Ex Parte SandersDownload PDFPatent Trial and Appeal BoardNov 30, 201511580439 (P.T.A.B. Nov. 30, 2015) 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. 11/580,439 10/12/2006 Nigel Hugh Sanders 1421-75 5744 23869 7590 12/01/2015 Hoffmann & Baron LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER TARAZANO, DONALD LAWRENCE ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 12/01/2015 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 NIGEL HUGH SANDERS ____________ Appeal 2013-010498 Application 11/580,4391 Technology Center 1700 ____________ Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision finally rejecting claims 1–10, 13–58, 61–75, 77–114, 117–131, 133–163, 168, and 169 under 35 U.S.C. § 103(a) as unpatentable. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM-IN-PART.2 1 According to Appellant, the real party in interest is Kraft Canada, Inc., successor in title to Cadbury Adams Canada, Inc. Br. 2. 2 Our decision refers to Appellant’s Original Specification filed October 12, 2006, Appellant’s Appeal Brief (Br.) filed May 10, 2013, and the Examiner’s Answer (Ans.) mailed June 7, 2013. Appeal 2013-010498 Application 11/580,439 2 Claims 164–167 and 170–172 are also pending, but because the Examiner has withdrawn the rejection under 35 U.S.C. § 112, second paragraph, these claims are not included in any of the currently pending rejections and are not before us on appeal. Therefore, we dismiss the appeal with regard to these claims. STATEMENT OF THE CASE The invention relates to a milk chocolate composition with an increased milk solid content, which may contain greater than 40% natural milk solids by weight, and methods of making finished milk chocolate products with this composition. Spec. ¶ 7. Appellant discloses that milk chocolate compositions are regulated in many countries, setting minimum levels of dry cocoa solids, dry milk solids, dry nonfat cocoa solids, milk fat, and total fat. Id. at ¶ 4. In addition, Appellant teaches that it was believed that the type of milk solids used influences chocolate flavor. Id. Appellant defines “‘milk solids’” as “the mass (e.g., proteins, fats, minerals, vitamins, enzymes, sugar) remaining after removal of water in conventional liquid milk.” Id. at ¶ 25. Moreover, Appellant defines “‘natural milk solids’” as being from conventional liquid milk, thereby excluding milk solids treated to create a selected fatty acid profile. Id. at ¶ 27. According to Appellant, the increased milk solid content chocolate provides an increased calcium and protein content, without raising the milk fat content and requiring less added sweetener. Id. at ¶¶ 28, 29, 33, and 53. Claim 1, reproduced below from the Claims Appendix to Appellant’s Brief, is illustrative of the subject matter on appeal: 1. A finished milk chocolate composition product comprising Appeal 2013-010498 Application 11/580,439 3 greater than 40% natural milk solids by weight, wherein said natural milk solids are milk solids that have not been treated to create a selected fatty acid profile or subjected to an enzyme treatment, and further comprising cocoa liquor, cocoa butter and sweetener. The Rejections The Examiner maintains, and Appellant requests our review of, the following grounds of rejection under 35 U.S.C. § 103(a): A. Claims 1–10, 13, 14, and 23–42 as unpatentable over Youcheff;3 B. Claims 15–21 and 43–48 as unpatentable over Youcheff in view of Beckett;4 C. Claims 49–58, 61, 62, 70–75, 77–90, 98–114, 117, 118, 126– 131, 133–146, and 154–160 as unpatentable over Youcheff as evidenced by Lee;5 D. Claims 63–69, 91–97, 119–125, and 147–153 as unpatentable over Youcheff as evidenced by Lee and further in view of Beckett; and E. Claims 1–3, 7–14, 22–42, 49–62, 105–146,6 161–163, 168, and 169 as unpatentable over either Armstrong A7 or Armstrong B.8 3 Youcheff et al., U.S. 6,635,303 B1, issued Oct. 21, 2003 (hereinafter “Youcheff”). 4 S.T. Beckett, Industrial Chocolate Manufacture and Use 268, 269, 275–277 (2nd ed. 1994). 5 Frank A. Lee, Basic Food Chemistry 249–260 (1975). 6 In both the Final Office Action mailed July 30, 2012 and the Answer, this rejection lists, inter alia, claims 105–118 and 113–146, providing unnecessary overlap in claims 113–118 in the claims rejected. Thus it appears that claims 105–146 were actually intended to be listed as included in this rejection. 7 Armstrong et al., US 6,261,627 B1, issued July 17, 2001 (hereinafter “Armstrong A”). Appeal 2013-010498 Application 11/580,439 4 ANALYSIS Rejections A–D: Obviousness based on Youcheff With regard to rejections A–D above, Appellant does not argue the claims separately, focusing the arguments on Youcheff. Tthe dispositive issue before us relative to the rejections based on Youcheff is whether the Examiner reversibly erred in finding that Youcheff teaches a finished milk chocolate product including natural milk solids. We answer this question in the negative and sustain the Examiner’s rejections based on Youcheff. Appellant primarily argues that Youcheff fails to teach a finished milk chocolate composition product comprising greater than 40% natural milk solids by weight. Br. 7, 13–17. Appellant contends that the Examiner has mischaracterized Youcheff in finding Youcheff teaches use of powdered milk solids in an amount up to 40%. Id. at 8, 13, 16. Instead, according to Appellant, Youcheff refers to the milk powdered milk solids of the invention, which have been treated to create a fatty acid profile and/or subjected to an enzyme treatment and, therefore, are not natural milk solids. Id. at 8, 14. As to the Examiner’s finding that Youcheff teaches, as an alternative to treated milk solids, the use of natural milk solids in which the fatty acid profile of the finished milk chocolate product is altered by adding the desired fatty acids to any of the other chocolate ingredients (Ans. 4, 9–10), Appellant urges that this alternative is merely another teaching of how to produce milk powders with the selected fatty acid profile. Br. 15. Appellant 8 Armstrong et al., US 6,706,307 B2, issued Mar. 16, 2004 (hereinafter “Armstrong B”) Appeal 2013-010498 Application 11/580,439 5 notes that Youcheff’s disclosure of this alternative begins by describing methods of preparing the powdered milk solids having the above described fatty acid profile. Id. As such, Appellant argues that this alternative merely provides that the milk solids are treated in situ during production of the chocolate product. Id. In addition, Appellant notes that Youcheff’s entire chocolate composition relies on a modified fatty acid profile of the milk solids, i.e., Youcheff is limited to use of treated, non-natural milk solids. Id. at 16. According to Appellant, “at some point during the Youcheff process — before resulting in a finished product—the milk solids are treated by the fatty acids.” Id. We do not find Appellant’s arguments persuasive of reversible error. Claim 1 requires that the finished product comprises natural milk solids. Claim 1 further requires that the natural milk solids have not been treated to create a selected fatty acid profile or subjected to an enzyme treatment, consistent with Appellant’s Specification teaching. However, claim 1 does not exclude adding fatty acids into the finished milk chocolate product apart from the natural milk solids. In Youcheff’s alternate method, Youcheff uses natural milk solids, and adds desired fatty acids to other chocolate ingredients. Youcheff, 2:45–49 and 4:8–16. As this is an alternative method of achieving Youcheff’s product, it is clear that natural milk solids are included within Youcheff’s disclosure of “milk solids of the invention,” when referring to the amount of milk solids to be added to the chocolate product. Further while Appellant contends that adding fatty acids to other chocolate ingredients that are then mixed with untreated milk solids causes Appeal 2013-010498 Application 11/580,439 6 treatment of the milk solids, we disagree. Appellant prepares the finished milk chocolate product by combining natural milk solids with cocoa liquor, cocoa butter, and sweetener. See for example, claim 23. Youcheff’s alternative method also comprises combining natural milk solids with cocoa liquor, cocoa butter, and sweetener. Youcheff, 4:8–16 and 6:15–29. Although Youcheff’s alternative method modifies one or more of the other chocolate ingredients (cocoa liquor, cocoa butter, and sweetener) to include the desired fatty acids, Appellant’s claim 1 does not exclude such modified other chocolate ingredients. Appellant does not direct our attention to support in the record that combining such modified other chocolate ingredients with natural milk solids thereby “treats” these milk solids with fatty acids. Appellant’s claim requires untreated milk solids, not a finished chocolate product without a modified fatty acid profile. Accordingly, Appellant has not identified reversible error in the Examiner’s findings regarding Youcheff, or obviousness conclusion based thereon. We, therefore, will sustain the Examiner’s rejections A–D. Rejection E: Obviousness based on Armstrong A or Armstrong B With regard to rejection E above, the dispositive issue before us relative to the rejection based on Armstrong A or Armstrong B is whether the Examiner reversibly erred in finding that each of these references teaches a chocolate crumb product containing 20–70% milk solids to produce a finished milk chocolate product containing more than 70% crumb. We Appeal 2013-010498 Application 11/580,439 7 answer this question in the affirmative and will not sustain the Examiner’s rejection based on Armstrong A or Armstrong B.9 The Examiner finds Armstrong A teaches a finished milk chocolate product made using a crumb with 20–70% natural milk solids. Ans. 8. The Examiner further finds Armstrong A teaches that the chocolate product may contain more than about 70% crumb. Id. Therefore, the Examiner finds that, assuming Armstrong A desires to use 60–70% milk solids for the crumb, with about 70% crumb in the finished chocolate product, it would have been obvious to provide a milk chocolate product with greater than 40% milk solids. Id. at 8–9. In other words, as we understand the Examiner’s rejection, because Armstrong A teaches a crumb with up to 70% milk solids, and a chocolate product up to 70% crumb, Armstrong A’s chocolate product would contain at least 40% milk solids (0.70 x 0.70 = 0.49). See Ans. 11. Appellant contends that the Examiner erred in assuming the amount of milk solid in the crumb, because Armstrong A explicitly teaches the amount. Br. 30. In particular, Appellant notes that Armstrong A’s Example 1 makes a chocolate product including 70.55% crumb containing 27.3% milk solids such that the product has about 19.3% milk solids. Id. Appellant notes that the Examiner’s assumption almost triples the amount of milk solids that Armstrong A’s Example 1 teaches for the crumb, without offering a reason 9 Appellant asserts that the two Armstrong references are essentially the same, and that Appellant’s arguments refer only to Armstrong A. However, Appellant urges that these arguments apply equally to Armstrong B. Br. 29, n. 8. We note the Examiner likewise focuses on Armstrong A only. Ans. 8– 9. Accordingly, our decision with regard to the obviousness rejection over Armstrong A applies with equal force to Armstrong B. Appeal 2013-010498 Application 11/580,439 8 why this change should or could be made. Id. Appellant further notes that Armstrong A’s Example 3, while providing a crumb with higher milk solids content, uses less crumb to provide chocolate products having about the same milk solids as Example 1. Id. at 30–31. Finally, Appellant notes that Armstrong A’s Example 1 uses more than 70% crumb, whereas claims 161– 172 require not more than 70% crumb. Id. at 30. We have considered the respective positions articulated by the Examiner and Appellant, and find a preponderance of the evidence favors Appellant. We note Armstrong A’s disclosure that the crumb may contain up to 70% milk solids reflects little itself about the milk solids content in the finished chocolate product. In this regard, we note Armstrong A’s examples teach a reduction in the amount of crumb in the finished chocolate product when the amount of milk solids is increased. Compare Armstrong A, Examples 1 and 3. The Examiner does not direct our attention to any evidence in Armstrong A that indicates a desirable range of milk solids for the finished milk chocolate product that includes or overlaps the range of Appellant’s claims.10 Instead, the Examiner relies on an assumption as to the amount of crumb and the amount of milk solids in the crumb to arrive at the claimed range. Ans. 11. However, the Examiner fails to provide a sufficient evidentiary basis for such an assumption, even though Appellant challenges the assumption. The Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort 10 We note the Examiner does not take the position that Armstrong A’s chocolate crumb product is a finished milk chocolate composition product. As such, we similarly decline to take such a position. Appeal 2013-010498 Application 11/580,439 9 to speculation, unfounded assumptions, or hindsight reconstruction to supply deficiencies in the factual basis. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“To facilitate review, [the obviousness] analysis should be made explicit.”); see also In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”), quoted with approval in KSR, 550 U.S. at 418. We find the Examiner has not supplied the requisite rational underpinning to support the obviousness conclusion for the reasons set forth above. Accordingly, we cannot sustain the Examiner’s obviousness rejection based upon Armstrong A or Armstrong B. DECISION Upon consideration of the record, and for the reasons given above and in the Answer, the decision of the Examiner rejecting claims 1–10, 13–21, 23–58, 61–75, 77–114, 117–131, and 133–160 under 35 U.S.C. § 103(a) as unpatentable over Youcheff, alone or combined with Beckett and/or Lee, is affirmed. However, for the reasons given above and in Appellant’s Brief, the decision of the Examiner rejecting claims 1–3, 7–14, 22–42, 49–62, 105– 146, 161–163, 168, and 169 under 35 U.S.C. § 103(a) as unpatentable over Armstrong A or Armstrong B is reversed. 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). Appeal 2013-010498 Application 11/580,439 10 AFFIRMED-IN-PART cdc Copy with citationCopy as parenthetical citation