11388857 (B.P.A.I. Nov. 29, 2011)

Ex Parte O et al

Board of Patent Appeals and InterferencesNov 29, 2011

11388857 (B.P.A.I. Nov. 29, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/388,857 03/24/2006 Heidi O'Sullivan 5599USA-D1 1215 7590 11/30/2011 Annette M. Frawley, Attorney General Mills Number One General Mills Blvd. P.O. Box 1113 Minneapolis, MN 55440 EXAMINER WONG, LESLIE A ART UNIT PAPER NUMBER 1789 MAIL DATE DELIVERY MODE 11/30/2011 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte HEIDI O’SULLIVAN, JENNIFER M. MAACK, LESLIE D. MILLER, JOANA MONTENEGRO, LISA K. PANNELL, and RICHARD A. THOMPSON ________________ Appeal 2010-007424 Application 11/388,857 Technology Center 1700 ________________ Before CATHERINE Q. TIMM, MARK NAGUMO, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-007424 Application 11/388,857 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 14 through 18, 21 through 31, and 33. Claim 32, the other claim pending in this application, stands withdrawn from consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a nutritionally fortified cultured dairy product. Claim 14 is illustrative: 14. A nutritionally fortified cultured dairy product comprising: c. a first intermediate containing live and active cultures, having a culture count of at least 1.5 X 108 cfu/gram; d. a second intermediate having a fat concentration of about 24% to about 40% by weight, wherein the second intermediate comprises randomly shaped and sized discrete pieces in the form of filament particulates dispersed within the first intermediate. The Examiner maintains the rejection of claims 14-18, 21-31, and 33 under 35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Jury (EP 0781510 A1, published Jul. 2, 1997). ISSUE Did Appellants establish that the Examiner reversibly erred in determining that Jury teaches a nutritionally fortified cultured dairy product having a second intermediate in the form of filament particulates as required Appeal 2010-007424 Application 11/388,857 3 by claim 14 within the meaning of § 102 or § 103? We decide this issue in the affirmative. PRINCIPLES OF LAW “A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference.” Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). FACTUAL FINDINGS 1. The Specification discloses that Appellants’ cultured milk based product may be yogurt. (Spec. para. [0019]). The Specification discloses that Appellants’ elongated filament pieces contribute to maintaining even distribution of the filaments throughout the yogurt product over the conventional storage time periods. (Spec. para. [0017]). 2. The Specification discloses that Appellants’ chocolate pieces may be elongated cut filaments having an average aspect ratio of at least 2:1 of length to largest thickness. (Spec. para. [0015]). Appeal 2010-007424 Application 11/388,857 4 ANALYSIS AND CONCLUSION With respect to the Examiner’s §§ 102/103 rejections, the Examiner finds that Jury’s cultured dairy product that has pieces of chocolate or fat- containing confectionary material which are discrete and shaped randomly teaches the claimed form of filament particulates. (Ans. 3 and 4). In support of this position, the Examiner refers to column 2, lines 54-55, column 3, line 14 to column 4, line 8; and claims 1, 3, and 4 of Jury. (Ans. 3). Appellants argue that Jury does not teach that its pieces of chocolate or fat-containing confectionary material are in the form of filament particulates as required by claim 14. (App. Br. 13). We agree with Appellants. Contrary to the Examiner’s allegation, none of the portions of Jury relied upon by the Examiner teaches the disputed claim feature. In this regard, while column 3, lines 16-22 and 26-27 of Jury teaches that its pieces of chocolate or fat-containing confectionary material may be cartoon characters, animals, stars, numbers, or letters of the alphabet and the size of the discrete shaped chocolate pieces may vary, nowhere does Jury teach that its pieces of chocolate or fat-containing confectionary material may be in the form of filament particulates as required by claim 14. The Examiner failed to direct us to any credible evidence that Jury teaches the claimed invention having the disputed claim feature. The Examiner’s sole position in the stated rejection is that Jury teaches discrete randomly shaped chocolate pieces that would include the claimed filament particulate shape for the discrete pieces (Ans. 3-4). The Examiner does not provide any analysis of whether Jury’s teachings regarding the shapes of the chocolate pieces would have inherently anticipated the subject matter Appeal 2010-007424 Application 11/388,857 5 covered by claim 14, i.e., that it would have necessarily comprised chocolate objects having a length-to-largest-thickness ratio of at least 2:1, or how Jury’s teachings would have rendered obvious the subject matter of claim 14 that includes the disputed filament particulates feature (Ans. 3-4). On this record, we find the Examiner failed to establish that Jury teaches the form of the randomly shaped and sized discrete pieces is filament particulates. We cannot sustain the Examiner’s §§ 102/103 rejections. ORDER The Examiner’s decision is reversed. REVERSED bar