Ex Parte RyanDownload PDFPatent Trials and Appeals BoardJan 22, 201811886365 - (D) (P.T.A.B. Jan. 22, 2018) Copy Citation 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. 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): ptomail @ gbclaw. net docket @ gbclaw. net verify @ gbclaw. net 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. 2 Appeal 2017-004005 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. 3 Appeal 2017-004005 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 4 Appeal 2017-004005 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. 5 Appeal 2017-004005 Application 11/886,365 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. 6 Appeal 2017-004005 Application 11/886,365 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. 7 Copy with citationCopy as parenthetical citation