Ex Parte Onwulata

Patent Trial and Appeal Board

Oct 31, 2012

11801868 (P.T.A.B. Oct. 31, 2012)

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.
11/801,868 05/11/2007 Charles I. Onwulata 72.06 5672
25295 7590 10/31/2012
USDA, ARS, OTT
5601 SUNNYSIDE AVE
RM 4-1159
BELTSVILLE, MD 20705-5131
EXAMINER
LATHAM, SAEEDA MONEE
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/31/2012 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 PATENT TRIAL AND APPEAL BOARD
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Ex parte CHARLES I. ONWULATA

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Appeal 2011-000416
Application 11/801,868
Technology Center 1700
_________________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
DEBORAH KATZ, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL

Appeal 2011-000416
Application 11/801,868

2
Appellant1 seeks our review, under 35 U.S.C. § 134(a), of the
Examiner’s decision to reject claims 1 and 14-18. (App. Br. 2.) Claims 2-
13 have been cancelled. (Amendment, June 5, 2009.) We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
The Examiner rejected claims 1 and 14-18 under 35 U.S.C. § 103(a)
over Doud2, as evidenced by Fellows3 and Guy4, in view of Onwulata5.
(Ans. 4-7.) The Examiner also rejected claims 1 and 14-18 under 35 U.S.C.
§ 103(a) over Van Lengerich6, as evidenced by Guy, in view of Onwulata.
(Ans. 7-10.)
Appellant argues for the separate patentability of claim 18. We focus
on claims 1 and 18 in our review. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant’s claims are directed to a dietary composition. Appellants’
claim 1 recites7:
A dietary composition produced by a process consisting
essentially of extruding a protein containing product and optionally
water through an extruder at about 50 to about 400 rpm and at a
temperature of about -10o to about 30°C to produce said dietary
composition,

1 The real party in interest is said to be the United States of America as
represented by the Secretary of Agriculture. (App. Br. 1.)
2 Doud, et al., U.S. Patent Application Publication 2005/0271787 A1,
published December 8, 2005.
3 Fellows, Food Processing Technology: Principles and Practice 300 (2000).
4 Guy, Extrusion Cooking: Technologies and Applications 91-92 (2001).
5 Onwulata et al., “Minimizing Variations in Functionality of Whey Protein
Concentrates from Different Sources, 87 J. Dairy Sci. 749-56 (2004).
6 Van Lengerich et al., U.S. Patent Application Publication 2004/0017017
A1, published January 29, 2004.
7 Claim 1has been modified by adding indentations to separate elements of
the claimed composition. See 37 C.F.R. § 1.75(i).
Appeal 2011-000416
Application 11/801,868

3
wherein the residence time of said protein containing product in
said extruder is about 15 to about 120 seconds,
wherein said protein containing product is whey protein isolate,
wherein the undenatured proteins in said protein containing
product are not denatured by said process and
wherein at least about 70% of the denatured proteins in said
protein containing product are renatured by said process;
wherein said process does not involve the addition of
monosaccharides.

(App. Br., Claims App’x.) Appellant’s claim 18 recites a dietary
composition according to claim 1, wherein said process “consists of” the
same steps and parameters recited in claim 1. (Id.)
We rely on the Examiner’s findings, explanations, and responses to
Appellant’s arguments. Briefly, the Examiner rejected both claims 1 and 18,
drawn to dietary compositions, as being obvious products produced by the
process recited. As the Examiner notes (see Ans. para. bridging 11-12),
“even though product-by-process claims are limited by and defined by the
process, determination of patentability is based on the product itself.” In re
Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). The Examiner cites to
Appellant’s Specification to find that the claimed dietary composition
products of the invention can include ingredients in addition to the whey
protein isolate, for example eggs and shortening. (Ans. para. bridging 10-
11; Spec. ¶ [0011].) Though Appellant argues that Doud and Van Lengerich
teach compositions that include fat or oil and, thus, cannot render the
claimed composition obvious (App. Br. 3 and 4-5; Reply Br. 2 and 4), the
Examiner found that the claim language (e.g., the claim 1 language
“consisting essentially of”) does not exclude such additional ingredients.
Appeal 2011-000416
Application 11/801,868

4
(Ans. para. bridging 10-11.) Appellant does not identify any error in this
finding by the Examiner.
Appellant’s argument that the Examiner is merely alleging that it
would have been obvious to vary all parameters or try each of numerous
possible choices until arriving at “a successful result” (App. Br. 4; Reply Br.
2) does not address the Examiner’s rejection, which is directed to the
product claimed. Appellant’s statement that “the unique combination of
specific process parameters results in a novel product” (App. Br. 4) is
merely unsupported attorney argument. See In re Pearson, 494 F.2d 1399,
1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
Conclusion
Upon consideration of the record and for the reasons given, the
rejections of claims 1 and 14-18 are sustained.
Therefore, we affirm the decision of the Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136.

AFFIRMED

sld