Ex Parte Peterson et alDownload PDFPatent Trial and Appeal BoardSep 18, 201813475411 (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/475,411 05/18/2012 Scott Peterson 30589 7590 09/20/2018 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 555910.017 6953 EXAMINER DEES, NIKKI H ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): docketing@dunlapcodding.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT PETERSON, 1 Frank Welch, and Thomas Burkholder Appeal2017-009031 Application 13/475,411 Technology Center 1700 Before MARK NAGUMO, WESLEY B. DERRICK, and JEFFREY R. SNAY and, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Scott Peterson, Frank Welch, and Thomas Burkholder ("Nestec") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all pending claims 26-38 and 44. We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The real party in interest is identified as Nestec S.A. (Appeal Brief, filed 19 October 2016 ("Br."), 1.) 2 Office Action mailed 26 May 2016 ("Final Rejection"; cited as "FR"). Appeal2017-009031 Application 13/475,411 A. Introduction Procedural background OPINION Nestec requested an oral hearing in this appeal, but subsequently elected to waive hearing attendance. (Communication of 12 July 2018.) The present application is a member of an extended family of applications, 3 three of which have already come before us: 2017-004623 (PTAB 16 January 2018, rev'd) in application 12/599,328, now U.S. Patent No. 9,968,124 (freeze-dried aerated fruit or vegetable product); 2014-002344 (PTAB 29 February 2016, dism'd following abandonment) in application 13/633,378; 2017-006409 (PTAB 25 June 2018, affd), in application 15/052,111, now assigned U.S. Patent No. 10,076,133, issued 18 September 2018 (process of making freeze-dried aerated fruit or vegetable food product). The '411 application and the '111 application share common ancestor application 12/650,820, and have nearly identical specifications. The respective claims have been rejected in view of a number of common 3 Application 13/475,411, Freeze-dried aerated fruit or vegetable compositions and methods of making thereof, filed 18 May 2012 as a continuation of 12/650,820, which was filed 31 December 2009, now abandoned, which is a continuation-in-part of 12/599,328, filed 1 September 2010, which is the national stage under 35 U.S.C. § 371 of PCT/US08/63306, filed 9 May 2008, which claims the benefit of 60/916,956, filed 9 May 2007. We refer to the "'411 Specification," which we cite as "Spec." 2 Appeal2017-009031 Application 13/475,411 references, and this appeal is resolved along lines closely tracking the reasoning set forth in our Opinion in Appeal 2017-006409. 4 Subject matter background The subject matter on appeal relates to processes of preparing freeze dried aerated shelf-stable fruit or vegetable products that are "readily dissolvable upon consumption at such a rate as to transfer flavor to the consumer's taste buds." (Spec. 2 [0003].) Three properties are said to influence strongly customer preferences for the final product: hardness, dissolvability, and viscosity [ of the intermediate product just before freeze- drying]. (Id. at 4 [0017].) The '411 Specification defines the term "hardness" as "the peak stress prior to fracturing a material." (Spec. 3 [0011].) The term "dissolvability" is defined as "the change in hardness of a product in going from a dry to a wet state." (Id. at 2 [0010].) Viscosity is defined generally as "a measure of the resistance of a substance to flow" (id. at 3 [0012]), and is said to "aid[] in holding the shape of a substance through aeration and deposit" (id.). The Specification reveals that it is further desired that the product be readily dissolvable so that "consumers with restricted or under-developed oral motor skills or digestive functions" will experience reduced risk of choking hazards. (Id. at 2 [0003].) 4 Copending Appeals 2017-008706 (12/482,252, filed 10 June 2009) and 2017-008712 (15/057,446, filed 11 March 2016) concern generically similar subject matter (processes of making freeze-dried yogurt compositions), and are decided concurrently. 3 Appeal2017-009031 Application 13/475,411 The Specification teaches that it is known that increasing aeration can improve dissolvability of freeze-dried products, but that the increased aeration can also reduce the hardness of the end-product, reducing the physical stability of the product. (Id. at 2 [0003].) These problems are said to be overcome by adding certain emulsifiers to a food product ( e.g., a fruit or vegetable puree), heating the mixture and then aerating the heated mixture, forming drops of the mixture, and freeze drying the drops. (Id. at 5 [0023].) The product has specified ranges of hardness and dissolvability values, and, prior to freeze drying, a specified range of viscosity. (Id. at [0018]-[0020].) The Specification also teaches that starches, such as tapioca, com, and rice starches, and gums, including pectin, gelatin, carrageenan, etc., may be added. (Id. at 4 [0015].) Claim 26 is representative and reads: A freeze-dried, aerated product sized and shaped for consumption by a child, the product comprising: (a) at least one ingredient selected from the group consisting of a fruit, a vegetable, and combinations thereof, wherein the at least one ingredient is present in an amount from 60% to 80% by weight of the product prior to freeze-drying; (b) an emulsifier selected from the group consisting of a lactic acid ester of monoglycerides and diglycerides, a citric acid ester of monoglycerides and diglycerides, distilled monoglycerides, and combinations thereof; ( c) a starch from a source selected from the group consisting of tapioca, rice, com, and combinations thereof; and ( d) a gum selected from the group consisting of pectin, gelatin, carrageenan, cellulose gum, microcrystalline cellulose, and combinations thereof; and 4 Appeal2017-009031 Application 13/475,411 wherein the product is formed into a plurality of drops prior to freeze-drying, wherein the drops have a weight in a range of from O. 8 to 1.2 grams prior to freeze-drying, and wherein the product is designed to be readily dissolvable upon consumption so as to increase child development by having a developmentally appropriate size, shape, and dissolution characteristics, and wherein the product is designed to reduce the risk of choking hazards for children with restricted or underdeveloped oral motor skills or digestive functions, the freeze-dried, aerated product having a hardness value of from 0.5 to 8 pounds force peak load, a dissolvability in the range of from 0.1 to 8 pounds force peak load, and a viscosity of from 1000 to 100,000 cp as measured at a 10 rpm speed of the spindle 6 in a Brookfield viscometer before the product is aerated. (Claims App., Br. 21; some indentation, paragraphing, and emphasis added.) Remaining independent claim 34 is similar to claim 26, but specifies relative amounts of emulsifier and starch that must be present. (Id. at 22- 23.) Dependent claims 28 and 36 require at least one fruit and one vegetable. Dependent claims 31 and 37 require that gum ( d) be gelatin. Dependent claims 33 and 38 require a probiotic. (The dependent claims depend from the highest lower-numbered independent claim.) 5 Appeal2017-009031 Application 13/475,411 The Examiner maintains the following grounds of rejection 5, 6 : A. Claims 26, 27, 29, 30, 32, 34, 35 and 44 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Peterson, 7 Kolstad, 8 and Reimer. 9 Al. Claims 28 and 36 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Peterson, Kolstad, Reimer, and Beech- Nut. 10 A2. Claims 31 and 37 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Peterson, Kolstad, Reimer, and Kuntz. 11 5 Examiner's Answer mailed 2 June 2017 ("Ans."). 6 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 7 Ralph Dewey Peterson, Process for preparing dried fruit products, GB 1,070,060 (1967). 8 Jeffrey J. Kolstad et al., Method for preparation of purified glycerides and products, U.S. Patent No. 5,959,128 (1999). 9 George R. Reimer, Low density frostings, U.S. Patent No. 3,656,971 (1972). 10 Beech-Nut Carrot, Apple & Mango (2006), downloaded on August 16, 2012, from http://web.archive.org/web/20061015193054/http://www.beechnut.com/Our %20Baby%20Food/product.asp?P=38562&Category=l&SearchValue=4&S earch Vals= About%207%20-%208%20Months&List Value= 1 &Search Type= By%20Age&ProdType= 11 L.A. Kuntz, Special Effects With Gums, (1999), downloaded on March 11, 2015, from http://www.foodproductdesign.com/articles/1999/12/special-effects-with- gums.aspx# 6 Appeal2017-009031 Application 13/475,411 A3. Claims 33 and 38 stand rejected under 35 U.S.C. § 103(a) in view of the combined teachings of Peterson, Kolstad, Reimer, and Jager. 12 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. The Examiner finds that Peterson describes a freeze-dried aerated fruit product further comprising gums (FR 3, ,r 6) and starch (id. at 4, ,r 9), in sizes that would meet the required weight (id. at 4, ,r 8). The Examiner finds four major differences between the products described by Peterson and the claimed product. First, the Examiner finds that the amount of fruit puree taught by Peterson [82.9 to 95 wt%] does not meet the amount required by claim 1 [60-80 wt%]. (Id. at 3--4 ,r 7.) The Examiner reasons that, "[t]he adjustment of the amount of fruit to include in the composition would have been within the abilities of one of ordinary skill in the art where it was desired, for example, to reduce costs by including less fruit in the product." (Id.) Second, the Examiner finds that Peterson teaches a product comprising starch as a gelling agent, but does not specify tapioca, rice, or com starch, as required by the claims. (Id. at 4 ,r,r 9 and 11.) The Examiner finds that Reimer describes dry powdered compositions in which pregelatinized com, wheat, and tapioca starches "are used interchangeably" (id. at ,r 9), and reasons that it would have been obvious to select one of 12 Martin Jager et al., Encapsulated multifunctional biologically active food component, process for its production and its use, U.S. Patent No. 6,841,181 B2 (2005). 7 Appeal2017-009031 Application 13/475,411 those starches with the reasonable expectation that it "would function effectively in the invention of Peterson" (id. at ,r 11 ). Third, the Examiner finds that Peterson is silent regarding citric or lactic acid esters of glycerides as required. (Id. at 5 ,r 12.) The Examiner finds that Kolstad teaches such lactic acid esters as foam stabilizers for aerated food products, and concludes that it would have been obvious to use them in the products disclosed by Peterson in suitable amounts for their disclosed purpose of stabilizing foam. (Id. at ,r,r 13-14.) Fourth, the Examiner concludes that the silence of Peterson (and the remaining references) regarding the hardness, dissolvability, and viscosity of the products is of no moment because the products obvious in view of the combined teachings of the references are identical or substantially identical to the claimed products. (Id. at ,r 15-18.) The Examiner therefore holds that the burden is on Nestec to "prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." (Id. at 6, ,r 15.) In the words of the Examiner, "[a]s the combination of Peterson, Kolstad et al. and Reimer teaches freeze-dried, aerated products comprising fruit, starch, a gum and an emulsifier as required by the instant claims, the claimed physical properties are considered to be inherent absent convincing arguments or evidence to the contrary." (Id. at ,r 16.) Nestec urges the Examiner made multiple modifications to the teachings of Peterson before combining the additional teachings of the other references. (Br. 10, last para.) In so doing, Nestec argues, the Examiner failed to account for the presence of additional components of the prior art compositions, other than to assert that "adjustment of these components 'would have required no more than routine experimentation."' (Id. at 11, 8 Appeal2017-009031 Application 13/475,411 1st full para.) In summary, in N estec' s words, "the rejection is based on a far-reaching POSSIBILITY that this modified combination of the prior art methods would even produce a product that meets these claim limitations regarding ingredients, compositional values and functional characteristics." (Id. at 13, 1st full para.) The Examiner responds by citing several copending applications 13 assigned to Nestec and relating to similar subject matter "as evidence ... that there can be wide variations in the composition yet arrive at similar properties and support the position that the prior art applied against the claims can reasonably possess the claimed properties." (Ans. 10, 2d full para., bold emphasis omitted.) While copending applications may serve to demonstrate the potential breadth of the claimed subject matter, such a showing does little to demonstrate that the product would, more likely than not, have resulted from a prior art process, or from a purportedly obvious variant of a prior art process. The rejections are based on the premise that variants of the freeze- dried, aerated, thermally processed fruit puree described by Peterson are the same or substantially the same as the products covered by the appealed claims. Nestec urges, however, that "[t]he product of Peterson is typically provided as part of a ready-to-eat breakfast cereal that is rehydrated in milk or water prior to consumption." (Reply14 5, 2d full para.; emphasis omitted; 13 Two of these applications have been decided on appeal, two more are decided concurrently with this appeal, and the fifth is still under examination. 14 Reply Brief filed 8 June 2017 ("Reply"). 9 Appeal2017-009031 Application 13/475,411 cf Peterson 1, 11. 50-52) Nestec argues that a person having ordinary skill in the art would not have expected such a product to be readily dissolvable in the saliva of children, as required by the claims. (Reply 5, 2d full para.) Thus, N estec concludes, the Examiner erred in determining that the hypothetical products would be the same or substantially the same as the claimed products. (Id.) The weight of the evidence supports Nestec. According to Peterson, "[t]he final freeze-dried slice has the same colour and odour as bananas, excellent banana flavour and upon rehydration has a texture very much like natural fresh banana." Peterson (3, 11. 18-21.) Moreover, according to Peterson, "[ t ]he internal starch and gum network gives the slice structural rigidity and strength which retards the breakup of the rehydrated product." (Id. at 11. 26-29; emphasis added.) The Examiner has not explained why the routineer would have regarded a food product that dissolves readily in the mouth to be the same or substantially the same as a product having a retarded break up upon rehydration. Accordingly, the Examiner has not carried the initial burden of showing that the prior art products are sufficiently similar to the claimed products that Nestec should be required to show that the properties of the prior art products differ from the properties recited in the claims. The Examiner makes no findings of fact regarding the supplementary references cited in the additional rejections of the dependent claims that cure the deficits of the principal rejection. We conclude that the Examiner has failed to establish a prima facie case of obviousness, and we therefore reverse the appealed rejections. 10 Appeal2017-009031 Application 13/475,411 C. Order It is ORDERED that the rejection of claims 26-38 and 44 is reversed. REVERSED 11 Copy with citationCopy as parenthetical citation