Ex Parte Peterson et al

Patent Trial and Appeal Board

Sep 18, 2018

13475411 (P.T.A.B. Sep. 18, 2018)

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
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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.)
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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#
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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).
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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,
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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").
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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.
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Application 13/475,411
C. Order
It is ORDERED that the rejection of claims 26-38 and 44 is reversed.
REVERSED
11