Ex Parte Triantafyllou Oste et al

Board of Patent Appeals and Interferences

Aug 30, 2012

10416231 (B.P.A.I. Aug. 30, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/416,231 10/08/2003 Angeliki Triantafyllou Oste C2432.0050 2034
32172 7590 08/31/2012
DICKSTEIN SHAPIRO LLP
1633 Broadway
NEW YORK, NY 10019
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
08/31/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ANGELIKI TRIANTAFYLLOU OSTE,
CARINA ANDERSSON,
RICKARD OSTE, and SOFIA EHLDE
__________

Appeal 2011-002901
Application 10/416,231
Technology Center 1700
____________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

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Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
23-30, 35-43, and 46-51. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appellants’ invention is directed to a method of producing “ready-to-
use refrigerable liquid batter for preparing pancakes, waffles, brownies,
muffins, cakes and the like, the batter having a shelf life adequate for
commercial distribution and storage” (Spec. 1: 6-10).
Claim 23 is illustrative:
23. A process of producing a ready-to-use refrigerable
liquid batter for preparing pancakes, waffles, brownies,
muffins, and cakes, comprising the following steps:
(a) providing, in a battering vessel, conventional batter
ingredients comprising
(1) cow milk or a cow milk substitute in an amount
of from 40% by weight to 70% by weight of said ingredients,
and having a total solids content of about 10%,
(2) optionally, homogenised whole eggs in an
amount of from 10% by weight to 30% by weight of said
ingredients,
(3) a starch component having a gelatinisation
temperature of more than 72°C in an amount of 10-30% by
weight of said ingredients,
(4) a food grade organic acid or a mixture of food
grade organic acids in an amount which is sufficient to adjust
the pH of the batter to the range from 5.5 to 6.5;
(5) potassium sorbate in an amount of 0% by
weight to 0.25% by weight of said ingredients;
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(b) battering the mixture of components (1)- (5) in the
vessel for a time period sufficient to form a pourable
homogeneous liquid batter having a bacterial count and a water
activity greater than 0.90;
(c) heating the batter to a temperature of from 60°C to
72°C for a time sufficient to reduce the bacterial count of the
pourable batter to 1000 cfu/ml or less for 12 weeks of storage at
about 0 to 8°C;
(d) cooling the batter to a temperature of 8°C or lower
but not low enough to make the water in the batter freeze; and
(e) packaging aseptically portions of the batter for
distribution and for storage at a batter temperature of 8°C or
lower but not low enough to make the water in the batter freeze.
Appellants appeal the following rejections:
1. Claims 23, 26-30, 35, 36, 39-43, 46-48, 50, and 51 are rejected under
35 U.S.C. § 103(a) as being unpatentable over Oetker
(GB 2 195 225 A published Apr. 7, 1988) in view of Keller
(US 2,870,026 issued Jan. 20, 1959).
2. Claims 24, 25, 37, 38, and 49 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Oetker in view of Keller and Potter (NORMAN
N. POTTER & JOSEPH H. HOTCHKISS, FOOD SCIENCE 138, 157, 158
(Chapman & Hall 1995)).

Appellants’ arguments focus on independent claim 23 only.

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ISSUE
Did the Examiner reversibly err concluding that Oetker in view of
Keller would have suggested the method of making a refrigerable, pourable
batter as recited in claim 23? We decide this issue in the negative.

FINDINGS OF FACT AND ANALYSES
Appellants’ primary argument is that Oetker fails to teach a method of
making pourable batter that uses the same or substantially the same
ingredients and steps as recited in Appellants’ claim 23 (App. Br. 7-8).
Appellants contend that Oetker’s “liquid dough” composition is not
substantially the same as the claimed composition formed by the claimed
method (id. at 7). Appellants argue that Oetker teaches forming a “dough”
(i.e., a mixture which is stiff enough to knead and roll) not a batter (id.).
Appellants contend that Oetker’s disclosure of a “liquid dough” is merely an
indication that the dough has a high liquid content, not that the dough is
pourable. Id. Appellants contend that the declaration of Angeliki Oste
(hereinafter the “Oste Declaration”) establishes that Oetker’s compositions
are not pourable (id. at 8).
The Examiner finds that Oetker teaches a “liquid dough” which is
used for preparing pancakes, doughnuts, waffles, and biscuits, which are
similar to brownies, muffins and cakes (Ans. 3). The Examiner finds that
Oetker teaches a “liquid dough” composition that contains the same
ingredients in amounts that overlap the ranges of Appellants’ claimed
ingredients (id. at 3-10; 14-18). The Examiner finds that Oetker’s additional
ingredients (e.g., margarine, proteins, and other ingredients including
emulsifiers, salt, sugar and thickeners) are present in minor amounts and are
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known to be used in food compositions such that their presence is not a
patentable distinction (id. at 6-7). The Examiner finds that the Oste
Declaration shows that Oetker’s pasteurized final product may be pourable
and determining the proper pasteurization duration and temperature would
have been a routine determination within the skill of one of ordinary skill in
the art (id. at 12). The Examiner relies on Keller to teach a known
pasteurization time and reasons that it would have been obvious to use
Keller’s pasteurization time in Oetker’s pasteurization process because both
teach similar pasteurization processes that produce a shelf-stable food
composition (Ans. 8).
We determine that the preponderance of the evidence favors the
Examiner. While Appellants provide evidence via the Oste Declaration that
when a pasteurization temperature of 67°C was applied to a composition
made within Oetker’s disclosed composition ranges a non-pourable dough
resulted, the Examiner is correct that the Oste Declaration also shows that
when Oetker’s composition was pasteurized at 55°C, a pourable mixture
resulted1. In other words, we agree with the Examiner that Oetker’s “liquid
dough” refers to a pourable composition. Oetker’s disclosure supports this
determination. Oetker discloses that the usual pasteurization process cannot
be employed for liquid doughs because the starches gelatinize which
produces a strong rise in viscosity of the liquid dough which makes
manipulation difficult (Oetker 1:25-30). Oetker teaches that the

1 Though Appellants state that the Oste Declaration’s Exhibit A shows their
composition, not Oetker’s composition (Reply Br. 3), this statement is
contradicted by the Oste Declaration that states that Exhibit A shows a
dough prepared according Oetker’s composition and method (Oste
Declaration, para. 2).
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pasteurization is performed at a temperature below the gelatinization
temperature of the starch (id. at 1:35-38). Oetker’s composition may include
wheat flour, rye flour, maize flour, buckwheat flour, or potato flour either
individually or in combination (id. at 1:61-64).
Appellants disclose that suitable starches having a gelatinization
temperature greater than 72°C include, for example, rice starch and rice
flour (Spec. 9:9-13; Spec. 10-11, Example 1). Accordingly, Oetker discloses
that the composition may contain rice starch, the same as disclosed by
Appellants, as the only starch in the composition.
Based on all these teachings, we agree with the Examiner that
Appellants’ evidence contained in the Oste Declaration does not establish
that Oetker fails to teach a pourable composition. Oetker teaches
pasteurizing the composition at a temperature below the gelatinization
temperature of the starch. Therefore, one of ordinary skill in the art would
have been instructed to determine the suitable pasteurization temperature
based on gelatinization temperature of the starch used in the composition.
Appellants’ evidence contained in Exhibits A and B of the Oste Declaration
show that pasteurization was performed at different temperatures with a
resulting change in the consistency of the dough, but there is no indication
that the pasteurization temperature was determined and set based on the
gelatinization temperature of the starch (i.e, wheat flour and maize starch in
the Oste Declaration examples) as taught by Oetker. Appellants’ evidence
that Oetker’s pasteurized “liquid dough” is not pourable is not persuasive.
Appellants argue that the Oetker composition differs from the claimed
invention with respect to the milk component having a solid content of about
10%, an egg content of either zero or 10-30%, forming a homogeneous
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liquid, 13-60% of a starch component having a gelation temperature of more
than 72°C, and a water activity of greater than 0.90 or 0.95 (App. Br. 8).
These arguments fail to specifically address the Examiner’s findings
regarding how the similarity of Oetker’s composition and method would
have suggested the argued features (Ans. 6-9). While Appellants provide the
declaration of Ingegerd Sjöholm (hereinafter the Sjöholm Declaration) as
evidence that Oetker does not teach the water activity or starch component,
the Sjöholm Declaration’s mere statement that nothing in Oetker was found
to teach the water activity or starch component amount does not address the
Examiner’s findings regarding how Oetker would have rendered obvious the
disputed features.
Oetker teaches that the composition has a “high liquid content” and
that the liquid content of the composition can be 60 to 80%, which overlaps
with the liquid (i.e., milk) portion of Appellants’ composition (Oetker 1: 35,
59-60; Claim Appendix claim 23). Thus, the preponderance of the evidence
supports the Examiner’s finding that the water activity of Oetker’s
composition would have been greater than 0.90 based on the similarities of
Oetker’s and Appellants’ compositions.
While Appellants allege that Oetker’s composition does not have the
claimed water activity (i.e., 0.90 or 0.95), Appellants have not satisfied their
burden of showing that the composition does not have a water activity
within the claimed range. The Examiner reasonably finds that the
composition of Oetker is the same or substantially similar to the composition
claimed by Appellants in the method. For the reasons discussed above, we
determine that the Examiner’s finding that Oetker’s and Appellants’
compositions are similar is reasonable. Accordingly, the burden shifts to
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Appellants to show that Oetker’s composition does not have the various
claimed properties, including water activity2. In re Best, 562 F.2d 1252,
1255 (CCPA 1977).
Appellants further argue that there is no reason to combine Keller’s
heating time with Oetker’s pasteurization process because Keller only
teaches achieving four weeks shelf stability whereas Oetker teaches
achieving 6 weeks shelf stability (App. Br. 14-15). However, Keller merely
exemplifies achieving four weeks of shelf stability, but does not indicate that
such is the maximum stability achievable (Keller; “Comparison of Cakes”
Table). Accordingly, we do not agree with Appellants that there is no reason
to combine Keller’s heating time with Oetker’s pasteurization process
simply because Keller only exemplifies four weeks of shelf stability.
Appellants argue that the Examiner’s comparison of Oetker’s
viscosity measurements and Appellants’ viscosity measurements to show
that Oetker’s liquid dough is pourable is a meaningless comparison because
Oetker does not disclose the parameters used to arrive at the viscosity
measurements (App. Br. 9-10). Appellants contend that there is nothing in
Oetker that teaches that the dough is pourable before and after pasteurization
and during refrigerated storage as required by claim 23 (id. at 10).
Appellants contend that achieving an increased storage stability of a
pourable batter, as in the current invention, is clearly unpredictable (id.).

2 Appellants further argue that Keller’s composition has a water activity as
shown by the Galmarini reference to be below 0.90 (App. Br. 15). However,
the Examiner relies on Keller only to teach the time for pasteurization, not
Keller’s composition (Ans. 9). Therefore, the proper issue to be addressed is
whether Oetker’s, not Keller’s, composition has or would have suggested the
claimed water activity greater than 0.90.
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Appellants’ arguments regarding viscosity and pourability of Oetker’s
composition are contradicted by Exhibit A of the Oste Declaration, which
shows that a pourable composition can be achieved post pasteurization of
Oetker’s composition. While Exhibit B of the Oste Declaration shows that a
thicker, lumpy composition results from pasteurizing at 67°C, it is unclear if
the pasteurization temperature employed by Appellants on the composition
comported with Oetker’s teaching to pasteurize at a temperature below the
gelatinization temperature of the starch used in the composition. Plainly,
Oetker seeks to avoid gelatinizing the starch by pasteurizing at a temperature
below the gelatinization temperature starch. The preponderance of the
evidence favors the Examiner’s finding that Oetker teaches a pourable,
“liquid dough”.
Appellants contend that further proof that Oetker’s composition
differs from the claimed invention is based on Oetker’s disclosure that six
week shelf stability is achieved while twelve weeks of shelf stability is
achieved via Appellants’ method and composition (App. Br. 11; Sjöholm
Dec. para. 6). Appellants contend that the double increase in shelf stability
is both surprising and unexpected for a composition having a water activity
greater than 0.90 or 0.95 (App. Br. 14, Sjöholm Dec. para. 7). Regarding the
water activity, Appellants further contend that one of ordinary skill in the art
would have known that when the water activity is greater than 0.90,
microbial growth would have been accelerated, such that using Appellants’
ability to achieve good shelf stability is surprising and unexpected (App. Br.
11-12; Sjöholm Dec. para. 7).
Shelf stability is a function of the pasteurization process as taught by
Oetker (Oetker 1:45-49). Therefore, the difference in shelf stability between
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Oetker and Appellants’ claimed method does not necessarily establish a
difference in composition. Rather, Oetker discloses pasteurizing for a “short
time” as opposed to Appellants’ claimed “time sufficient” to reduce the
bacterial count to 1000 cfu/ml or less for 12 weeks (id. at 1:130 to 2:1).
Appellants disclose that a suitable time period is 2 to 10 minutes for
pasteurization (Spec. 6:9-11). Therefore, it reasonably appears that the
difference in shelf stability is related to the pasteurization time, rather than
the composition. The longer a composition is pasteurized the fewer bacteria
would survive and thus fewer bacteria would be available to colonize and
grow to contaminate the food product thereby increasing the shelf life of the
product.
The Sjöholm Declaration’s contention that Appellants’ ability to
achieve a refrigerable liquid, pourable, and stable batter having water
activity greater than 0.90 or 0.95 is surprising and unexpected is not
persuasive. This argument is based on the general knowledge in the art that
water activity greater than 0.90 fosters microbial growth. However, this
knowledge as evinced by the citation to US Patent 4,353,932 in paragraph 4
of the Sjöholm Declaration is based on the premise that limiting the water in
the batter prevents microbial growth and lengthens shelf life of the batter.
Missing from the prior art teachings relied on by Appellants is a teaching
that pasteurization may also be used to lengthen shelf life. In other words,
Oetker teaches using pasteurization to lengthen shelf life of a refrigerable
liquid dough having a high liquid content instead of reducing water content.
Therefore, we fail to see how the Sjöholm Declaration’s mere statement of
unexpected results establishes such results are unexpected in light of
Oetker’s teachings.
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Appellants’ evidence in the Briefs and the Sjöholm Declaration that a
doubling in the shelf life of a pourable liquid batter having the claimed
characteristics does not establish that the result is unexpected. Rather,
Appellants’ evidence shows the expected result of longer pasteurization; less
bacteria and longer shelf stability.
On this record and for the foregoing reasons, we find that the
preponderance of the evidence favors the Examiner’s conclusion of
obviousness with regard to the rejection over Oetker in view of Keller.
Appellants rely on arguments made regarding the rejection over Oetker in
view of Keller to address the rejection over Oetker in view of Keller and
Potter. Therefore, for the same reasons, we affirm the Examiner’s rejection
over Oetker in view of Keller and Potter.

DECISION
The Examiner’s decision 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).

ORDER
AFFIRMED

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