Ex Parte Onwulata

Board of Patent Appeals and Interferences

Apr 21, 2003

09741467 (B.P.A.I. Apr. 21, 2003)

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The opinion in support of the decision being entered
today was not written for publication in a law journal
and is not binding precedent of the Board.
Paper No. 15
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte CHARLES I. ONWULATA

Appeal No. 2002-2333
Application No. 09/741,467

ON BRIEF

Before KIMLIN, PAK and PAWLIKOWSI, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-16.
Claim 1 is illustrative:
1. A dietary fiber composition produced by a process
comprising
cooking a calcium caseinate or calcium caseinate and whey
protein isolate slurry, wherein said slurry contains no more than
50% whey protein isolate, in an evaporator to produce a slurry of
cross-linked matrices of protein,
adding dietary fiber to said slurry of cross-linked matrices
of protein to form a mixture, and
Appeal No. 2002-2333
Application No. 09/741,467
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spray atomizing said mixture in a spray dryer to produce
said dietary fiber composition.
The examiner relies upon the following reference as evidence
of obviousness:
Kuipers et al. 4,315,954 Feb. 16, 1982
(Kuipers)
Appellant's claimed invention is directed to a dietary fiber
composition produced by the recited process. The process entails
cooking a protein slurry comprising calcium caseinate in an
evaporator to produce a slurry of cross-linked matrices of
protein. Dietary fiber is then added to the cross-linked
matrices of protein to form a mixture, which is then spray
atomized in a spray dryer to produce the claimed composition.
Appealed claims 1-16 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Kuipers.
We have thoroughly reviewed the respective positions
advanced by appellant and the examiner. In so doing, we find
ourselves in agreement with the position espoused by appellant
that the examiner has not established a prima facie case of
obviousness for the claimed subject matter. Accordingly, we will
not sustain the examiner's rejection.
While it is true that product-by-process claims define a
product, and not the process by which the product is produced,
Appeal No. 2002-2333
Application No. 09/741,467
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the examiner, nonetheless, is not relieved from establishing a
prima facie case that the claimed product is not patentably
distinct from the prior art product. Before the burden is
shifted to an applicant to demonstrate that the claimed and prior
art products are, in fact, patentably distinct, the examiner must
first make the case that the claimed product reasonably appears
to be substantially the same as the product disclosed by the
prior art. In the present case, it is our judgment that the
examiner has not carried this initial burden.
As emphasized by appellant, the claimed composition is
produced by first forming cross-linked matrices of protein in an
evaporator, and then adding dietary fiber to the cross-linked
matrices before spray atomizing the mixture in a spray dryer. On
the other hand, Kuipers provides no disclosure that the protein
is first processed into cross-linked matrices before mixing the
protein with dietary fiber. Kuipers teaches no processing of
the protein before a mixture is formed with fiber, which mixture
is subsequently extruded at temperatures higher than those used
in the claimed evaporator. In view of this distinct difference
in the processes employed by appellant and Kuipers, it is
incumbent upon the examiner to set forth a rationale why it would
be reasonable to conclude that the processed cross-linked
Appeal No. 2002-2333
Application No. 09/741,467
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matrices of appellant are essentially the same as the processed
composition of Kuipers. This, however, the examiner has not
done. In addition, there is declaration evidence of record by
one of ordinary skill in the art which offers the opinion that
"Kuipers' product is not the same or similar to Onwulata's
[appellant's] product" (page 2 of Declaration, second paragraph).
In conclusion, based on the foregoing, the examiner's
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
)
CHUNG K. PAK ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
)
BEVERLY PAWLIKOWSKI )
Administrative Patent Judge )
ECK:clm
Appeal No. 2002-2333
Application No. 09/741,467
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G. Byron Stover
USDA, ARS, OTT
5601 Sunnyside Ave.
Rm. 4-1190
Beltsville, MD 20705-5131