Ex Parte Rabault et al

Patent Trial and Appeal Board

Feb 27, 2017

12440890 (P.T.A.B. Feb. 27, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/440,890 03/11/2009 Jean-Luc Rabault 9610-67849-US 7338
109813 7590 02/27/2017
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 1600
Chicago, IL 60603-3406
EXAMINER
DUBOIS, PHILIP A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
02/27/2017 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

____________

Ex parte JEAN-LUC RABAULT and FRANCOIS BELOUIN
__________

Appeal 2015-0021131
Application 12/440,890
Technology Center 1700
____________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the non-final rejection of
claims 1–6, 8–12, and 14–30. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b). Oral arguments were waived in this appeal.
We AFFIRM-IN-PART.
Appellants’ invention is a food composition consisting of a
continuous aqueous phase, wherein said food composition has a water
activity (Aw) of 0.3 to 0.99 and a fat content of less than 15% by weight

1 Appellants disclose that this appeal is related to Appeal No. 2015-002384
in Application No. 12/440,896 (App. Br. 32, Related Proceedings App’x).
Appeal 2015-002113
Application 12/440,890

2
relative to the total weight of the composition and comprises at least one
non-gelatinized, non-modified native starch (Spec. 1: 1–4; Claim 1).
Claim 1 is illustrative:
1. A food composition comprising a continuous aqueous phase, said
food composition having a water activity (Aw) of 0.3 to 0.99, and a fat
content but not more than 15% fat by weight relative to the total weight of
the food composition, and comprising at least one non-gelatinized,
non-modified native starch or overdry starch from 2 to 40% by dry weight in
relation to the total weight of the food composition, said non-gelatinized,
non-modified starch is heated below its gelatinization temperature prior to
consumption and said non-gelatinized, non-modified starch is preserved in
its non-gelatinized, non-modified native state as the non-gelatinized native
starch or overdry starch in the food composition so that said starch includes
non-gelatinized, non-modified starch particles and at least 90% of the non-
gelatinized, non-modified starch particles have a particle-size distribution
ranging between 2 μm and 100 μm.

Appellants appeal the following rejections:
1. Claims 1–6, 8–12, and 24–30 are rejected under 35 U.S.C. § 103(a),
as unpatentable over Dreese et al. (US 5,376,399, issued Dec. 27,
1994) (“Dreese”) in view of Wurzburg et al. (US 3,265,510, issued
August 9, 1966) (“Wurzburg”).
2. Claims 14–17, and 23 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Dreese in view of Wurzburg and Guzaski (US
3,861,291, issued Jan. 21, 1975).
3. Claims 18–22 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dreese in view of Wurzburg, Guzaski and Banks et al. (US
4,873,098, issued Oct. 10, 1989).
Appeal 2015-002113
Application 12/440,890

3
4. Claims 1–6, and 8–122 are provisionally rejected on the ground of
nonstatutory obviousness-type double patenting as being unpatentable
over claims 1–11 of copending Application No. 12/440,896 in view of
Dreese.
5. Claims 14–233 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 16–
26 of copending Application No. 12/440,896 in view of Dreese.

Appellants do not contest the Examiner’s provisional obviousness-type
double patenting rejections of claims 1–6, 8–12, and 14–26 over claims in
co-pending Application 12/440,896 (App. Br. 10 n. 1). Rather, Appellants
state that they will file a terminal disclaimer upon indication of allowable
subject matter. In light of Appellants’ failure to show reversible error with
the Examiner’s provisional obviousness rejection, we affirm these double
patenting rejections.

FINDINGS OF FACT & ANALYSIS
Appellants argue that Dreese and Wurzburg use modified starch in
making their final products and, thus, would not have suggested using a
native starch in making the food composition (App. Br. 14–16, 17–21).
Appellants contend that there would have been no reason to modify Dreese’s
food composition that uses modified-starch to use a native starch based upon
the teachings of Dreese and Wurzburg (App. Br. 20). Appellants contend

2 The Examiner included cancelled claim 7 in the statement of the rejection.
3 The Examiner included cancelled claim 13 in the statement of the rejection.
Appeal 2015-002113
Application 12/440,890

4
that making such a modification of Dreese would have frustrated the purpose
of Dreese and Wurzburg that use modified starches (App. Br. 20–21).
The Examiner finds that Dreese teaches that a native starch is heated
below its gelatinization temperature and Dreese’s teaching that the starch
may be chemically modified is merely a preferred embodiment (Ans. 6).
The Examiner finds that Dreese teaches that any treatment of the starch
should be performed so that the starch maintains its resistance to
gelatinization (Ans. 6).
The dispositive issue presented in this appeal is whether the combined
teachings of Dreese and Wurzburg would have suggested using a non-
modified, non-gelatinized native starch as recited in independent claims 1, 3,
and 14. Dreese discloses that the reduced fat crème composition “employs a
fragmented granular starch hydrolysate” (col. 2, ll. 34–35). Dreese teaches
that the granular starch hydrolysate will be capable of forming a particle gel
upon fragmentation of the granular starch hydrolysate in an aqueous medium
(col. 2, ll. 35–37). Dreese discloses that the granular starch hydrolysate is
formed by the sequential acid-hydrolysis and fragmentation of a granular
starch material (col. 2, ll. 42–44). Dreese defines “‘granular starch’” as “a
starch composition in which the native granular structure is retained” (col. 2,
ll. 61–63). Dreese teaches that native granular starch is resistant to
hydration and/or gelatinization during the acid hydrolysis (col. 3, ll. 5–10).
Dreese teaches that the acid-hydrolysis is performed to permit mechanical
disintegration of the granular starch hydrolysate residue to a degree that will
allow the formation of an aqueous dispersion that is salve-like (col. 3, ll. 41–
45).
Appeal 2015-002113
Application 12/440,890

5
Wurzburg teaches that an ungelatinized and “essentially native starch”
may be used in making candy (col. 1, ll. 61–70). Essentially native starch is
defined by Wurzburg as “any starch in its raw, untreated form, as well as
any starch which has been modified, as for example by acid hydrolysis,
oxidation or other chemical or physical treatment to an extent such that its
fluidity value is less than 20” (col. 1, ll. 65–70). Though Wurzburg may
teach a preference for using untreated starch as a starting material, the starch
in Wurzburg is later gelatinized (col. 2, ll. 58–59; col. 3, ll. 9–12; col. 4, ll.
14–17).
The Examiner has not explained why a raw, native form of the starch
would have been used in Dreese’s food composition that uses acid
hydrolyzed and fragmented starch. Indeed, Dreese teaches that it is the use
of the hydrolyzed starch that permits its use as a replacement for fat in a
food composition (Dreese col. 11, ll. 18–22). Therefore, using a non-
modified starch would have frustrated the purpose of Dreese’s composition.
In contrast, claim 1 requires the use of “at least one non-gelatinized,
non-modified native starch.” The Specification describes that non-
gelatinized starch means that the starch is not pre-gelatinized or gelatinized
during the process of manufacture or preparation before consumption (Spec.
3). The Specification further discloses that a starch may be chemically or
physically modified (Spec. 1). Therefore, the meaning of “non-gelatinized,
non-modified native starch” in the context of the claims as understood by the
ordinarily skilled artisan is that the starch must not be modified chemically
or physically and not gelatinized before or during processing. Our
understanding of the claim is further supported by Appellants’ citation to the
Appeal 2015-002113
Application 12/440,890

6
evidence attached to the Reply Brief where “modified starch” includes acid-
modified starch or physical modification (Reply Br. App’x A).
We reverse the Examiner’s § 103 rejections because the claim
requires a non-gelatinized, non-modified native starch and the Examiner has
not explained why it would have been obvious to modify Dreese’s modified
starch to include Wurzburg’s native starch which is later gelatinized in
making Wurburg’s candy.

DECISION
The Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

ORDER
AFFIRMED-IN-PART