13301021 (P.T.A.B. Jun. 30, 2016)

Ex Parte Reuscher et al

Patent Trial and Appeal BoardJun 30, 2016

13301021 (P.T.A.B. Jun. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/301,021 11/21/2011 22045 7590 07/05/2016 BROOKS KUSHMAN P,C 1000 TOWN CENTER TWENTY-SECOND FLOOR SOUTHFIELD, MI 48075 FIRST NAMED INVENTOR Helmut Reuscher 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. WSIL0232PUS 8738 EXAMINER WATTS, JENNA A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 07/05/2016 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@brookskushman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HELMUT REUSCHER, MARKT. BAUER, PATRICK T. POLCHINSKI, and LAKNATH A. GOONETILLEKE Appeal2015-000565 Application 13/301,021 Technology Center 1700 Before BRADLEY R. GARRIS, CHRISTOPHER C. KENNEDY, and AVEL YN M. ROSS, Administrative Patent Judges. ROSS, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants2 appeal under 35 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 25-36. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 In our decision below we refer to the Final Office Action appealed from, mailed December 4, 2013 (Final Act.), the Appeal Brief filed May 28, 2014 (Appeal Br.), the Examiner's Answer mailed August 13, 2014 (Ans.), and the Reply Br. filed October 9, 2014 (Reply Br.). 2 Appellants identify the real party in interest as Wacker Chemical Corporation, the assignee of the instant application. Appeal Br. 3. Appeal2015-000565 Application 13/301,021 STATEMENT OF CASE The claims are directed to carbohydrate rich food compositions containing cyclodextrin and method of making the same. Claim 25, reproduced below, is illustrative of the claimed subject matter: 25. An aerated food composition, comprising: a food base having a base carbohydrate-to-protein (base C/P) ratio and a base carbohydrate-to-fat (base C/F) ratio, at least one of the base C/P and C/F ratios being greater than 1; and at least one cyclodextrin, wherein the cyclodextrin is added to the food base prior to an aeration of the cyclodextrin- containing food base composition to form a gas bubble- containing aerated food composition having an overrun of at least 15%, free of added fat components, and wherein the food base is selected from the group consisting of fruit products, cocoa, milk, yoghurt, and mixtures thereof, optionally containing one or more added sugars. Claims Appendix at Appeal Br. Appendix 1. REJECTIONS The Examiner made the following rejections3 : A. Claims 25-28 and 31-36 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim,4 as evidenced by Self Nutrition Data for Milk5 and Self Nutrition Data for 3 The Examiner also rejected claim 36 under 35 U.S.C. Â§ 112, second paragraph, as being indefinite. Final Act. 2. The Examiner later withdrew this rejection in light of an After-Final Amendment of claim 36 filed March 7, 2014. Ans. 11. 4 Kim, US 2007/0003681 Al, published January 4, 2007 (hereinafter "Kim"). 5 Nutritional Facts and Analysis for Milk, nonfat, fluid without added vitamin A (fat free or skim), Self Nutrition Data, available at 2 Appeal2015-000565 Application 13/301,021 Vanilla Extract6 (collectively "Self Nutrition Data"). Final Act. 4. B. Claim 29 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim, as evidenced by Self Nutrition Data, and further in view of Pedilarco.7 Id. at 9. C. Claim 30 stands rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Kim, as evidenced by Self Nutrition Data, and further in view of Jones. 8 Id. at 10. Appellants seek our review of Rejections A---C. OPINION Rejection A- Obviousness (claims 25-28 and 31-36) Appellants argue claims 25-28 and 31-36 as a group and do not present separate argument for any particular claim. Appeal Br. 4--8. We therefore select claim 25, the sole independent claim, to resolve the issues presented on appeal for Rejection A. The Examiner finds that Kim teaches an aerated food composition including a base carbohydrate-to-protein ratio (C/P) and a base carbohydrate-to-fat ratio (C/F) where one ratio is at least greater than one. Final Act. 4. The Examiner also finds that the composition includes "at least http ://nutritiondata. self. com/facts/ dairy-and-egg-products/ 13912 (last visited April 8, 2013) (hereinafter "Self Nutrition Data Milk"). 6 Vanilla Extract, Self Nutrition Data, available at http://nutritiondata.self.com/facts/spices-and-herbs/219/2 (last visited April 9, 2013) (hereinafter "Self Nutrition Data Milk"). 7 Pedilarco, DE 20200601284 Ul, published December 7, 2006 (hereinafter "P edilarco "). 8 Jones, US 2,745,746, issued May 15, 1956 (hereinafter "Jones"). 3 Appeal2015-000565 Application 13/301,021 one cyclodextrin, as Kim teaches an aerated food product that can be an ice cream (Paragraph 13), where the ice cream is considered the food base." Id. Self Nutrition Data, according to the Examiner, "show[s] the breakdown of protein, carbohydrate and fat" for milk and vanilla extract and shows that the C/P and C/F ratios are both greater than 1. Id. at 5---6. The Examiner also finds that Kim teaches "whipping the ice cream composition to an overrun of from about 7 5 to 1000 percent" which is in Appellants' disclosed range. Id. at 7. And, the Examiner determines that Kim teaches including lipids, including fats and fat mimetic materials. Because, according to the Examiner, a "fat" is different from a "fat mimetics," the Examiner finds Kim teaches a composition "free of added fat components." Ans. 11. Appellants disagree and argue that "[t]he compositions of Kim are required to contain added oil (liquid fat), whereas Applicant's claims are free of added fats." Appeal Br. 5. Appellants contend that the fat mimetics of Kim "have 'similar functional attributes of fats"' and therefore are "equivalents in terms of their use in processing foods." Id.; see also id. at 8 (same). Moreover, Appellants stress that the fat mimetics of Kim would "fall within the definitions of fat given by the Appellants in i-f[0021], a group of compounds that are generally soluble in organic solvents and generally insoluble in water." Id. at 5. Appellants criticize the Examiner's position that Kim treats fats and fat mimetics differently. Id. Appellants argue that just because Appellants do not "specifically mention 'fat mimetic"' in their definition of fat is not relevant. Id. at 7. What is relevant is "the 4 Appeal2015-000565 Application 13/301,021 hydrophobic nature of these substances." Id. Therefore argues Appellants, Kim teaches away from the claimed invention.9 Id. at 8. The Examiner finds that "fat free" means free of fat, like "sugar free" means "free of sugar in the chemical and plain meaning of the term but such a food can include artificial sweeteners which may function similarly to sugar ... but are not considered sugar per se." Ans. 11. Therefore, says the Examiner, fat free does not include fat mimetics. Id. at 11-12. The Examiner explains that the Appellants' definition of fat does not include fat mimetics and the exemplary fats recited by Appellants are all conventional fats. Id. at 12. Further, the Examiner finds that the chemical analyses taught by Appellants for calculating the amount of fat in the claimed compositions indicate that the term "fat" used by Appellants, is used "under the same chemical definition as used by Kim" and thus, Kim teaches a composition including a fat mimetic that is free of added fat components. Id. at 13. The issues here are whether the phrase "free of added fat components," as used by Appellants, excludes fat mimetics. And, if it does 9 "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." In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Here, we do not find (and Appellants do not identify) any teaching within Kim that would discourage the skilled artisan from pursuing a path of invention claimed by Appellants. Kim's affirmative teaching of a food composition comprising an oil or lipid component cannot be said to "criticize, discredit, or otherwise discourage" a composition that is free of added fat. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Therefore, Kim does not "teach away." That said, we understand the substance of Appellants' argument to be that Kim fails to teach a composition "free of added fat components" and therefore fails to render Appellants' claims obvious. We analyze the claims accordingly. 5 Appeal2015-000565 Application 13/301,021 exclude fat mimetics, whether the Examiner reversibly erred in finding that Kim-which teaches aerated food compositions including fat mimetics- renders claim 25 obvious. During prosecution, an application's claims are given their broadest reasonable scope consistent with the specification. In re Am. A cad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). The words used in a claim must be read in light of the specification, as it would have been interpreted by one of ordinary skill in the art at the time of the invention. Id. While Appellants are free to redefine terms in their Specification, any such novel definitions must be clearly indicated. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[W]ords in a claim are generally given their ordinary and customary meaning, [but] a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history."). Like the Examiner, we conclude that, as taught by Appellants, "fat" does not include "fat mimetics." As the Examiner correctly finds [ s ]ince liquid fat mimetics do not appear to fall under Applicant's meaning of fats or lipids, ... the liquid fat mimetics disclosed by Kim are seen to fall outside the disclosed meaning of fat/lipids and therefore meets the claim limitation of the composition being free of added fat components. Final Act. 6. We agree with the Examiner that "free of added fat components" means "'fat' in the chemical and plain meaning of the term." Ans. 12. And, the Specification is consistent with this plain meaning. Notably, paragraph 21 of the Specification does not include fat mimetics as 6 Appeal2015-000565 Application 13/301,021 fats and the exemplary fats included are each conventional fats-and not fat mimetics. Spec. i-f 21. Moreover, we note Appellants teach that "[i]t has further been surprisingly found, according to one or more embodiments of the present invention, the food composition may present a synergistic volume increase, optionally when supplemented with at least one additive." Spec. 35 (emphasis added). And, "[n]on-limiting examples of the additive include xanthan gum, guar gum, polysorbate 80 (P80), whey protein, carrageenan gum, and hydroxypropylmethylcellulose (HPMC)." Id. (emphasis added). These additives are expressly taught as fat mimetics by Appellants' additional evidence, Fat Replacers. 1Â° Fat Replacers 51-52 (teaching protein- based fat mimetics include whey; carbohydrate-based fat mimetics include both gums (guar, xanthan, carrageenan, gum arabic) and cellulose-based replacers (sodium carboxymethyl cellulose/cellulose gum and hydroxypropyl methylcellulose/carbohydrate gum)). Appellants' claim 26 claims the use of these additives: 26. The aerated food composition of claim 25, further comprising one or more volume increasing additives or gas bubble stabilizers selected from the group consisting of natural gums, carboxymethylcellulose, hydroxypropylmethylcellulose, ethyl cellulose ether, and protein stabilizers. Claims Appendix at Appeal Br. Appendix 1 (emphasis added). Claim 26 additionally requires a fat mimetic in combination to the aerated food composition free of fat components of claim 25. Id. Therefore, a fat 1Â° Casimir C. Akoh, Fat Replacers, Food Technology, Vol. 52, No. 3, p. 47 (March 1998) (hereinafter "Fat Replacers"). 7 Appeal2015-000565 Application 13/301,021 mimetic-according to Appellants' Specification and claims-is not a fat as understood by claim 25. Thus, we are not persuaded of reversible error Examiner's findings and conclusions that Kim teaches an aerated food composition "free of added fat" and that claim 25 is rendered obvious in light of Kim. Rejection B- Obviousness (claim 29) The Examiner rejects claim 29 as obvious over Kim, as evidenced by Self Nutrition Data, and Pedilarco. Final Act. 9. Claim 29 additionally requires, in relevant part, that "the food base is selected from the group consisting of fruit juices, fruit purees, fruit sauces, and mixtures thereof ... . " Claims Appendix at Appeal Br. Appendix 1. The Examiner acknowledges that Kim does not teach this additional limitation, but, the Examiner finds that Pedilarco "teaches the known use of fruit puree mixed or blended with an ice cream base (Pages 1 and 2 of Derwent abstract)." Final Act. 10. Therefore, the Examiner concludes that it would have been obvious to the person of ordinary skill in the art at the time "for the aerated ice cream composition of Kim to have further comprised fruit puree as the fruit flavor component ... because Pedilarco teaches fruit purees are known to be included with ice cream bases to make fruit flavored ice creams" prepared with natural flavors. Id. Appellants argue that one skilled in the art would not be motivated to combine the asserted references because of the differences between Pedilarco and Kim. Appeal Br. 9. Specifically, Appellants explain that Pedilarco adds carbon dioxide-containing liquids, like champagne, to the ice cream base. Id. Appellants argue that "the intense aeration (whipping) in 8 Appeal2015-000565 Application 13/301,021 Kim would liberate all the carbon dioxide contained in Pedilarco 's frozen ice." Id. Therefore one skilled in the art would have no reason to make the combination and only through "reconstruction" can claim 29 be achieved. Id. at 10. The test for obviousness is whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. See In re Keller, 642 F.2d 413, 425 (CCP A 1981 ). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Furthermore, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." See id. at 41 7. We find that the combination tendered by the Examiner possesses sufficient reason to combine. Pedilarco, like Kim, teaches food compositions-specifically ice cream bases-where flavoring agents, including fruit may be added. Pedilarco 2 ("mixing with a fruit puree/fruit mousse made of fruits"); Kim i-fi-f 13, 19 ("Suitable flavoring agents can be .. . fruit"). Appellants' argument that Pedilarco and Kim teach ice cream bases that are processed differently, i.e., whipped versus mixed with a carbon dioxide additive, is not persuasive of reversible error primarily because it does not address specifically the Examiner's proposed modification of Kim in view of Pedilarco. Appeal Br. 9-10. 9 Appeal2015-000565 Application 13/301,021 Rejection C - Obviousness (claim 30) The Examiner rejects claim 30 as obvious over Kim, as evidenced by Self Nutrition Data and Jones. Final Act. 11. Claim 30 additionally requires, in relevant part, that "the food base comprises cocoa." Claims Appendix at Appeal Br. Appendix 2. The Examiner finds that Kim does not teach a food base comprising cocoa. Final Act. 10. However, the Examiner finds that Jones "teaches of the natural chocolate flavor of cocoa and teaches the use of cocoa in ice creams and other food products to impart a chocolate flavor (Column 1 lines 15-30)." Id. at 11. From the teachings of Kim and Jones, the Examiner concludes that a person skilled in the art would find obvious the invention of claim 30 and "would have been motivated by Jones to use cocoa as the natural chocolate flavor to prepare naturally flavored ice cream products." Id. Appellants argue that Kim and Jones cannot be combined because Jones is not analogous art. Appeal Br. 11. Appellants assert that "Jones is not in the same field of endeavor, cyclodextrin stabilized aerated food compositions free of added fat, nor is Jones directed to any problem solved by Appellant[s]." Id. Instead, Appellants contend that Jones is related to the preparation of chocolate from cocoa beans by a particularized process. Id. "Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed and, (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Bigio, 381F.3d1320, 1325 (Fed. Cir. 2004). In order for a reference to be "reasonably pertinent" to the problem, it must "logically [] have commended itself to an inventor's 10 Appeal2015-000565 Application 13/301,021 attention in considering his problem." Jn re Jeon Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). The scope of analogous art is to be construed broadly. Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). We are not persuaded by Appellants' contention that Jones is nonanalogous art. Even if a reference is not within the same field of endeavor the question is "whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." See Clay, 966 F.2d at 658---659. In our view, Appellants characterize Jones too narrowly in an attempt to avoid the teachings relied upon by the Examiner. Appeal Br. 11. The Examiner finds, as do we, that Jones is concerned with "the natural chocolate flavor of cocoa and teaches the use of cocoa in ice creams and other food products to impart a chocolate flavor (Column 1, lines 15-3 0)." Final Act. 11. This finding is consistent with Jones which states that the "[t]his invention relates to a new process of roasting cocoa beans that produces the only chocolate and cocoa which does not have to be artificially flavored with vanilla and other flavors in order to make the chocolate candy, drinks and desserts salable." Jones col. 1, 11. 15-19. Moreover, we find that Kim reinforces the teachings of Jones and teaches optional additives, such as flavoring agents, may be used including "vanilla, cream, chocolate, coffee, maple, spice, mint, butter, caramel, fruit, and other flavors." Kim i-f 19 (emphasis added). In light of these findings, we are not persuaded that the Examiner erred in finding Jones analogous art. 11 Appeal2015-000565 Application 13/301,021 CONCLUSION Appellants have not shown a reversible error by the Examiner in rejecting claims 25-36 as obvious over the recited art. DECISION For the above reasons, the Examiner's rejection of claims 25-36 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv) (2009). AFFIRMED 12