Ex Parte Rapp et al

Board of Patent Appeals and Interferences

Feb 12, 2010

10271710 (B.P.A.I. Feb. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD L. RAPP, RALPH LEE, JAMIE TROY, JEANNETTE
DIDO, DOUGLAS MANN, THOMAS COLLINS, and
KEVIN RABINOVITCH
____________

Appeal 2009-009978
Application 10/271,710
Technology Center 1700
____________

Decided: February 12, 2010
____________

Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 5-9, 11-13, 15, 17, 20, and 21. An oral hearing was
held on January 13, 2010. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
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BACKGROUND
The invention relates to process for preparing an energy food bar.
Claim 1 is illustrative:
1. A process for preparing an energy food product comprising
the steps of:
(a) processing at least one base energy food component at a
temperature and shear sufficient to form a homogeneous base energy
food matrix; and
(b) subsequently mixing at least one fortification component
with said homogeneous base energy food matrix at a temperature that
is less than 80°С and with a shear rate from mixing performed in a
mixer sufficient to mix said fortification component into said
homogeneous base matrix without deleteriously effecting said
fortification component,
wherein said energy food product has about 2 to about 55 g of
carbohydrates, about 1 to about 5 g of fortification components, about
5 to about 40 g of protein, about 2 to about 8 g of fat, and about 170 to
about 300 calories, based on a 55 g serving size, and
wherein said at least one base energy food component is
comprised of a binder and a food component, said binder selected
from the group consisting of sugar syrup, corn syrup, fat, a gum
solution, water, and mixtures thereof, and said food component
selected from the group consisting of protein, starch, cocoa powder,
and mixtures thereof.

The Examiner relies upon the following prior art references in the
rejection of the appealed claims:
Kelly 4,055,669 Oct. 25, 1977
Hayward 3,950,545 Apr. 13, 1976
Froseth 6,592,915 B1 Jul. 15, 2003

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The Examiner maintains the following rejections under 35 U.S.C. §
103(a):
(a) claims 1, 5, 7-9, 11-13, 15, 17, 20, and 21 as being unpatentable
over Kelly;
(b) claims 1, 6, and 17 as being unpatentable over the combined prior
art of Kelly and Hayward; and
(c) claims 1, 5, 7, 13, 15, and 17- 20 as being unpatentable over
Froseth.
Appellants focus their arguments on claim 1 for each set of rejections
(App. Br. 4-15). We accordingly also focus on claim 1. See 37 C.F.R. §
41.37(c)(1)(vii) (2007).
ISSUE ON APPEAL
The issue before us is whether Appellants have shown that the
Examiner erred in rejecting the claims under 35 U.S.C. § 103(a), and if not,
that the Examiner erred in concluding that the weight of the evidence,
taking into account Appellant’s evidence of unexpected results, weighs in
favor of obviousness?
We answer this question in the affirmative with respect to the § 103
rejections based on Kelly, but in the negative with respect to the § 103
rejection based on Froseth.
The issue turns on whether the Examiner has established that either
Kelly (alone or with Hayward), or Froseth teaches or suggests “subsequently
mixing at least one fortification component” to a homogeneous base at a
temperature “less than 80°C and with a shear rate” that does not
deleteriously effect the fortification component, to produce an energy bar
with the composition as required by independent claim 1.
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FINDINGS OF FACT (FF)
Kelly
Kelly’s invention is directed to the use of enough fat in a food bar to
mask the flavor of the protein. Kelly repeatedly discusses the importance of
a “fat-occluded” system whereby the protein flavor is masked with edible fat
(see, e.g., col. 1, ll. 24-35 col. 3, ll. 5-15).
The Examiner agrees with the Appellants’ factual finding that the
minimum amount of fat in Kelly is about 11 g in a 55 g serving, compared to
a maximum of about 8 g in the claimed energy bar (see App. Br. 7; Reply
Br. 8; Ans. 4).
While it is undisputed that Kelly teaches that vitamins and minerals
(i.e., fortification components) may be “[a]s desired . . . incorporated in the
binder composition” (col. 5, ll. 40-43), the Examiner recognizes that Kelly is
“silent as to blending in vitamins and minerals” (sentence bridging Ans. 3,
4). Accordingly, Kelly does not specify under what conditions (e.g., timing,
temperature, shear rate) the vitamins and minerals are added to the binder
composition (generally Kelly).
Hayward
The Examiner relies upon Hayward to describe adding vitamins to a
frosting (Ans. 6).
Froseth
Appellants do not dispute that Froseth describes a method of making a
cereal bar wherein certain heat sensitive vitamins should be added to the
blended binder last, “after all other components of the binder have been
combined” (Froseth, col. 16, ll. 1-4; see also col. 14, ll. 61 to col. 15, l. 2;
col. 15, l. 62 to col. 16, l. 10; Fig. 2B; Ans. 13; App. Br. 13).
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The sugar solution is cooled to 130°F (54.4ºC), and then mixed with
gelatin that is no more than 77°C, in the cooling binder kettle 240 (Froseth,
col. 14, ll. 55-60; col. 15, ll. 45-50). The binder use kettle 241 may be kept
at 49 to 60°C (120 to 140ºF) (Froseth; col. 15, ll. 57-65). Accordingly, one
of ordinary skill would have appreciated that at least one fortification
component (i.e., the macronutrients 242 of Froseth) was added to the cooling
binder kettle 240 (Fig. 2B) at a temperature less than 80°C (176ºF).
As recognized by the Examiner, Froseth does not specifically mention
any shear rate for blending in the macronutrients (Ans. 13), however, one of
ordinary skill in the art would have appreciated that the macronutrients
would have been mixed/blended into the binder in the cooling binder kettle
such that the macronutrients are not deleteriously affected.
PRINCIPLES OF LAW
“On appeal to the Board, an applicant can overcome a rejection [under
§ 103] by showing insufficient evidence of prima facie obviousness or by
rebutting the prima facie case with evidence of secondary indicia of
nonobviousness.”. In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir. 2006)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)).
A rejection for obviousness must include “articulated reasoning with
some rational underpinning to support the legal conclusion.” KSR Int'l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007), quoting In re Kahn, 441 F.3d at 988.
In In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994), the court stated:

A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be
discouraged from following the path set out in the reference, or
would be led in a direction divergent from the path that was
taken by the applicant. The degree of teaching away will of
course depend on the particular facts; in general, a reference
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will teach away if it suggests that the line of development
flowing from the reference's disclosure is unlikely to be
productive of the result sought by the applicant. [Citations
omitted.]

ANALYSIS

The § 103 Rejections based on Kelly
We agree with Appellants that the Examiner has not made out a prima
facie case of obviousness of the claimed invention based on Kelly, alone or
with Hayward (App. Br. 4-12; Reply Br 1-9). The Examiner has not made
sufficient factual findings to show that Kelly teaches or suggests
“subsequently mixing” vitamins and minerals into a processed homogeneous
base energy food matrix at the temperature and mixing conditions claimed
(see FF).
Furthermore, Appellants’ contentions that Kelly teaches away from
the claimed invention are persuasive (App. Br. 8-9). The Examiner has not
provided any convincing rationale why the person of ordinary skill would
have used even less than the minimum amount of fat described in Kelly
when the entire thrust of Kelly’s invention is to use a sufficient amount of
fat to mask the taste of the protein (see FF). Based on Kelly’s desire to use
more, not less, fat, the artisan would have been “led in a direction divergent
from the path that was taken by the applicant.” See In re Gurley, 27 F.3d at
553.
Hayward does not cure these deficiencies of Kelly, since the
Examiner only relies upon Hayward to exemplify mixing vitamins into a
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frosting. Thus, we reverse the § 103 rejections based on Kelly alone or
Kelly with Hayward.1
The § 103 Rejection based on Froseth
On the other hand, Appellants’ contentions that Froseth does not
recognize that shear should be controlled for mixing in vitamins and
minerals, and that Froseth does not have about 1 to about 5 g of fortification
components, are unavailing (e.g., App. Br. 13; Reply Br. 13).2 One of
ordinary skill in the art is also “a person of ordinary creativity, not an
automaton.” KSR, 550 U.S. at 421. One of ordinary skill in the food science
art would have appreciated that the heat sensitive macronutrients added to
the binder kettle at low temperature would have been mixed into the binder
composition such that these nutrients were not deleteriously effected (see
FF).3
The “Second Declaration” (App. Br. Appendix D; hereinafter Rapp
II), submitted by Appellants to show that one embodiment of Froseth
contained 0.66 g of a specified mineral versus the claimed amount range of
all fortification components, is not persuasive of any error (Rapp II
declaration, para. 11), since it is well established that a reference is not

1 Since no prima face case of obviousness has been established, we need not
address the proffered declaration evidence (e.g. of commercial success)
relied upon by Appellants.
2 Only those arguments actually made by Appellants have been considered
in this decision. Arguments which Appellants could have made but chose
not to make have not been considered and are deemed to be waived. See 37
C.F.R. § 41.37(c)(1)(vii) (2009).
3 This obviousness conclusion is further bolstered by the breadth of
Appellants’ claim that only require “at least one fortification component”
needs to be mixed in at temperature less than 80°C (see claim 1, emphasis
provided).

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limited to its examples, or even its preferred embodiments. Moreover,
Froseth discloses adding various minerals and vitamins to its cereal/energy
bars. Consequently, Appellants have not rebutted the Examiner's reasonable
position that the use of “about 1 to about 5 g of fortification components”
would have been obvious to one of ordinary skill in the art, in order to
optimize the amount for the well known advantages of vitamin and mineral
fortified food products.4
Accordingly, Appellants have not persuasively argued that the facts
and reasons relied on by the Examiner are insufficient to establish a prima
facie case of obviousness as to claim 1. Because Appellants have submitted
evidence of unexpected results and commercial success, we reevaluate the
facts on which the prima facie case of obviousness was reached along with
the secondary indicia of nonobviousness. See In re Eli Lilly & Co., 902 F.2d
943, 945 (Fed. Cir. 1990) (citing In re Piasecki 745 F.2d 1468, 1472 (Fed.
Cir. 1984) (“Prima facie obviousness is a legal conclusion, not a fact. Facts
established by rebuttal evidence must be evaluated along with the facts on
which the earlier conclusion was reached, not against the conclusion itself.”
(internal cites omitted))).

4 The discovery of an optimum value of a variable in a known process or
product is usually a matter of obviousness for one of ordinary skill in the art.
Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1368-69 (Fed. Cir. 2007). This is
the kind of situation that requires an Appellant to show secondary
considerations such as unexpected results or criticality to overcome the
prima facie case. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980); see
also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
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Secondary Considerations
Appellants have proffered the first and second Rapp Declarations (see
App. Br. Appendices C and D; hereinafter Rapp I and II) to respectively
demonstrate the commercial success of the SNICKERS MARATHON®
Energy Bars, as well as to present Mr. Rapp’s analysis of the applied Kelly
and Froseth references. 5
Appellants have not shown that the Examiner erred in her
determination that the proffered evidence of unexpected results and
commercial success is insufficient.6 The Rapp II declaration has been
discussed above. Furthermore, the Appellants have not explained why the
Examiner’s findings that the process outlined in the Rapp I declaration (para.
17) does not correspond to the claimed process (Ans. 14; see also Final
Rejection 8, 9) are unreasonable. In any event, we also agree with the
Examiner that the evidence is not compared to the closest prior art, Froseth,
which describes a process whereby a fortification component is subsequently
added to a homogeneous binder base food matrix at low temperature (Ans.
14).
Additionally, it is well established that commercial success or other
secondary considerations may presumptively be attributed to the claimed
invention only “if the marketed product embodies the claimed features, and
is coextensive with them.” Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299,

5 Appellants have not offered any evidence of unexpected results based on
the amount of fortification components (see generally App. Br.; Reply Br.).
6 The burden rests with Appellant to establish that the results are unexpected,
based on comparisons with the closest prior art, and commensurate in scope
with the claimed subject matter. See, e.g., In re Kulling, 897 F. 2d 1147,
1149 (Fed. Cir. 1990).

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1311-12 (Fed. Cir. 2006) (quoting Brown & Williamson Tobacco Corp. v.
Phillip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir. 2000)). For example,
“the asserted commercial success of the product must be due to the merits of
the claimed invention beyond what was readily available in the prior art.”
J.T. Eaton & Co. v. Atlantic Paste & Glue Co., 106 F.3d 1563, 1571 (Fed.
Cir. 1997); see also In re Caveney, 386 F.2d 917, 923 (CCPA 1967).
We understand the Examiner has determined that the required nexus
between the processing technique of claim 1 and the proffered evidence of
commercial success (via sales velocity) and satisfying long-felt needs (via
award recognition) in the Rapp I Declaration is absent (see e.g., Ans. 14).
We agree.7 The Rapp I Declaration has not identified a specific process and
explained how this process led to the commercial success. Thus it can
hardly be concluded that the evidence of commercial success and satisfying
long felt needs is due to the claimed processing steps and ingredients or due
to other unclaimed processing steps and/or unclaimed ingredients.
Furthermore, Appellants have not shown that the commercial success is not
attributable to consumer knowledge and acceptance of the SNICKERS®
brand name.
Under these circumstances, Appellants have not persuaded us of any
error in the Examiner’s conclusion that the weight of the evidence with
respect to the rejection based on Froseth, taking into account Appellant’s
evidence of secondary considerations, weighs in favor of obviousness.

7 Indeed, Appellants’ representative stated during Oral Hearing that yet
another processing technique is responsible for minimizing the protein taste
and making a good-tasting energy bar (see Oral Hearing transcript pp. 9-10).
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CONCLUSION/ORDER
The Examiner’s § 103 rejection of claims 1, 5, 7-9, 11-13, 15, 17, 20,
and 21 based on Kelly, as well as the § 103 rejection of claims 1, 6 and 17
based on Kelly and Hayward, are reversed.
The Examiner’s § 103 rejection of claims 1, 5, 7, 13, 15, and 17- 20
based on Froseth is affirmed.
The Primary Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a).

AFFIRMED-IN-PART

tc

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