Ex Parte Rabault et alDownload PDFPatent Trial and Appeal BoardMay 23, 201812063280 (P.T.A.B. May. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/063,280 08/05/2008 109813 7590 05/24/2018 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 2100 Chicago, IL 60603-3406 FIRST NAMED INVENTOR Jean-Luc Rabault 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. 9610-99415-US 6167 EXAMINER WATTS, JENNA A ART UNIT PAPER NUMBER 1791 MAILDATE DELIVERY MODE 05/24/2018 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 Appeal2017-008079 Application 12/063,280 Technology Center 1700 Before KAREN M. HASTINGS, MONTE T. SQUIRE, and JANEE. INGLESE, Administrative Patent Judges. INGLESE, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 request our review under 35 U.S.C. § 134(a) of the Examiner's decision to reject claims 1--4, 6-19, and 21-29. We have jurisdiction over this appeal under 35 U.S.C. § 6(b ). We AFFIRM. 1 Appellants identify Intercontinental Great Brands LLC as the real party in interest. Appeal Brief filed December 1, 2016 ("App. Br."), 3. Appeal2017-008079 Application 12/063,280 STATEMENT OF THE CASE Claim 1 illustrates the subject matter on appeal and is reproduced below with contested language italicized: 1. Fat filling or chocolate substitute constituted by a suspension of solid particles in a continuous fat phase, said suspens10n compnsmg water, less than 33% edible fats (EF) and 3% to 40% of at least one native and/or overdried starch, these percentages being expressed as weight for weight, wherein substantially all the water is contained within the solid particles, and at least 90% of the native and/or overdried starch having a particle size between 2 µm and 100 µm. App. Br. 26 (Claims Appendix) (spacing added). The Examiner sets forth the following rejections in the Non- Final Office Action entered June 6, 2016 ("Office Act."), and maintains the rejections in the Examiner's Answer entered March 7, 2017 ("Ans."): I. Claims 2, 6-19, 22-25, 28, and 29 under 35 U.S.C. § 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that the applicants regard as the invention; II. Claims 1--4, 6-16, 18, 19, and 21-292 under 35 U.S.C. § 103(a) as unpatentable over Jindra et al. (US 6,528, 104 B 1, issued March 4, 2003) as evidenced by Tate & Lyle (Food Starches, available at, http://www.tateandlyle.com/ingredientsandservices/chooseaningredientorser 2 Although the Examiner includes claims 5 and 20 in the heading for this ground of rejection (Office Act. 4), Appellants cancelled these claims in an amendment filed March 7, 2016, and the Examiner indicates in the first page of the Office Action that claims 1--4, 6-19, and 21-29 are pending in the application. 2 Appeal2017-008079 Application 12/063,280 vice/americas/p ); and III. Claim 17 under 35 U.S.C. § 103(a) as unpatentable over Jindra in view of Shishido (US 4,613,508, issued September 23, 1986. DISCUSSION Upon consideration of the evidence relied upon in this appeal and each of Appellants' contentions3, we reverse the Examiner's rejection of claims 2, 6-19, 22-25, 28, and 29 under 35 U.S.C. § 112, second paragraph for the reasons set forth below, and affirm the Examiner's rejections of claims 1--4, 6-19, and 21-29 under 35 U.S.C. § 103(a) for the reasons set forth in the Office Action, the Answer, and below. Rejection I Claims 22 and 24 both depend indirectly from claim 1 and recite that the water comprises less than about 2% of the total fat filling or chocolate substitute composition. Independent claim 29 recites that the overall water content is less than about 5% of the total fat filling or chocolate substitute composition. The Examiner finds that "it is unclear how the filling can comprise less than 2% or less than 5% water with the wide range of starch claimed" because Appellants' Specification indicates that native starch, as recited in claims 1 and 29, contains 13% to 20% water. Office Act. 3; Spec. 9, 11. 2---6. The Examiner finds that "where the filling compositions have up to 40% 3 We do not consider any new argument raised in Appellants' Reply Brief that could have been raised in their Appeal Brief. 37 C.F.R. § 41.37(c)(l)(iv); 37 C.F.R. § 41.41(b)(2) (arguments raised forthe first time in the Reply Brief that could have been raised in the Appeal Brief will not be considered by the Board unless good cause is shown). 3 Appeal2017-008079 Application 12/063,280 starch, there could be up to 8% by weight water in the filling coming from the starch," and the Examiner finds that the amount of water recited in claims 22, 24, and 29, therefore, "appear[s] to be in conflict with the claimed amount of native and/or overdried starch." Office Act. 2-3. However, one of ordinary skill in the art would understand from the plain language of claims 22, 24, and 29 that the components included in the claimed fillings must be utilized in amounts that meet recited water content. Accordingly, one of ordinary skill in the art would understand that claims 22 and 24 only encompass fillings having a native starch content that allows the water content of the fillings to be within the range recited in the claims. Similarly, one of ordinary skill in the art would understand that independent claim 29 encompass fillings that include native starch in an amount that allows the fillings to have a water content as recited in the claim. As Appellants correctly argue, claim 29 also encompasses fillings that include overdried starch, which allows the inclusion of higher amounts of starch, while maintaining the overall water content of the fillings within the claimed range. App. Br. 24. We accordingly do not sustain the Examiner's rejection of claims 2, 6-19, 22-25, 28, and 29 under 35 U.S.C. § 112, second paragraph. Rejection II Appellants argue claims 1--4, 6-16, 18, 19, and 21, 23, and 25-29 as a group. App. Br. 12-22. We accordingly select claim 1 as representative, and decide the appeal as to claims 1--4, 6-16, 18, 19, and 21, 23, and 25-29 based on claim 1 alone. 37 C.F.R. § 41.37(c)(l)(iv). Jindra discloses a food product filling having a high solids content and 4 Appeal2017-008079 Application 12/063,280 low water activity4 . Col. 1, 11. 3-5; col 2, 11. 46-48. Jindra discloses that the filling includes up to 80% by weight of an edible oil (fat), up to about 15% by weight of a natural or modified starch, such as natural wheat starch, and up to about 40% by weight of a humectant. Col. 4, 11. 1-3, 26-28, 43--45; col. 7, 1. 60-col. 8, 1. 23. The Examiner finds that the natural starch disclosed in Jindra corresponds to the native starch recited in claim 1, as evidenced by Tate & Lyle's "definition of native starches [as] starches in their most natural form." Office Act. 5. The Examiner finds that Appellants' Specification describes the particle sizes of different starches "as a characteristic of the particular starch ... and does not disclose any particular methods of reducing the particle size of the starch used in the fillings." Office Act. 9 (citing Spec 6, 1. 9-7, 1. 2 5). In view of the further indication in Appellants' Specification that native wheat starch has a particle size of 2 µm to 45 µm, the Examiner finds that the natural wheat starch disclosed in Jindra "would necessarily possess particle sizes with the claimed range[]." Office Act. 9; Spec. 7, 11. 30-31. Jindra discloses that the edible oil and humectant are "used as a partial or full substitute for water in the filling, thus enabling the filling to be formulated with a low water activity." Jindra col. 4, 11. 3---6. Jindra discloses 4 Jindra indicates that water in "low water activity" fillings exhibits a reduced tendency to migrate into food casing material (generally made from a dough or butter comprised at least partially of flour) in which the fillings are contained. Jindra col. 1, 11. 16-33; col. 2, 11. 29-32; col 2, 1. 66-col. 3, 1. 2. 5 Paragraphs 23-26 of the published application, cited by the Examiner in the Office Action, correspond to page 6, line 9 to page 7, line 2 of the Specification as filed. 5 Appeal2017-008079 Application 12/063,280 that the water content of the filling varies from less than about 25% by weight to less than about 5% by weight. Col. 11, 11. 5-18. Jindra discloses preparing the filling by melting the edible oil, dispersing the humectant in the oil, dispersing the remaining components (which include the starch) in the oil/humectant mixture, and solidifying/crystallizing the oil by reducing the temperature of the mixture. Jindra col. 11, 1. 42---col. 12, 1. 9. Jindra discloses that fat crystals produced by this process form a crystalline network or structure that prevents solids from settling in the final filling. Col. 11, 11. 23-27. The Examiner finds that the crystalline fat network disclosed in Jindra corresponds to "a fat continuous phase where all of the solids or solid particles present in the filling are being prevented from settling, and therefore would be suspended in the fat network or continuous phase." Office Act. 4--5. Appellants argue that the filling disclosed in Jindra is not in the form of a suspension of solid particles in a continuous fat phase, but is a water-in- oil emulsion or oil-in-water emulsion that may also contain suspended solid particles due to the low content of water and/or other anhydrous hydrophilic liquids, such as glycerol. App. Br. 9. Appellants rely on the Declaration of inventor Jean-Luc Rabault that was submitted to the Patent and Trademark Office on September 11, 2014 ("first Rabault Deel.") in support of this argument. Specifically, Appellants assert that the amount of liquid sweeteners present in the fillings of Jindra's examples add a level of water to the exemplified fillings that results in a water-in-oil or oil-in-water emulsion, because the fillings also contain oil. App. Br. 9-10; first Rabault Deel. i-fi-15- 6. Appellants further assert that Jindra's disclosure that instant starch can be 6 Appeal2017-008079 Application 12/063,280 used in the filling described in the reference indicates that Jindra' s filling includes enough free water to hydrate the starch, and this level of water qualifies the filling as a water-in-oil emulsion. App. Br. 10; first Rabault Deel. i-f 7. Appellants argue that even where the water content in Jindra's filling is very low, the filling contains 20% of dry humectant, which Appellants assert is likely hydrophilic, and will therefore form the hydrophilic phase of an emulsion with the water in the liquid sweetener. App. Br. 11; first Rabault Deel. i-f 9. Appellants also assert that Jindra's disclosure that the humectant binds the components of the filling together provides evidence that the humectant is a liquid that would form an emulsion with fat. App. Br. 14; first Rabault Deel. i-f 11. Appellants further assert that it is well-understood by those of ordinary skill in the art that a fat- based crystalline network as disclosed in Jindra may be formed in a water- in-oil emulsion, contrary to the "Examiner's conclusion that the fillings of Jindra are necessarily not water-in-oil emulsions." App. Br. 15; first Rabault Deel. i-fi-112-13. However, the plain language of claim 1 does not exclude an emulsion. Rather, claim 1 recites a fat filling or chocolate substitute constituted by a suspension of solid particles in a continuous fat phase. Appellants do not direct us to any definition or limiting description in their Specification of "a suspension of solid particles in a continuous fat phase" that would exclude solid particles suspended in a continuous fat (or oil) phase of an emulsion. App. Br. 12-22. Appellants indicate in their Appeal Brief (discussed above) that the filling disclosed in Jindra is an emulsion that may also contain suspended solid particles, and also indicate it is well-understood by those of ordinary 7 Appeal2017-008079 Application 12/063,280 skill in the art that a fat-based crystalline network as disclosed in Jindra may be formed in a water-in-oil emulsion. App. Br. 9, 15. Jindra discloses that the fat-based crystalline network or structure formed during production of the filling prevents dispersed solids from settling in the final filling. Col. 11, 11. 25-27. Consequently, even if the fat-based crystalline network disclosed in Jindra is formed in a water-in-oil emulsion as Appellants and the Declarant assert, the crystalline network would constitute the continuous fat (or oil) phase of the emulsion, and would include dispersed---or suspended-solids, corresponding to a suspension of solid particles in a continuous fat phase as recited in claim 1. Accordingly, Appellants' arguments and the relied-upon portions of the first Rabault Declaration do not demonstrate that the filling disclosed in Jindra is not constituted by a suspension of solid particles in a continuous fat phase, as recited in claim 1. We therefore accord the first Rabault Declaration little weight. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) ("In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion."); Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has discretion to give more weight to one item of evidence over another "unless no reasonable trier of fact could have done so"). Appellants also argue that their Specification indicates that it was well known that adding water directly in free form or in the form of a honey or a sugar syrup to a fat filling in an amount that provides about 2% water in the filling causes solidification and potentially causes saponification in the presence of lauric acid, which is often used in fat fillings. App. Br. 13; Spec. 9, 11. 1-14. Appellants argue that one skilled in the art trying to reduce 8 Appeal2017-008079 Application 12/063,280 the amount of oils and sugars in fat fillings would therefore have been highly aware of this risk of introducing water into the fillings, and would not have looked to prior art documents, such as Jindra, for guidance, because Jindra is directed to free water-containing fillings. App. Br. 13. However, Jindra's disclosures as a whole are not limited to free water- containing fillings as Appellants appear to assert. Rather, Jindra explicitly and repeatedly indicates that the invention described in the reference is directed to a high solids content filling having a low water activity resulting from a low water content. Col. 1, 11. 3-5; col. 2, 11. 46-51; col. 11, 11. 5-7. Although Jindra exemplifies particular fillings that include liquid sweeteners, Jindra more broadly discloses that the sweetener utilized in the filling can be dried and/or powdered so as to add little or no water to the filling. Col. 7, 11. 38--43. Jindra further discloses that the water content of the final filling can be less than about 5 weight percent. Col. 11, 11. 16-18. Appellants do not provide any objective evidence corroborating the statement in their Specification that it was "well known" that adding 2% water to a fat fillings causes solidification of the fillings and potentially causes saponification in the presence of lauric acid. Moreover, "[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Therefore, regardless of whether one of ordinary skill in the art trying to reduce the amount of oils and sugars in a fatty stuffing or spread would have looked to Jindra for guidance, Jindra's disclosures as a whole nonetheless would have suggested a fat filling as recited in claim 1 to one of ordinary skill in the art at the time of Appellants' invention in view of Jindra's disclosure of a filling 9 Appeal2017-008079 Application 12/063,280 that includes the components recited in claim 1 in amounts that overlap or encompass the ranges recited in the claim (discussed above). Appellants argue that Jindra does not disclose fillings containing native and/or overdried starch having a particle size as recited in claim 1. App. Br. 21. Appellants contend that Jindra teaches away from using these types of starch because Jindra discloses that instant granular modified starch is preferred, and exemplifies use of pre-gelatinized starch, or starch that will become gelatinized during the process of preparing the fillings. Id. However, as discussed above, Jindra explicitly discloses that suitable starches for use in the filling described in the reference include natural wheat starch. Appellants do not dispute the Examiner's finding that the natural wheat starch disclosed in Jindra corresponds to the native starch recited in claim 1. Compare Office Act. 5, with App. Br. 21. Nor do Appellants dispute the Examiner's finding that their Specification indicates that the size of starch particles is a characteristic of a particular type of starch6. Compare Office Act. 9 (citing Spec 6, 1. 9--7, 1. 2), with App. Br. 21. Accordingly, a preponderance of the uncontroverted evidence relied upon in this appeal supports the Examiner's determination that the natural wheat starch disclosed in Jindra would necessarily possess particle sizes as recited in claim 1. Although Jindra may disclose a preference for instant granular modified starch, and exemplify use of pre-gelatinized starch or starch that becomes gelatinized during preparation of fillings, as Appellants assert, such disclosures do not negate, or teach away from, Jindra's explicit disclosure of 6 The Specification indicates that native wheat starch has a particle size of 2 µm to 45 µm. Spec. 6, 11. 30-31. 10 Appeal2017-008079 Application 12/063,280 the suitability of using natural wheat starch in the fillings described in the reference. Meiresonne v. Google, Inc., 849 F.3d 1379, 1382 (Fed. Cir. 2017) ("A reference that 'merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into' the claimed invention does not teach away." (quoting Galderma Labs., L.P. v. Tolmar, Inc., 737 F.3d 731, 738 (Fed. Cir. 2013)); see also In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) ("[t]he prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed"). Appellants further argue that a second Declaration of inventor Jean- Luc Rabault submitted to the Patent and Trademark Office on March 23, 2015 ("second Rabault Deel.") establishes that the filling of Jindra's Example 1 modified as ostensibly proposed by the Examiner to include powdered fructose as a humectant instead of glycerin, and powdered sucrose as a sweetener instead of liquid sweetener, did not result in a final product that is a suspension of solid particles in a continuous fatty phase, but instead produced a granular, wet, sand-like mixture that was not suitable for use as a filling. App. Br. 16-19; second Rabault Deel. i-fi-16-14. Appellants contend that the "modification of Jindra proposed in the Examiner (i.e., replacement of liquid sweetener with a powder sweetener) would result not only in a product inconsistent with the present application, but also a product that renders Jindra unsuitable for its intended purpose of being used as a creamy filling." App. Br. 18-19; second Rabault Deel. i-fi-f 11-14. However, Appellants appear to misapprehend the Examiner's position, which is not based on modification of Jindra's Example 1 to arrive 11 Appeal2017-008079 Application 12/063,280 at the fat filling or chocolate substitute recited in claim 1. Rather, as discussed above, the Examiner correctly finds that Jindra broadly discloses a filling that includes the same components as recited in claim 1 in amounts that overlap or encompass the recited ranges. One of ordinary skill in the art seeking to produce a filling for a food product would have selected appropriate ingredients to include in the filling from those disclosed in Jindra, and would have utilized amounts of the selected ingredients based on the ranges disclosed in Jindra that would produce a filling having desired texture and consistency. Contrary to Appellants' arguments and the second Rabault Declaration, through no more than ordinary skill and creativity, the skilled artisan would have adjusted the ingredients and their amounts in order to produce a satisfactory filling, such as the filling recited in claim 1. Therefore, we accord the second Rabault Declaration little to no weight. Velander, 348 F.3d at 1371; Yorkey, 601 F.3d at 1284. Considering the totality of the evidence relied upon in this appeal, a preponderance of the evidence weighs in favor of the Examiner's conclusion of obviousness. We accordingly sustain the Examiner's rejection of claims 1-7, 9-15, 18, and 21under35 U.S.C. § 103(a). Claims 2 2 and 2 4 Claims 22 and 24 both depend indirectly from claim 1 and recite that the water comprises less than about 2% of the total fat filling or chocolate substitute composition. Claim 1 recites "these percentages being expressed as weight for weight." Appellants argue that "[t]he Examiner acknowledges that, at best, Jindra discloses 5% water." App. Br. 22. Appellants contend that "[t]he Examiner has simply failed to show that an increase of greater than 100% 12 Appeal2017-008079 Application 12/063,280 more water (going from 2% [as recited in claims 22 and 24] to 5% water [as ostensibly disclosed in Jindra]) would not have an effect on the composition." Id. Appellants assert that one of ordinary skill in the art would have understood that increases in the amount of water in a filling would significantly impact the viscosity and/or texture of the filling. App. Br. 22-23. However, as discussed above, Jindra explicitly discloses that the filling described in the reference can have a water content of less than about 5 weight percent, which encompasses the range of less than about 2 % weight percent recited in claims 22 and 24, rendering the recited range prima facie obvious. In re Peterson, 315 F.3d 1325, 1329-30 (Fed. Cir. 2003)("In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... Selecting a narrow range from within a somewhat broader range disclosed in a prior art reference is no less obvious than identifying a range that simply overlaps a disclosed range. In fact, when as here, the claimed ranges are completely encompassed by the prior art, the conclusion is even more compelling than in cases of mere overlap.") Because Appellants do not demonstrate the criticality of the ranges recited in claims 22 and 24, Appellants' arguments are unpersuasive of reversible error. App. Br. 22-23; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.). 13 Appeal2017-008079 Application 12/063,280 We accordingly sustain the Examiner's rejection of claims 22 and 24 under 35 U.S.C. § 103(a). Rejection III To address this rejection, Appellants rely on the arguments presented for Rejection II (discussed above), and argue that the additional reference applied in this rejection-Shishido-fails to cure the deficiencies of Jindra. App. Br. 23. Because we are unpersuaded of reversible error in Rejection II for the reasons discussed above, Appellants' position as to this rejection is also without merit. We accordingly sustain the Examiner's rejection of claim 17 under 35 U.S.C. § 103(a). DECISION We reverse the Examiner's rejection of claims 2, 6-19, 22-25, 28, and 29 under 35 U.S.C. § 112, second paragraph, and affirm the Examiner's rejections of claims 1--4, 6-19, and 21-29 under 35 U.S.C. § 103(a). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED 14 Copy with citationCopy as parenthetical citation