Ex Parte Zeller

Board of Patent Appeals and Interferences

Jul 28, 2010

10919472 (B.P.A.I. Jul. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARY LYN ZELLER
____________

Appeal 2009-004514
Application 10/919,472
Technology Center 1700
____________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
PETER F. KRATZ, Administrative Patent Judges.

KRATZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

Appeal 2009-004514
Application 10/919,472

2
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1-40. We have jurisdiction pursuant to
35 U.S.C. § 6.
Appellant’s claimed invention is directed to a carbohydrate-free
foaming composition, a food product including the foaming composition,
and a method of preparing the foaming composition. The foaming
composition comprises protein particles having a plurality of internal voids
containing entrapped pressurized gas. Many other ingredients are disclosed
as being includable in the compositions (Spec., paras. 0016, 0020, 0022,
0032, and 0033). Appellant observes that low carbohydrate diets can be
supported by their foaming composition.
Significantly, milk proteins are among Appellant’s non-exclusive list
of preferred proteins for formulating the carbohydrate-free powders (Spec.,
para. 0020). Appellant discloses that “[c]onventional gas-injected spray
drying of aqueous solutions is the preferred method to manufacture these
powdered soluble foaming compositions” albeit any effective method can be
employed (Spec., para. 0023).
To Appellant, ‘“essentially 100% protein’ . . . means that the
composition is essentially all protein with only traces of non-protein
constituents being less than 1% on a dry basis” (Spec., para 0030).
Carbohydrate-free, as employed by Appellant, likewise does not require the
absence of any carbohydrate in the foaming composition. As part of the
detailed description of preferred embodiments of their invention, Appellant
states “[t]he term ‘carbohydrate-free’ or ‘non-carbohydrate’ means to
convey intentional and deliberate avoidance of substances containing any
significant amount of carbohydrate, to the greatest practical extent, in the
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formulation of foaming compositions” (Spec., para. 0027). As a further part
of the description of the disclosed invention, Appellant discloses a preferred
embodiment wherein carbohydrate-free foaming compositions “are virtually
free or devoid of carbohydrate and contain substantially less than 1%, and
typically less than about 0.5%, carbohydrate.” Id.
Claim 1 is illustrative and reproduced below:
1. A foaming composition comprising:

a powdered carbohydrate-free soluble composition
comprising protein particles having a plurality of internal voids
containing entrapped pressurized gas.

The Examiner relies on the following prior art references as evidence
in rejecting the appealed claims:
Sutton 6,709,650 B1 Mar. 23, 2004
Holtus WO 2004/019699 A1 Mar. 11, 2004

Claims 1-8, 11-20, and 22-40 stand rejected under 35 U.S.C. § 102(a)
as being anticipated by Holtus. Claims 9, 10, 21, and 37 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Holtus in view of
Sutton.
We affirm the stated rejections for substantially the reasons set forth
by the Examiner in the Examiner’s Answer. We generally adopt the
Examiner’s factual findings and rebuttal of Appellant’s arguments as our
own. We add the following for emphasis.

Anticipation Rejection over Holtus
Claims 1-8, 11-20, and 22-40
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A principal issue before us flows from Appellant’s assertion that
Holtus is not anticipatory because Holtus is non-enabling for the claimed
subject matter because Holtus requires glycerol as an essential component
for producing a foaming composition whereas glycerol is a carbohydrate
excluded by the appealed claims (App. Br. 5-14). In considering this issue,
we select claim 1 as a representative rejected claim because the arguments
pertaining to this matter are presented as being applicable to all of the
anticipatorily rejected claims taken as a group. Id. However and as outlined
below, we have considered some of the anticipatorily rejected appealed
claims separately to the extent additional arguments directed to subgroups of
claims or individual claims are presented in the Appeal Brief (App. Br. 14-
16).
Concerning the glycerol requirement contention as to Holtus, this
argument is not persuasive because: (1) representative claim 1 does not
require exclusion of carbohydrate and/or glycerol from the foaming
composition and (2) Holtus does not require the presence of glycerol
(plasticizer) for making a foaming composition as plainly stated in the
applied reference, and as correctly pointed out by the Examiner (Ans. 3, 4,
and 8-11; Holtus, abst., pp. 1-5; claim 7).
In this regard, representative claim 1 employs the open transitional
term “comprising” followed by the requirement for “a powdered
carbohydrate-free soluble composition comprising protein particles having a
plurality of internal voids containing entrapped pressurized gas” as being
part of the claimed foaming composition. Thus, representative claim 1 is
open to the inclusion of carbohydrates as part of the claimed foaming
composition.
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While the claimed foaming composition includes a powdered
carbohydrate-free soluble composition containing more than one of the
aforementioned protein particles as a part thereof, Appellant does not mean
carbohydrate-free by “carbohydrate-free.” Rather, Appellant “means to
convey intentional and deliberate avoidance of substances containing any
significant amount of carbohydrate, to the greatest practical extent, in the
formulation of foaming compositions” by such language, as Appellant
discloses and as we noted above (Spec. para. 0027). 2 Thus, the argument
presented in the Reply Brief concerning the presence of 0.2 percent lactose
in some casein protein sources as supporting the argument that Holtus is
non-enabling is disingenuous as it flirts with the facts and the present claim
requirements (Reply Br. 4). Thus, this contention is dismissed as misleading
and without merit, on this record.
In addition, Appellant presents information in their Evidence
Appendix showing that glycerol content is counted as carbohydrate, rather
than a fat or protein, in food labeling information. However, the information
submitted does not change the fact that glycerol (C3H5(OH)3) does not have
a carbohydrate formula that includes twice the number of hydrogen atoms as
oxygen atoms as in water; such as provided for in the general carbohydrate
formula (CH2O). Appellant has not adequately explained why glycerol
would have been considered a carbohydrate that is excluded from the
claimed composition when the rejected claims are read in light of the

2 The information submitted by Appellant showing that EM 7 sodium
caseinate contains 0.20 percent lactose is acknowledged. However, the
limitation carbohydrate-free, as employed by Appellant, does not exclude
such a small amount of sugar as reported to be present in EM7 (Spec. para
0027).
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Specification as they would have been understood by one of ordinary skill in
the art.
Moreover, even if we could agree that glycerol is a carbohydrate that
is excluded from the foaming composition of representative claim 1 as
argued, which we do not, Appellant has not carried the burden to establish
that one of ordinary skill in the art would not have been enabled to make the
foaming compositions of Holtus without adding carbohydrate as such is also
disclosed by Holtus.
In particular, Holtus discloses that protein alone may be used and that
the use of a plasticizer, such as glycerol, is optional in forming the protein
foaming composition disclosed by Holtus (abst.; p. 1, l. 27- p. 2, l. 24, p.3, ll.
20-29, p. 4, l. 3 - p. 5, l. 13, and claims 1-7, 15, 17). Moreover, even if
plasticizer is optionally employed, Holtus discloses that the plasticizer can
be a non-carbohydrate such as polyol and/or a lipid (p. 2, l. 31- p. 3, l. 5).
Given the above-noted disclosure of Holtus, the attorney argument
asserting that Holtus is non-anticipatory because the disclosure of Holtus is
alleged to be non-enabling as requiring undue experimentation for one of
ordinary skill in the art to make the foaming composition without the use of
glycerol (carbohydrate) is, on its face, not persuasive. In this regard, it is
appropriate that a party asserting a lack of enablement of an anticipatorily
applied published scientific article or a published patent application
document (as here) should bear the burden of establishing the lack of
enablement of that which is disclosed in the applied document, particularly
where the rejection opposed pertains to claims of a patent application that is
pending before the PTO. This is because the PTO lacks resources to test the
written technical publications on which they rely for enablement. See, e.g.,
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Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355, n.22
(Fed. Cir. 2003) (relying on precedent the court held that "a presumption
arises that both the claimed and unclaimed disclosures in a prior art patent
are enabled" and the court instructed that, while not an issue before them,
“by logical extension” the same presumption should apply to prior art
printed publications).
In this regard, Appellant’s assertion that the art involved is so
unpredictable that it would require undue experimentation for one of
ordinary skill in the art to come up with a method to form the foaming
composition of Holtus without using the exemplified glycerol is not found to
be credibly supported by the evidence of record. Indeed, this argument is
undercut by Appellant’s Specification, which acknowledges that powdered
soluble carbohydrate-free foaming ingredients (particles) can be made using
any effective method, including conventional gas-injected spray-drying and
gas–injected extrusion techniques (Spec., para. 0023). Thus, Appellant has
not persuasively supported the argument that the level of skill in the art is
such that one of ordinary skill would have been given insufficient direction
by the disclosure of Holtus at the time just prior to the time of the present
invention to enable the production of soluble carbohydrate-free foaming
ingredients of Holtus. This is so given the alternatives disclosed by Holtus
and the conventional gas-injected spray-drying techniques available.
Appellant argues that paragraph 7 and other portions of the
Specification support their non-enablement argument with respect to making
the foaming composition of Holtus without glycerin (Reply Br. 1-3). These
arguments are off base in focusing on only a 100 percent sodium caseinate
foaming composition as not being enabled by Holtus, as Holtus is not
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limited to employing only that protein and Appellant’s claims are not limited
to 100 percent protein foaming compositions, as discussed above (Holtus, p.
3, ll. 23-29).
Moreover, this line of argument is predicated on unsubstantiated
innuendo and what may be characterized, in its most favorable light, as an
overstatement in asserting that paragraph seven of Applicant’s Specification
discloses that “if one were to use the sole example protein constituent,
namely sodium caseinate, and were to not use any plasticizer or glycerol,
they would not have been successful in producing a foaming composition
(present Specification, paragraph [0007])” (Reply Br. 1). In its entirety,
Specification paragraph [0007] states:
A possible solution could be the use of a substantially
protein-only composition, as described in WO-A-2004/019699.
However, the use of protein itself also poses some problems.
More importantly, none of the disclosed examples in the
published patent application are devoid of carbohydrate.

In addition, Appellant’s further assertion that the absence of an
example of a 100 percent sodium caseinate foaming composition in
Applicant’s Specification is evidence that the preparation of a 100 percent
sodium caseinate foaming composition was not successful is not
substantiated with any showing of any unsuccessful attempts that were made
to make such a composition (Reply Br. 3).
Concerning claims 2, 3, 16, 17, 23, 24, 26, 36, and 37, Appellant
additionally argues that Holtus fails to teach how to produce a protein
foaming composition comprising over 90 percent protein as the only
working example in Holtus is argued to have 85.5 percent protein content
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(App. Br. 14-15). We select claim 2 as representative in considering this
argument pertaining to the claims as grouped by Appellant.
This argument fails for reasons discussed above and in the Examiner’s
Answer. The descriptive disclosure of Holtus is clearly not limited to the
Examples and Holtus describes forming foaming compositions comprising
94 percent protein and substantially all protein as options (Holtus, abst.; p. 1,
l. 27- p. 2, l. 24, p. 2, ll. 27-31, p.3, ll. 20-29, p. 4, l. 3 - p. 5, l. 13., and claim
7). Moreover, Appellant employs a dry weight basis for the claimed protein
percentage (see, e.g., claim 2; Spec., para. 0030). Thus, Appellant’s
explanation of the Example of Holtus is off the mark by failing to exclude
water from the calculation presented. In any event and as discussed above,
Appellant has not established that Holtus is non-enabling for the alternative
embodiments disclosed therein by the unsubstantiated argument furnished.
Regarding claims 7 and 8, Appellant further argues that Holtus does
not teach hydrolyzed protein is a superior protein for use in their process of
making a foaming composition (App. Br. 16-17). However, this argument
does not refute the Examiner’s determination that Holtus describes using
hydrolyzed protein, such as hydrolyzed casein in forming the foaming
composition (Ans. 11; Holtus, p. 3, ll. 23-30).
It follows that, on this appeal record, we sustain the Examiner’s
anticipation rejection for the reasons set forth in the Examiner’s Answer and
above.
Obviousness Rejection over Holtus in view of Sutton
Concerning the obviousness rejection of claims 9, 10, 21, and 37,
Appellant does not specifically address the Examiner’s obviousness position
with respect to dependent claims 21 and 37. Consequently, we affirm these
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claims for substantially the reasons set forth by the Examiner in the Answer.
Arguments not made in the Appeal Brief are waived.
Remaining claims 9 and 10 are argued together as a group. Thus, we
select claim 10 as representative. Dependent claim 10 requires that the
foaming composition of claim 1 includes gelatin as at least a part of the
protein thereof.
Holtus teaches or suggests a foaming composition comprising mainly
or all protein for forming powdered particles including walls of vacuoles
containing entrapped gas under pressure and without the requirement for
carbohydrates, wherein the protein can be selected from a variety of proteins
including hydrolyzed forms thereof (abst., p. 1, l. 27- p. 2, l. 31, p.3, ll. 6-29,
p. 4, l. 3 - p. 5, l. 13., and claims 1-7, 15, 17). The Examiner relies on Sutton
to evince that gelatin is a known protein (such as a protein obtained from
collagen) that can be employed in making hollow micro-particles (Ans. 6;
Sutton, col. 7, ll. 1-8, col. 7, l. 30 – col. 8, l. 52, col. 4, ll. 25-29).
Based on the collective teachings of the references, we are in
agreement with the Examiner’s determination that it would have been
obvious to one of ordinary skill in the art at the time of the invention to
employ gelatin as the protein to be employed in making the foaming
composition of Holtus. This is because Holtus suggests that a variety of
available proteins may be employed in making their foaming composition
and Sutton evidences that is was known that gelatin is an available source of
protein that is suitable for forming walls of particles that can contain gas.
Appellant’s argument that there is no apparent reason to employ the
gelatin of Sutton as the protein used for forming the gas holding particles
taught by Holtus is not persuasive for reasons set forth above and by the
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Examiner (App. Br. 18-21; Ans. 12-13). Of course, the gelatin would be
employed according to the teachings of Holtus to make a foaming
composition including particles having plural voids (vacuoles).
Appellant’s references to paragraph [0021] of the Specification and
alleged superior properties of hydrolyzed gelatin are noted; but, such alleged
property differences have not been established to be unexpected or establish
unexpected results commensurate in scope with the here-claimed subject
matter (App. Br. 18-21; Reply Br. 4-6). After all, Holtus teaches that
hydrolyzed forms of proteins may be employed (p. 3, ll. 28-29).
On this record, we are not persuaded of any substantive error in the
Examiner’s obviousness determination based on the arguments presented in
the Appeal Brief and timely furnished in the Reply Brief.

CONCLUSION/ORDER
The Examiner’s decision to reject claims 1-8, 11-20, and 22-40 under
35 U.S.C. § 102(a) as being anticipated by Holtus; and to reject claims 9, 10,
21, and 37 under 35 U.S.C. § 103(a) as being unpatentable over Holtus in
view of Sutton is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a).

AFFIRMED

Appeal 2009-004514
Application 10/919,472

12
kmm

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