence in the record to evince why one of ordinary skill would have combined the teachings of the references to arrive at Appellants’ claimed invention. Ans. 8 (explaining that one of ordinary skill would have had reasons to use Koo’s baking process with Romanowski’s teething biscuit composition to obtain a mainly flour and glycerin composition with a particular hardness); see also KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007) (explaining that any need or problem known in the art can provide a reason for combining the elements in the manner claimed). 7 Appeal 2017-002483 Application 14/342,260 Appellants fail to direct us to sufficient evidence or provide an adequate technical explanation to establish why the Examiner’s articulated reasoning for combining the teachings of the prior art to arrive at the claimed invention lacks a rational underpinning or is otherwise based on some other reversible error. Appellants’ argument that the cited art does not teach or suggest the physical properties recited in claim 1 is not persuasive of reversible error because it is not necessary for the prior art to expressly teach the physical properties recited by claim 1 in order to render claim 1 obvious. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”); In re Spada, 911 F.2d 705, 708-09 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Here, as previously discussed above, a preponderance of the evidence supports the Examiner’s determination (Ans. 4—8) that the combination of Romanowski and Koo suggests a food product with a composition that is identical or substantially identical to the claimed composition. See also id. at 10 (finding that “the process and product of producing a baked food product has been disclosed” in the prior art). Thus, it follows that the prior art food product would have possessed the same physical properties as the food product of claim 1, including the claimed breaking stress, breaking strain, and cohesiveness. See Best, 562 F.2d at 1255. 8 Appeal 2017-002483 Application 14/342,260 Appellants fail to provide persuasive evidence or technical reasoning sufficient to show that the prior art product would not possess the physical properties recited by claim 1. Ans. 10 (finding that “no showing has been presented that the breaking strength, stress, brittleness or cohesiveness are not the same as even the products as disclosed in [Romanowski’s] Table 12”). Appellants’ assertion that “[tjhere is absolutely no reason to assume that the liquid solution according to Romanowski et al.’s TABLE 1 and TABLE 2 can inherently have or achieve the physical properties of the baked food product in claim 1” (Reply Br. 3) is not persuasive and without more, insufficient to rebut the Examiner’s findings in this regard. We do not find Appellants’ arguments regarding the Sugino reference (App. Br. 12—14) persuasive of reversible error because the Examiner has withdrawn and does not rely on the Sugino reference in the rejection. See Ans. 9 (“WITHDRAWN REJECTIONS”) (stating that the “reference to Sugino (4,978,551) has been withdrawn”). Appellants’ assertion that one of skill in the art would not have been led to modify Romanowski’s composition based on Koo’s Example 1 (Reply Br. 3 4) is not persuasive of reversible error in the Examiner’s rejection because it is conclusory and Appellants do not provide an adequate technical explanation or direct us to sufficient evidence in the record to support it. Attorney argument is not evidence. In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Claim 4 Claim 4 depends from claim 1 and further recites: 9 Appeal 2017-002483 Application 14/342,260 wherein the amount of the secondary raw material is within a range of 1 part by mass or more and 10 parts by mass or less based on the 100 parts by mass of the entire raw material. App. Br. 23 (Claims App’x) (key disputed claim language bolded and italicized). Appellants separately argue that the Examiner’s rejection of claim 4 should be reversed because Romanowski does not teach or suggest that the amount of glycerol added is within a range of 1 to 10 parts by mass based on the 100 parts by mass of the entire raw material, as required by the claim. App. Br. 15—16. Appellants’ argument is persuasive because the Examiner has not established by a preponderance of the evidence that the cited art teaches or suggests “secondary raw material is within a range of 1 part by mass or more and 10 parts by mass or less based on the 100 parts by mass of the entire raw material,” as required by claim 4. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (holding that the examiner bears the initial burden of establishing a prima facie case of obviousness). The Examiner does not adequately discuss or identify sufficient evidence in the record that the combination of Romanowski and Koo teaches or suggests this limitation. Although the Examiner finds Romanowski discloses compositions with a glycerol content falling within the range of “0.5 parts by mass or more and 16 parts by mass or less” recited in claim 1 (see Romanowski, Tables 2, 12), the Examiner seems to acknowledge (Ans. 9) that the reference does not explicitly disclose a composition having a glycerol content falling within “a range of 1 part by mass or more and 10 parts by mass or less,” as required by claim 4. 10 Appeal 2017-002483 Application 14/342,260 Moreover, although the Examiner finds that “it would have been within the skill of the ordinary worker to adjust the amount of glycerin as in claim 4 to that acceptable to small children” and “one would know to use an acceptable amount of glycerin in the product” (Ans. 10), the Examiner does not adequately explain or discuss, for example, how the findings relate to the claimed range. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (holding “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”). On the record before us, we are not persuaded that the Examiner has met the requisite burden in this regard. We, therefore, cannot sustain the Examiner’s determination that the combination of Romanowski and Koo teaches or suggests all of the limitations of claim 4. Claims 6, 8, and 10 Appellants present additional arguments for the patentability of dependent claims 6, 8, and 10. App. Br. 17—20. In essence, Appellants argue that the Examiner’s rejection of these claims should be reversed because the cited art does not teach or suggest the physical properties recited in each of the respective claims. Id. In particular, Appellants argue that the cited art does not teach or suggest: (1) “a breaking stress within the range of 0.6 x 107 N/m2 or more and 4.0 x 107 N/m2 or less, as required by claim 6” (App. Br. 17); (2) “the breaking strain is within the range of 25% or more and 50% or less, as required by claim 8” {id. at 19); and (3) the “brittleness stress is within the range of 0 N/m2 or more and 1 x 106 N/m2 or less, and the cohesiveness is 11 Appeal 2017-002483 Application 14/342,260 within the range of 0.2 or more and 0.4 or less, as required by claim 10” {id. at 20). We do not find any of these arguments persuasive of reversible error in the Examiner’s rejection because, as previously discussed above in affirming the Examiner’s rejection of claim 1, it is not necessary for the prior art to expressly teach the physical properties recited by a claim in order to render the claim obvious. Because a preponderance of the evidence supports the Examiner’s determination that the combination of Romanowski and Koo suggests a food product with a composition that is identical or substantially identical to the claimed composition (Ans. 4—9), it follows that the prior art food product would have possessed the same physical properties as the food product of claim 1, including the physical properties recited in claims 6, 8, and 10, respectively. See Best, 562 F.2d at 1255. Moreover, Appellants’ arguments regarding these claims are conclusory and without more, insufficient to establish unexpected results or otherwise establish reversible error in the Examiner’s analysis and factual findings in this regard. See Spada, 911 F.2d at 708-09; De Blauwe, 736 F.2d at 705. Accordingly, we affirm the Examiner’s rejection of claims 1, 6, 8, and 10 and reverse the Examiner’s rejection of claim 4 under 35 U.S.C. § 103(a) as obvious over the combination of Romanowski and Koo. DECISION/ORDER The Examiner’s rejections of claims 1, 6, 8, and 10 are affirmed and the Examiner’s rejection of claim 4 is reversed. 12 Appeal 2017-002483 Application 14/342,260 It is ordered that the Examiner’s decision is affirmed. 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 13 Copy with citationCopy as parenthetical citation