Ex Parte Rabault et al

Patent Trial and Appeal Board

May 23, 2018

12063280 (P.T.A.B. May. 23, 2018)

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.
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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).
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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
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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.
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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
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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
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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
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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
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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.
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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
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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%
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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.).
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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
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