Ex Parte SheDownload PDFPatent Trial and Appeal BoardJul 3, 201713525963 (P.T.A.B. Jul. 3, 2017) 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. 13/525,963 06/18/2012 Manjuan Jenny She 12164-US-NP 8822 69099 7590 07/06/2017 Nestle Purina Petcare Global Resources, Inc Checkerboard Square Intellectual Property Patents ST. LOUIS, MO 63164 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 07/06/2017 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): purinapatentmail@purina.nestle.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANJUAN JENNY SHE 1 Appeal 2016-003719 Application 13/525,963 Technology Center 1700 Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and JANE E. INGLESE, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1 and 3—19. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Appellant’s invention relates generally to beverages and particularly to methods for making milk-like beverages having a milk-like appearance and consistency. (Spec. 12). Independent claim 1 is reproduced below: 1 According to Appellant, the real party in interest is Nestec, S.A. See Appeal Br. 3. Appeal 2016-003719 Application 13/525,963 1. A method for making a lactose-free milk-like beverage composition comprising creating a homogeneous aqueous mixture of (1) one or more caseinates in amounts sufficient to produce a final composition containing from about 1 to about 10% caseinates, (2) whey protein in amounts sufficient to produce a final composition containing from about 1 to about 10% whey protein, (3) one or more fats in amounts sufficient to produce a final composition containing from about 2 to about 10% of one or more fats, (4) one or more hydrocolloids in amounts sufficient to produce a final composition containing from about 0.01 to about 1 % of one or more hydrocolloids, and (5) one or more emulsifiers in amounts sufficient to produce a final composition containing from about 0.1 to about 10% of one or more emulsifiers; heating the aqueous mixture to a temperature of from about 118 to about 127°C and maintaining such temperature for from about 8 to about 14 minutes; and cooling the heated aqueous mixture to a temperature of from about 20 to about 35°C, wherein the composition does not contain lactose. Appellant appeals the Examiner’s rejection under 35 U.S.C. § 103(a) of claims 1 and 3—19 as unpatentable over the combination of Parthasarathy et al.2 (WO 2010/114627A1, Pub. Oct. 7, 2010) and 2 The Examiner refers this reference as “Partha.” (Final Act. 2—6). 2 Appeal 2016-003719 Application 13/525,963 Whitaker et al. (US 2,663,642 issued Dec. 22, 1953). (App. Br. 8—19; Final Act. 2—6). OPINION3 Upon consideration of the evidence in this appeal record in light of the respective positions advanced by the Examiner and Appellant, we determine that Appellant has identified reversible error in the Examiner’s determination that the teachings of Whitaker would have suggested heating Parthasarathy’s aqueous mixture to a temperature of from about 118 to about 127°C and maintaining such temperature for from about 8 to about 14 minutes as required by independent claim 1. Accordingly, we reverse the Examiner’s § 103(a) rejection of the above claims for the reasons set forth in the Briefs. We add the following. The Examiner has the burden of establishing a prima facie case of obviousness regarding the subject matter recited in the claims on appeal. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he [patent] examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”); see also In re Jung, 637 F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that while “the applicant must identify to the Board what the examiner did wrong, . . . the examiner retains the burden to show [unpatentability]”). 3 We limit our discussion to independent claim 1. 3 Appeal 2016-003719 Application 13/525,963 According to the Examiner Parthasarathy teaches a method for making a lactose-free milk-like beverage composition comprising creating a homogeneous aqueous mixture that comprises all the method steps required by the claimed invention except for heating the aqueous mixture to a temperature of from about 118 to about 127°C and maintaining such temperature for from about 8 to about 14 minutes as required by independent claim 1. (Final Act. 2—3). The Examiner found Whitaker describes thermal treatment steps for concentrating and pasteurization of milk by heating for 10 to 30 minutes. The Examiner specifically states: Whitaker teaches time and thermal treatment steps including a preheated step of milk at 143 degrees F (approx. 60 degrees C) (i.e. all fractions of the milk have been heated including the protein fraction), and known holding temperatures of from 10 to 30 minutes. See 1:20— 45, 5:40-70, and 6:14—35, 7:60-74. Whitaker teaches a concentration and pasteurization heating steps at 127 degrees F and 156 degrees F (approx. 70 degrees C) in Example 1 (i.e. all fractions of the milk including protein and sugar have been heated again). Whitaker teaches preheating shown in Fig. 1 having heating from 5 seconds up to 3 hours at temperatures from 76 degrees C (170 degrees F) to 60 degrees C (140 degrees F). Whitaker teaches pasteurization heating from 5 seconds up to 7 hours (25,000 seconds) and 150 degrees F (66 degrees C) to 140 degrees (60 degrees C) in Fig. 3. Whitaker teaches the reason for heating milk are several, those at least including to avoid cooking flavors, to reduce bacteria count, to prevent spoilage, and to inactive the lactase enzyme. See 1:20-45, 5:40-70, and 6:14- 35, 7:60-74. Thus Whitaker teaches thermally treating at least protein within the claimed time periods and temperatures falling within Applicant’s ranges and also teaches inactivating lactase enzyme by heating as claimed. (Final act 3 4). The Examiner determined that Whitaker suggests modifying Parthasarathy’s time of heating for the purpose of destroying pathogenic 4 Appeal 2016-003719 Application 13/525,963 substances and for the benefits of avoiding cooking flavors, reducing bacterial count, preventing spoilage, and to inactivate lactase enzyme. (Final Act 4). Appellant argues Parthasarathy describes a process for making milk like beverages having the same or similar ingredients to the claimed invention except for using ultra high temperature (UHT) processes instead of the retort process of the present invention. (App. Br. 14; Spec. 1 52). Appellant argues Parthasarathy teaches only heating from 2 to 16 seconds and therefore teaches away from heating the aqueous mixture to a temperature of from about 118 to about 127°C and maintaining such temperature for from about 8 to about 14 minutes as required by the claimed invention. (App. Br. 11). Appellant argues Whitaker is directed to making pasteurized concentrated milk and describes various temperature profiles for destroying pathogens. (App. Br. 15). We agree with Appellants that the evidence presented by the Examiner does not render obvious the claimed subject matter. As set forth above, the Examiner has identified several portions of Whitaker as suggesting the temperature and time profile required by the claimed invention. Whitaker describes various time and temperature profiles associated with different heating processes (encompassed by the Examiner’s citation to Whitaker 1:20-45, 5:40-70, 6:14—35, and 7:60-74). Specifically, the Examiner identified portions of Whitaker directed to time and temperatures for preheating, concentrating and pasteurizing milk. The Examiner’s general description and reliance on Whitaker does not provide adequate evidence for modification of Parthasarathy’s heating process— from 2—16 seconds at temperatures ranging from 120—160°C—to a 5 Appeal 2016-003719 Application 13/525,963 temperature of from about 118 to about 127°C and maintaining such temperature for from about 8 to about 14 minutes as required by the claimed invention. Notwithstanding the above, the Examiner has also failed to explain why a person of ordinary skill in the art would look to a process for forming concentrated milk to provide a basis for modifying lactose-free milk-like beverages having a milk-like appearance and consistency as described by Parthasarathy. The Examiner has not explained how the methods of forming a concentrated milk product of Whitaker are similar to the methods for producing lactose-free milk-like beverages such as described by Parthasarathy. Accordingly, on this record, we are constrained to reverse the Examiner’s rejections of claims 1 and 3—19 under 35 U.S.C. § 103(a). DECISION The Examiner’s prior art rejections of claims 1 and 3—19 under 35 U.S.C. § 103(a) are reversed. REVERSED 6 Copy with citationCopy as parenthetical citation