Ex Parte Shibata

Patent Trial and Appeal Board

Sep 19, 2016

12158180 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/158, 180 06/19/2008
22511 7590 09/21/2016
OSHA LIANG LLP,
TWO HOUSTON CENTER
909 FANNIN, SUITE 3500
HOUSTON, TX 77010
FIRST NAMED INVENTOR
Mitsuho Shibata
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
172911013001 7070
EXAMINER
LEBLANC, KATHERINE DEGUIRE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/21/2016 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):
docketing@oshaliang.com
hathaway@oshaliang.com
escobedo@oshaliang.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MITSUHO SHIBATA
Appeal2015-004144
Application 12/158, 180
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 4 through 11, and 13 through 19. We have jurisdiction under 35
U.S.C. § 6(b).
STATEMENT OF THE CASE
Appellant's invention is generally directed to a solid milk and a
method of making a solid milk. App. Br. 8.
Claims 1 and 10 illustrate the subject matter on appeal and
arereproduced below:
1. A solid milk having a porosity of 30%---60%, wherein the
solid milk is prepared by compressing powdered milk and
Appeal2015-004144
Application 12/158,180
comprises 0.5 wt% to 4 wt% of free fat and the solid milk
comprises 5 wt %--45 wt% of fat.
10. A method of making solid milk comprising:
a compression step for compressing powdered milk to
obtain a solid form of compressed powdered milk;
a humidifying step for humidifying the compressed
powdered milk obtained by the compression step,
wherein an amount of moisture added to a compact
body of the powdered milk in the humidifying step
is 0.5%----3%; and
a drying step for drying the compressed powdered milk
humidified by the humidifying step;
a compression force in the compression step comprising
50 KPa----30 MPa,
wherein the powdered milk comprises 5 wt %--45 wt%
fat.
App. Br. 18----19, Claims Appendix.
Appellant (see generally App. Br.) requests review of the Examiner's
rejection of claims 1, 4--11, and 13----19 in the Final Office Action entered
January 30, 2014 ("Final Act."), under 35 U.S.C. § 103(a) as unpatentable
over Schroeder et al. (EP 1048216 Al, published November 2, 2000,
hereinafter "Schroeder") in view of Bodenstab (US 2003/0113425 Al,
published June 19, 2003).
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection under 35 U.S.C. § 103(a)
of claims 1 and 4--9, but REVERSE the Examiner's rejection under 35
U.S.C. § 103(a) of claims 10, 11, and 13----19.
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F"'f-i • -. -, .I fl 1
ctazms 1 ana 4-'f
The Examiner finds that Schroeder discloses a solid milk composition
comprising densified milk particles that has a porosity of 35% to 65% and a
fat content of up to 50%. Final Act. 2. The Examiner finds that Schroeder
teaches that a minimal amount of free fat in the solid milk composition is
desired, but the Examiner acknowledges that Schroeder does not explicitly
disclose the amount of free fat in the solid milk composition. Final Act. 3;
Ans. 10. Consequently, the Examiner relies on Bodenstab to address this
feature missing from Schroeder. Final Act. 3. Bodenstab discloses a
method of producing a milk power that involves spray drying a milk
concentrate having a high solids content. Bodenstab i-fi-1 9, 23. The
Examiner finds that Bodenstab discloses producing a milk powder via this
method that has an average free fat content of 1.6%. Final Act. 3. The
Examiner concludes in essence that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use milk powder
prepared according to Bodenstab's method to make Schroeder's solid milk
composition because Bodenstab discloses that the milk powder has only a
small amount of free fat, and Schroeder teaches that a minimal amount of
free fat is desired. Final Act. 3; Ans. 10---11.
Appellant argues that Bodenstab discloses a method for preparing
milk powders, rather than a method for making solid milk products as
disclosed in Schroeder. App. Br. 13. Appellant contends that Bodenstab
does not teach that including a particular amount of free fat would be
1 Appellant argues claims 1 and 4--9 together. See generally Appeal Brief.
Therefore, we select claim 1 as representative, and claims 4--9 will stand or
fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv) (2015).
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Application 12/158,180
desirable when making solid milk as disclosed in Schroeder, and one skilled
in the art therefore would not have been motivated to combine the teachings
of Bodenstab and Schroeder. Id.
However, we agree with the Examiner that one of ordinary skill in the
art reasonably would have been led to combine the teachings of Bodenstab
and Schroeder, for at least the following reasons.
Schroeder discloses a milk product (solid milk product) produced by
densifying or compressing milk particles (milk powder). Schroeder i-fi-f l, 6.
Schroeder discloses that partially skimmed milk can be used to manufacture
the milk particles used to prepare the solid milk product in a process that
involves spray drying. Schroeder i-fi-f l 0, 11. Schroeder discloses that a
problem with prior art milk tablets made from compressed milk powder
arises when the tablets are reconstituted in a liquid because fat from the
tablets floats to the surface of the liquid. Schroeder i-fi-1 2, 3. Schroder
discloses that the tablets of his invention solve this problem because the
tablets do not produce floating fat when they are reconstituted in liquid.
Schroeder i14. According to Appellant's Specification, the presence of fat
that floats on the surface of liquid used to reconstitute solid milk (termed
"oil off') is caused by free fat present in the solid milk. Spec. i-f 3. Thus, we
agree with the Examiner that Schroeder teaches that minimizing free fat in
solid milk tablets is desirable to address the oil off problem. Ans. 10.
Bodenstab discloses a method of producing milk powder from
partially skimmed milk that utilizes spray drying, and discloses that the milk
powder produced by the method has very little free fat-an average of 1.6%.
Bodenstab i-fi-12, 15, 16, 49, Table 3. One of ordinary skill in the art
reasonably would have been led to use Bodenstab's milk powder having a
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Application 12/158,180
low level of free fat prepared from partially skimmed milk by spray drying
as a starting material for making Schroeder's solid milk product in view of
Schroeder's disclosure of the desirability of minimizing free fat in the
product, and Schroeder's teaching that the milk particles used to prepare the
product can be manufactured from skim milk in a process involving spray
drying. Appellant's arguments that one of ordinary skill in the art would not
have been motivated to combine the teachings of Bodenstab and Schroeder
are therefore unpersuasive of reversible error.
Appellant also argues that the instant Specification demonstrates that
the free fat content of milk powders is very different from the free fat
content of solid milk. App. Br. 13. Appellant contends that although
Bordenstab discloses powdered milk having 1.6% by weight free fat, solid
milk obtained using the powder may not have a free fat content of 1.6%. Id.
However, as Appellant points out (App. Br. 13), the instant
Specification teaches that the free fat content of solid milk is determined by
the compression force used to form the solid milk. Spec. Table 1, i-fi-186-87;
Table 7, i-fi-f 109-110. Appellant's Specification also teaches that the
porosity of solid milk "is mainly controlled by the compression force in the
compression process." Spec. i-f 33. Schroeder discloses that the porosity of
the milk product containing densified milk particles (solid milk) is 35% to
65%, while claim 1 recites a porosity of 30% to 60%. Schroeder i15.
Accordingly, the porosity of Schroeder's solid milk overlaps significantly
with the porosity of the claimed solid milk, which according to Appellant's
Specification, means that substantially similar compression forces were used
to prepare both solid milk compositions. Spec. i133. Appellant's
Specification further indicates that because substantially similar compression
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forces were used to prepare the claimed solid milk and Schroeder's solid
milk, both compositions would reasonably have substantially similar levels
of free fat, since the compression force determines the free fat level. Spec.
Table 1, i-fi-186-87; Table 7, i-fi-f 109-110. Therefore, because Bodenstab
discloses milk powder prepared from a type of milk (partially skimmed
milk) that Schroeder discloses as a suitable starting material for preparing
milk particles that can be used in Schroeder's method for producing a solid
milk product that does not have the problem of floating free fat upon
reconstitution, a solid milk product prepared according to Schroeder's
method from Bodenstab' s milk powder reasonably would have contained a
free fat level as recited in claim 1. Appellant's arguments are therefore
unpersuasive of reversible error.
Appellant further argues that "Schroeder teaches that free fat should
be eliminated or minimized," which is contrary to the present invention that
maintains a certain level of free fat (0.5%--4%) in the solid milk to function
as a lubricant. App. Br. 11-12.
However, Appellant's argument is unpersuasive of reversible error
because it is improperly based only on Schroeder and does not take into
account what the combined disclosures of Schroeder and Bodenstab
reasonably would have suggested to one of ordinary skill in the art. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references."); In re
Keller, 642 F.2d 413, 425 (CCPA 1981) (The test for obviousness "is what
the combined teachings of the references would have suggested to those of
ordinary skill in the art.") As discussed above, one of ordinary skill in the
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art reasonably would have been led to use Bodenstab's milk powder having
a low level of free fat as a starting material for making Schroeder's solid
milk product in view of Schroeder's disclosure of the desirability of
minimizing free fat in the product. As also discussed above, a solid milk
product prepared according to Schroeder's method from Bordenstab' s milk
powder reasonably would have contained a free fat level as recited in claim
1, according to the disclosures of Appellant's Specification. Moreover,
minimizing the presence of free fat, as taught by Schroeder, would have
suggested using zero to the miniscule amounts of free fat recited in claim 1.
Appellant in further support of the arguments relies on the Declaration
of Mitsuho Shibata submitted to the Patent Office on July 22, 2011 ("the
Shibata Declaration") to demonstrate that dry milk products prepared
according to Example 2 of Schroeder did not dissolve in dissolution tests,
whereas samples prepared according to "methods of the present invention"
show "good breaking strength and good solubilities." App. Br. 13-14. We
agree with the Examiner that the experiments set forth in the Declaration
have limited probative value because they do not represent an actual
reproduction of Example 2 of Schroeder. Ans. 13-14. As the Examiner
points out, the size of the openings in the sieve used in Test Example 1 in the
Declaration differed from the size of the openings in the sieve used in
Schroeder's Example 2. Ans. 13-14; Shibata Declaration 2. In addition, as
the Examiner also points out, tablets weighing about 5 g were produced in
Test Example 1 in the Declaration, while the tablets produced in Schroeder's
Example 2 were significantly smaller, weighing 1.5 g. Ans. 14; Shibata
Declaration 2. Accordingly, the experiments set forth in the Declaration do
not provide a comparison to the closest prior art, and thus lack persuasive
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merit. Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (The Board has
discretion to give more weight to one item of evidence over another "unless
no reasonable trier of fact could have done so"); In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.").
Therefore, Appellant's arguments are unpersuasive of reversible error
in the Examiner's rejection of claims 1 and 4--9 under 35 U.S.C. § 103(a),
and we accordingly sustain this rejection.
Claims 10, 11, and 13-192
The Examiner finds that Schroeder discloses a method of making a
solid milk product that includes wetting and agglomerating milk-based
particles with a fluid to obtain a moisture content of 4% to 15 %, sieving the
wetted particles, densifying or compressing the sieved particles, and drying
the resultant product to reach a moisture level of about 3%. Final Act. 5.
The Examiner determines that although the order of the densifying and
wetting steps of Schroeder's methods is reversed relative to the order of the
humidifying and compressing steps recited in claim 10, any order of
performing process steps is prima facie obvious in the absence of new or
unexpected results. Final Act. 6.
However, one of ordinary skill in the art reasonably would have
understood that because Schroeder's process involves adding moisture to the
2 For the purposes of this appeal, as to the claimed method, we select claim
10 as representative, which is the broadest of claims 10, 11, and 13-19, and
decide the propriety of the rejection of these claims under 35 U.S.C.
§ 103(a) based on claim 10 alone.
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milk-based particles before the particles are densified, that wetting the
particles aids in their densification, and may even be necessary for proper
densification. We find no disclosure in Schroeder suggesting that additional
moisture should be added to the particles after the densifying step.
Accordingly, on this record, the Examiner does not establish that one of
ordinary skill in the art reasonably would have been led to modify
Schroeder's process so that the milk-based particles are densified before
they are wetted.
Contrary to the Examiner's assertion, any order of performing claimed
process steps is not per se prima facie obvious in the absence of new or
unexpected results. In re Ochiai, 71 F.3d 1565, 1570 (Fed. Cir. 1995)
(explaining that no per se rule of obviousness exists). Rather, only when the
Examiner evinces that one of ordinary skill in the art would have reasonably
expected from the process steps described in the applied prior art that
changing the order of the steps would produce the same results or
substantially the same results, the Examiner can demonstrate that a particular
claimed order of such process steps would be prima facie obvious. In re
Burhans, 154 F.2d 690 (CCPA 1946) andin re Gibson, 39 F.2d 975 (CCPA
1930).
Accordingly, on this record, we concur with Appellant that the
Examiner's evidence and explanation are not sufficient to establish a prima
facie case of obviousness of the subject matter recited in claims 10, 11, and
13-19 within the meaning of 35 U.S.C. § 103(a). We therefore do not
sustain the rejection of these claims.
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DECISION
For the reasons set forth above and in the Answer, the decision of the
Examiner to reject claims 1 and 4--9 is affirmed, but the decision of the
Examiner to reject claims 10, 11, and 13-19 is reversed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
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