Ex Parte Ryan

Patent Trial and Appeal Board

Jan 22, 2018

11886365 (P.T.A.B. Jan. 22, 2018)

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.
11/886,365 04/27/2009 Glenda Ryan 1209-113710 6254
24978 7590 01/24/2018
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
01/24/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GLENDA RYAN
Appeal 2017-004005
Application 11/886,3651
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY R. SNAY, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejection adverse to the patentability of claims 1—4, 7—26, and 38—41 under
35 U.S.C. § 103(a).
We have jurisdiction under 35 U.S.C. § 6.
We affirm.
1 Appellant identifies the real party in interest as Sapporo Holdings Limited.
App. Br. 4.
Appeal 2017-004005
Application 11/886,365
SUBJECT MATTER
Claim 1 is illustrative of the subject matter on appeal:
1. A pre-packaged food or beverage product which includes
macronutrients in the form of:
• protein;
• carbohydrate;
• fat; and
• fiber,
wherein said macronutrients are all 33% of the Daily
Value or RDI; and
wherein the food and beverage product also includes
micronutrients in the form of vitamins and minerals, said
micronutrients all 33% of the Daily Value or RDI to yield a
nutritionally balanced complete food or beverage product
capable of providing a healthy convenience food to the average
consumer.
App. Br. 30 (emphasis added).
REJECTION
Claims 1—4, 7—26, and 38-41 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Mody,2 Shatkina,3 RDI,4 Brooking,5 Kemmerer,6
Fosdick,7 Stone,8 and Lederman.9 Final Act. 3.
2 Mody, US 2002/0168448 Al; Nov. 14, 2002.
3 Shatkina et al., US 2006/083795 Al; Apr. 20, 2006 (“Shatkina”).
4 Australia New Zealand Food Standards Code, Commonwealth of Australia
Gazette No. P 30 (December 20, 2000) (“RDI”).
5 Brooking et al., US 3,851,083; Nov. 26, 1974 (“Brooking”).
6 Kemmerer, US 3,097,947; July 16, 1963.
7 Fosdick et al., US 2006/0003965 Al; Jan. 5, 2006 (“Fosdick”)
8 Stone, US 2003/0124200 Al; July 3, 2003.
9 Lederman, US 2003/0068408 Al; Apr. 10, 2003.
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Application 11/886,365
OPINION
Appellant argues the rejection of claims 1—4, 7—26, and 38 as a group.
App. Br. 11—26. We, therefore, select claim 1 as representative and decide
the propriety of this rejection based on this claim alone. Dependent claims
2-4, 7—26, and 38 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellant argues claims 39, 40, and 41 separately. App. Br. 26—29.
Claim 1
The Examiner’s findings regarding the cited prior art is reproduced at
pages 3 through 8 of the Final Action.10
We have considered Appellant’s arguments (App. Br. 11—26) and are
unpersuaded that Appellant has identified any reversible error in the
Examiner’s rejections. In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011)
(explaining the Board’s long-held practice of requiring an Appellant to
identify the alleged error in the Examiner’s rejection). Therefore, we sustain
the obviousness rejection of claim 1 based on the findings of fact,
conclusions of law, and rebuttals to arguments expressed by the Examiner in
the Final Action and in the Answer. We add the following comments for
emphasis.
Appellant spends significant portions of the Appeal Brief arguing the
separate teachings of the cited references. App. Br. 11—23. Such arguments,
without more, are not persuasive of error in the Examiner’s obviousness
conclusion. As even acknowledged by Appellant {id. at 23), “[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
10 Final Office Action dated April 19, 2016.
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Application 11/886,365
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole.” In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
Such arguments are also not well taken because they primarily focus
on the teachings of the references themselves, to the exclusion of other
elements of the obviousness analysis. The Supreme Court of the United
States has stated that an “obviousness analysis cannot be confined by a
formalistic conception of the words teaching, suggestion, and motivation, or
by overemphasis on the importance of published articles and the explicit
content of issued patents.” KSRInt'l Co. v. Teleflex Inc., 550 IJ.S. 398, 419
(2007). Rather, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” KSR, 550 U.S. at 418. Indeed, the Supreme Court of
the United States has recognized, as correctly noted by the Examiner (Final
Act. 4), that “the combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR, 550 U.S. at 416. “[W]hen the question is whether a patent
claiming the combination of elements of prior art is obvious,” the answer
depends on “whether the improvement is more than the predictable use of
prior art elements according to their established functions.” KSR, 550 U.S.
at 417.
Applying these concepts to the case before us, claim 1 requires that
the recited macronutrients and micronutrients be present in an amount that is
“33% of the Daily Value or RDI.” It is undisputed that each of the recited
macronutrients and micronutrients were known in the prior art. Moreover,
Appellant does not argue that the recited combination, where all
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Application 11/886,365
macronutrients and micronutrients are present in a food or beverage product
in the recited amounts (i.e., 33% of the Daily Value or RDI), would yield
anything but a predictable result.11 Thus, we are in full agreement with the
Examiner (Final Act. 4) that “[n]o invention is seen in using known
standards [i.e., the RDI] to make a food product because all this involves is
adding known amounts of the [recommended daily allowances] to a product
without any new or unobvious outcome” in the absence of a proper showing
of an unexpected result.
We furthermore observe that Appellant fails to timely challenge, and
thus fails to reveal error in, the Examiner’s reliance on In re Levin, 178 F.2d
945 (CCPA 1949). Final Act. 10, 11—12.12 Indeed, Levin forecloses the
patentability of a claim to a specific recipe or formula, such as that recited in
claim 1, in the absence of “a proper showing [which] establishes a coaction
11 Appellant, in the Appeal Brief, does not challenge the Examiner’s position
that the combination would yield a predictable result. Final Act. 4—5.
12 Appellant, in the Reply Brief, presents several arguments against the
Examiner’s application of In re Levin. We decline to consider such
arguments, however, because Appellant has failed to show good cause why
such arguments could not have been raised in the Appeal Brief. See 37
C.F.R. § 41.37(c)(l)(iv) (“Except as provided for in §§ 41.41, 41.47, and
41.52, any arguments or authorities not included in the appeal brief will be
refused consideration by the Board for purposes of the present appeal.”).
See also 37 C.F.R. § 41.41(b)(2) (“Any argument raised in the reply brief
which was not raised in the appeal brief, or is not responsive to an argument
raised in the examiner’s answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of the present
appeal, unless good cause is shown.”). We emphasize here that the
Examiner cites In re Levin in the Final Action. Final Act. 10, 11—12.
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or cooperative relationship between the selected ingredients which produces
a new, unexpected, and useful function.” In re Levin, 178 F.2d at 948.
Moreover, we emphasize that “where the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.” In re Aller, 220
F.2d 454, 456 (CCPA 1955).
Thus, for the reasons provided by the Examiner and above, we sustain
the obviousness rejection of claims 1—4, 7—26, and 38.
Claim 39
Claim 39 requires the food product to be in the form of an energy bar
that provides 2900KJ of energy, contains 33% of the Daily Value or RDI of
protein, carbohydrate, fat, and fiber, and various micronutrients.13 App. Br.
34—35.
For the patentability of this claim, Appellant relies on substantially the
same arguments provided for claim 1. However, such arguments are not
persuasive for the same reasons as given above. Appellant also argues that
the cited references fail to teach or suggest the limitation requiring that the
bar provide 2900KJ of energy. This argument lacks persuasive merit,
however, because Appellant has not shown that this claim feature would not
have been expected by the skilled artisan. In re Levin, 178 F.2d at 948.
We, therefore, sustain the Examiner’s obviousness rejection of claim
39.
13 Claim 39 also erroneously refers to a “beverage product” on several
occasions.
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Claims 40 and 4114
Claim 40 is directed to a pre-packaged food or beverage product that
contains certain specific grams per serving amounts of protein, fat,
carbohydrates, and fiber. App. Br. 35. Claim 41 is of similar scope to claim
40, but further requires a specific weight of 165g, 2900KJ of energy per
serving, as well as specific saturated fat and sugar content. App. Br. 36.
Appellant urges that the Examiner’s rejection of each of these claims
is in error because the cited references fail to teach or suggest the recited
macronutrient profile. Id. at 27, 28. Appellant also contends that the
references do not disclose or suggest 2900KJ of energy as recited in claim
41. Id. at 28.
As discussed above, these arguments fail to persuade us of reversible
error, and we sustain the rejection of these claims. KSR, 550 U.S. at 416—
419. In re Levin, 178 F.2d at 948.
SUMMARY
The Examiner’s final decision to reject claims 1—4, 7—26, and 38-41
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED
14 Because Appellant separately argues the patentability of these claims, we
have considered the patentability of these claims separately. We combine
our discussion of these claims, however, for the sake of brevity.
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