Ex parte Schroder

Board of Patent Appeals and Interferences

Jun 27, 2000

08270429 (B.P.A.I. Jun. 27, 2000)

1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte BRUCE G. SCHRODER
_____________
Appeal No. 1996-3028
Application No. 08/270,429
______________
ON BRIEF
_______________
Before JOHN D. SMITH, PAK and WALTZ, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s refusal to allow
claims 1, 3 through 14, 20 and 23 as amended subsequent to the
final rejection (see the amendment dated Sept. 5, 1995, Paper
No. 6, entered as per the Advisory Action dated Sept. 7, 1995,
Appeal No. 1996-3028
Application No. 08/270,429
It is noted that the Advisory Action is incorrectly1
listed as Paper No. 6 and erroneously omits claim 23 from the
claims rejected.
2
Paper No. 7). Claims 1, 3-14, 20 and 23 are the only claims1
remaining in this application.
According to appellant, the invention is directed to a
reverse osmosis process for making a non-milk dairy beverage
from a starting material selected from milk, defatted milk,
whey, defatted whey, permeate, retentate, defatted retentate,
and condensed or evaporated water from dairy starting
materials (Brief, page 2). Claim 1 is illustrative of the
subject matter on appeal and is reproduced below:
1. A method of making a non-milk dairy beverage
comprising the steps of:
subjecting material selected from the group
consisting of
milk,
defatted milk,
whey,
defatted whey,
permeate, retentate and defatted retentate of the
filtration of a dairy starting material and condensate of
the evaporated water from a dairy starting material to
reserve osmosis to separate a pure dairy water permeate
therefrom;
combining the dairy water with a non-milk additive
Appeal No. 1996-3028
Application No. 08/270,429
Although the examiner has not explicitly stated that the2
final rejection of claims 1-16, 18, 20 and 23-26 under § 103
over Girsh in view of Coulter ( U.S. Patent No. 2,712,504,
3
in a non-milk dairy product for consumption, the dairy
product being substantially pure and free of impurities from
the dairy starting material; and
packaging the substantially pure non-milk dairy
beverage.
The examiner has relied upon the following references as
evidence of obviousness:
Girsh 4,954,361 Sep. 4,
1990
Ermens et al. (Ermens) 0 364 053 Apr. 18,
1990
(Published European Patent Application)
Appellant has relied upon the following references in
rebuttal to the examiner’s evidence of obviousness (Brief,
Appendices B and C):
Dairy Research Review, Vol. 1, Issue 2, 1985 (Author and page
nos. are unknown)
Jack Mans, “Fines as High as $100,000 Per Day,” Dairy Foods,
p. 89, Apr. 1993.
The examiner has made a new ground of rejection in the
Answer, with all of the claims on appeal now rejected under
35 U.S.C. § 103 as unpatentable over Ermens or Girsh (Answer,
pages 3-4). We reverse both of the examiner’s rejections for2
Appeal No. 1996-3028
Application No. 08/270,429
issued on July 5, 1955) has been withdrawn, this rejection has
not been repeated or restated in the Answer. Accordingly, we
consider this rejection withdrawn. See Paperless Accounting,
Inc. v.
Bay Area Rapid Transit Sys., 804 F.2d 659, 663, 231 USPQ 649,
652 (Fed. Cir. 1986).
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reasons which follow.
Appeal No. 1996-3028
Application No. 08/270,429
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OPINION
The examiner finds that Ermens discloses a process in
which a milk product is subjected to ultrafiltration, treated
and packaged with the ultrafiltration permeate described as a
clear liquid containing only salts, lactose, vitamins and low
molecular weight nitrogen compounds (Answer, page 4). The
examiner also finds that Ermens teaches that treatment of a
dairy product by reverse osmosis produces only water, i.e.,
dairy water (id.). Similarly, the examiner finds that Girsh
discloses the use of a permeate from the ultrafiltration of
milk (Answer, page 5). The examiner recognizes that the
process recited in the claims on appeal requires the use of
reverse osmosis instead of the ultrafiltration disclosed by
the applied prior art (Answer, page 4). From these findings,
the examiner concludes that “it would have been within the
skill of the ordinary worker to use the water from RO [reverse
osmosis] if one did not want to retain the salts, lactose and
vitamins of the UF [ultrafiltration] permeate.” (Answer,
sentence bridging pages 4-5, emphasis added). The examiner
also concludes that it would have been obvious to use water
Appeal No. 1996-3028
Application No. 08/270,429
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from RO in place of the permeate from UF and to add non-milk
ingredients for their known functions, depending on the degree
of filtration desired and the ingredients from the milk
Appeal No. 1996-3028
Application No. 08/270,429
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which one wants left in the permeate (Answer, page 5). The
examiner also states that “[r]everse osmosis only differs from
UF by a matter of degree.” (Supplemental Answer, Paper No. 18,
page 2). We disagree.
Ermens specifically teaches that the ultrafiltration
permeate of milk or milk products is desired because the
“ultrafiltration permeate also has the same osmotic value as
blood” and thus is advantageous as a thirst-quenching beverage
(col. 2, l. 52-col. 3, l. 3; col. 6, ll. 5-29). Ermens
teaches that reverse osmosis uses a membrane that is
completely impermeable to lactose and salts and thus produces
a permeate of pure water “but such a process is hardly useful
for the preparation of beverages according to the invention.”
(col. 7, l. 55-col. 8, l. 4). The examiner has not
established any reason, suggestion or motivation to support
the conclusion that one of ordinary skill in the art would not
have wanted to retain the salts, lactose, and vitamins of the
UF permeate of Ermens and thus would have used the water from
RO (Answer, sentence bridging pages 4-5). In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125,
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Application No. 08/270,429
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1127 (Fed. Cir. 1984)(“The mere fact that the prior art could
be
Appeal No. 1996-3028
Application No. 08/270,429
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so modified would not have made the modification obvious
unless the prior art suggested the desirability of the
modification. [Citations omitted].”).
Girsh filters whole mammalian milk through an
ultrafiltration apparatus to remove all hyperallergenic
components (col. 3, ll. 3-6). Although Girsh teaches various
levels of filtration (col. 3, ll. 13-50), the permeate
collected from the ultrafiltration apparatus contains
riboflavin, lactose, salt or ash, carbon compounds, dimethyl
sulfide and other minerals (col. 4, ll. 52-61). The examiner
has not established any reason, suggestion or motivation for
using the water from RO, which has no components other than
water, in place of the permeate from UF of Girsh containing,
inter alia, riboflavin, lactose and ash (see the Answer, page
5). See Gordon, supra.
For the foregoing reasons, we determine that the examiner
has not met the initial burden of establishing a prima facie
case of obviousness. See In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Since we have reached
this determination, we need not consider the sufficiency of
Appeal No. 1996-3028
Application No. 08/270,429
We note that the Dairy Research Review article, Appendix3
B, directly refutes the examiner’s contention that reverse
osmosis only differs from ultrafiltration “by a matter of
degree” and “[i]t is not like it is a completely different
process.” (Supplemental Answer, Paper No. 18, page 2). The
examiner has failed to consider appellant’s evidence in
rebuttal to the
§ 103 rejection (i.e., Appendices B and C, see the
Supplemental Answer, Paper No. 18, page 5, last paragraph).
“Objective evidence of nonobviousness, when present, must
always be considered before reaching a legal conclusion under
§ 103. [Citation omitted].” Pentec, Inc. v. Graphic Controls
Corp., 776 F.2d 309, 315, 227 USPQ 776, 770 (Fed. Cir. 1985),
emphasis added. We also note that the Mans article (Appendix
C) is dated April 1993 and there has been no determination as
to whether this article was published before appellant’s
effective filing date.
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appellant’s rebuttal evidence (Appendices B and C attached to
the Brief). In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276, 3
1278 (Fed. Cir. 1987). Accordingly, the examiner’s rejections
of the claims on appeal under 35 U.S.C. § 103 as unpatentable
over Ermens or Girsh are reversed.
OTHER ISSUES
Upon return of this application to the jurisdiction of
the examiner, the examiner and appellant should reconsider the
patentability of at least claim 14 under the doctrine of
obviousness-type double patenting over claims 9, 12 and 15 of
the parent of this application, now U.S. Patent No. 5,352,468.
Appeal No. 1996-3028
Application No. 08/270,429
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The examiner should also consider whether the absence of
any sterilizing step in the claimed process (except claim 23),
in light of the broadest reasonable interpretation of the
claimed term “for consumption” (see claim 1), raises any
issues regarding lack of enablement and/or indefiniteness
under the requirements of 35 U.S.C. § 112. See the
specification, page 3, ll. 7-16 and
24; page 6, ll. 12-15; page 14, ll. 23-27; page 17, l. 16-page
18, l. 12; and the Mans article attached to the Brief as
Appendix C.
Appeal No. 1996-3028
Application No. 08/270,429
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SUMMARY
The examiner’s rejections of claims 1, 3-14, 20 and 23
under 35 U.S.C. § 103 as unpatentable over Ermens or Girsh are
reversed.
The decision of the examiner is reversed.
REVERSED
)
JOHN D. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
THOMAS A. WALTZ )
Administrative Patent Judge )
TAW:hh
Appeal No. 1996-3028
Application No. 08/270,429
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Peter K. Trzyna
P.O. Box 7131
Chicago, IL 60680-7131