Ex Parte Thorson et al

Patent Trial and Appeal Board

Sep 19, 2016

13087655 (P.T.A.B. Sep. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/087,655 04/15/2011
30173 7590 09/21/2016
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
James S. Thorson
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.
7318US01 6705
EXAMINER
STIJLII, VERA
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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES S. THORSON and ERIKA B. SMITH
Appeal2015-003733
Application 13/087,655
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and
JEFFREY R. SNAY, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's rejection of claims 1-10 and 21-26. 1 We have jurisdiction
pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a process for making an
aerated cheese via aeration and cooling steps wherein the cheese product
includes non-pregelatinized starch and non-casein protein as ingredients and
wherein the product cheese is characterized by void spaces or bubbles
having a mean size ranging from 1 through 300 microns. While the scope of
1 Appellants identify the real party in interest as being General Mills, Inc. of
Minneapolis, Minnesota (App. Br. 3).
Appeal2015-003733
Application 13/087,655
the appealed claims is limited to particular mean hole/bubble size ranges for
the aerated cheese as set forth above and in the claims, Appellants disclose
that aerated cheese having a wider range of mean gas bubble or mean void
sizes can be made and remain within the scope of the disclosed invention
(Spec. i-f 37). Appellants' disclosure does not indicate that they attach any
particular significance to the particularly claimed ranges of mean
void/bubble size for the cheese (id.). However, Appellants show that
aeration can have an effect on the visual appearance of cheese by a
comparison of aerated cheese with cheese that is not aerated in the drawings
(Fig. 3; Spec. ,-r 40).
In addition, Appellants disclose certain preferences in terms of a
general maximum for a ratio of shredded cheese void/bubble size to the
shredded cheese minimum cross-sectional dimension (Spec. i-f 42).
Claim 1 is illustrative and reproduced below:
Claim 1 : A process for making an aerated cheese,
comprising the steps of:
aerating a molten cheese mixture with a gas in an
aeration device to form an aerated molten cheese mixture, the
molten cheese mixture comprising a non-casein protein and a
non-pregelatinized, modified starch; and
cooling the aerated molten cheese mixture to solidify the
mixture and form aerated cheese with bubbles or void spaces
having a mean size ranging from 1 micron to 300 microns.
The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Bernard et al.
Huang et al.
us 4,948,613
US 2005/0106303 Al
2
Aug. 14, 1990
("Bernard")
May 19, 2005
("Huang")
Appeal2015-003733
Application 13/087,655
The Examiner maintains the following grounds of rejection:
Claims 1-10 and 21-26 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bernard in view of Huang,
After a review of the opposing positions articulated by Appellants and
the Examiner and the evidence adduced by the Examiner, we determine that
the Appellants' arguments are insufficient to identify reversible error in the
Examiner's obviousness rejection. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011).
Accordingly, we affirm the stated rejection for substantially the fact
findings and the reasons set forth by the Examiner in the Examiner's Answer
and in the Non-Final Office Action.2 We offer the following for emphasis.
Appellants argue the rejected claims 1, 3-10, and 21-24 together as a
group and present additional argument with respect to dependent claims 2,
25, and 26. Accordingly, we select claim 1 as the representative claim on
which we shall primarily focus in deciding this appeal as to grouped together
claims 1, 3-10, and21-24.
We consider claims 2, 25, and 26 separately to the extent separate
substantive argument has been presented for the separate patentability of the
latter dependent claims.
Concerning representative claim 1, the Examiner has determined that
Bernard teaches or suggests a method of making an aerated cheese that
includes steps of aerating a processed cheese (molten cheese mixture) with
an inert gas in an industrial appliance (aeration device) and subjecting the
product cheese mixture to cooling so as to solidify the mixture (Ans. 2;
2 Non-Final Office Action of July 17, 2014.
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Application 13/087,655
Bernard; abstract, col. 2, 1. 50--- col. 3, 1. 17, col. 4, 11. 26-33). The Examiner
has determined that Bernard teaches or suggests the use of non-casein
protein such as whey and plant origin proteins in the cheese product (Ans. 2,
8; Bernard, abstract, col. 1, 11. 31-38, col. 2, 1. 63---col. 3, 1. 5).
Moreover, the Examiner has determined that Bernard teaches or
suggests that the aeration reduces the density of the cheese product and
produces holes/voids in the product, which holes can be formed of a desired
size by one of ordinary skill in the art employing the method of Bernard
(Non-Final Act. 6). In essence, the Examiner urges that the method taught
by Bernard would have suggested to one of ordinary skill in the art forming
holes in the aerated cheese that are of a suitable size, including holes having
a mean void size that would have been encompassed by the claimed range
(Ans. 2-3, 5---6, 8).
In addition, and as for the non-pregelatinized starch ingredient used in
making the cheese as required by claim 1, the Examiner has found that
Huang teaches that economic advantages would have been associated with
the use of a non-pregelatinized modified starch and a non-casein protein in a
processed cheese product (Ans. 4). Based thereon, the Examiner has
determined that it would have been obvious to one of ordinary skill in the art
to make the processed cheese product of Bernard using non-pregelatinized
starch as an option, as required by representative claim 1 as an ingredient, in
light of the combined teachings of Bernard and Huang (Ans. 4--5).
Appellants argue that Bernard teaches "forming holes of at least 500
microns to make the holes visible to the naked eye" and "[i]n this way,
Bernard leads away from a cheese having bubbles or void spaces having a
mean size ranging from about 1 micron to about 300 microns, as recited in
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Application 13/087,655
Appellant's independent claim 1" (App. Br. 8; Reply Br. 2--4 ). In addition,
Appellants argue that one of ordinary skill in the art would not have been led
"to modify the cheese composition of Bernard in view of Huang in the
manner advocated by the Examiner" because Bernard is directed to
processing of a pressed cheese comprising "high levels of natural cheese,"
which would have led "a person of ordinary skill in the art away from using
non-pressed cheeses, such as one that includes a non-casein protein and a
non-pregelatinized, modified starch, as per claim 1" (App. Br. 9).
Appellants' argument concerning the non-obviousness of the mean
size of void spaces or bubbles in the cheese are not persuasive of harmful
error in the Examiner's obviousness rejection. In particular, Appellants have
not established that Bernard's teaching with respect to forming holes that are
visible to the naked eye in the cheese, including forming holes "'usually
being at least 0.5 mm [500 microns]"' teaches away from and/or would not
have led one of ordinary skill in the art to form cheese with holes having a
mean size falling within the mean size range set forth in representative claim
1 (App. Br. 5-8; Reply Br. 2--4; Bernard, col. 2, 11. 45--49). Appellants have
not established that forming cheese characterized by holes that are visible to
the naked eye using a method as suggested by Bernard would have taught
one of ordinary skill in the art to form the cheese such that the mean size of
the holes produced must be greater than 300 microns, much less that forming
a cheese with a mean hole size of 300 mm or less precludes the cheese from
being formed with visible hole sizes and/or with at least some holes that
have a size exceeding 500 microns. Significantly, Appellants describe the
holes formed in their aerated cheese as being visible (Spec. i-f 40).
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Appeal2015-003733
Application 13/087,655
Consequently, Appellants have not established that (1) Bernard's
description of a usual (visual) hole size for a traditional cheese would have
directed one of ordinary skill in the art away from producing cheese having a
range of hole sizes, including cheese having a mean size within the claimed
range, which cheese would have been expected to include holes of a size
visible to the naked eye and (2) Bernard's teachings with respect to the
formation of aerated cheese having holes that are visible would not have
taught or suggested forming cheese having a mean hole size within the
claimed mean hole size range; that is, Bernard would only have suggested
making an aerated cheese with holes having a different mean size than as set
forth in claim 1.
Appellants' argument concerning the Examiner's proposed
modification of Bernard's cheese so as to include at least some non-
pregelatinized, modified starch in light of the combined teachings of Bernard
and Huang lacks persuasive merit for reasons advanced by the Examiner
(Ans. 4, 5, 8, 9). In particular, the teachings of Bernard are not limited to its
working examples and Bernard does not teach that its processed cheese must
be all natural and cannot include other ingredients, such as non-
pregelatinized starch as taught by Huang (Bernard, col. 1, 11. 31-38, col. 2, 1.
63---col. 3, 1. 5; Huang i-f 34).
Accordingly, we shall sustain the Examiner's obviousness rejection of
representative claim 1.
As for dependent claims 2, 25, and 26, the additional arguments
presented by Appellants lack substantive merit (App. Br. 10-14).
Concerning claim 2, we concur with the Examiner that shredding the cheese
of Bernard would have been an obvious processing step to one of ordinary
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Application 13/087,655
skill in the art, particularly given that Bernard teaches that the cheese may be
sliced and that the form of the cheese product is not limited (Ans. 9;
Bernard, col. 4, 11. 17-25).
With regard to dependent claim 25, Appellants have not established
that the narrower range of mean sizes set forth in claim 25 merits separate
patentable consideration. In this regard, Appellants compare a usual
traditional cheese hole size that is visible and suggested by Bernard to a
mean size range as set forth in claim 25 (App. Br. 12-13). However,
Appellants are comparing dissimilar measures and the range of mean sizes
of claim 25 has not been shown to limit the largest hole sizes permissible in
the cheese being made according to claim 25 to a particular value. In other
words, the making of cheese having some visible holes of a traditional and
usual minimum size as taught or suggested by Bernard has not been
established by Appellants as requiring a different mean void space/bubble
size than that required by Appellants' claim 25. Thus, Appellants' argument
fails to establish that the applied prior art would not have suggested a mean
size within the claimed range.
As for dependent claim 26, Appellants have not established that
shredding the cheese of Bernard to have dimensions within the shredded
cheese size ranges set forth in the latter claim would not have been obvious
as a matter of choice for a shredded cheese size that one of ordinary skill in
the art would have been readily arrived at in preparing a consumable cheese
product that is consonant with the teachings of the applied prior art as
determined by the Examiner (Ans. 5, 9). In particular, Appellants'
contention to the effect that Bernard's desire for cheese having holes of a
visible size would have militated against one of ordinary skill in the art
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Application 13/087,655
being led to prepare cheese shreds having the recited dimensions lacks merit
(App. Br. 14). Appellants have not established that holes of a visible size
could not be retained in shredded cheese having dimensions within the scope
of dependent claim 26.
Consequently, Appellants' argument lacks persuasive merit in
indicating reversible error in the Examiner's obviousness holding as to any
of the rejected claims.
It follows that we shall sustain the stated obviousness rejection.
CONCLUSION
The Examiner's decision to reject the appealed claims 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).
AFFIRMED
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