Ex Parte ZellerDownload PDFBoard of Patent Appeals and InterferencesJul 28, 201010919472 (B.P.A.I. Jul. 28, 2010) Copy Citation 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 Appeal 2009-004514 Application 10/919,472 3 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 Appeal 2009-004514 Application 10/919,472 4 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. Appeal 2009-004514 Application 10/919,472 5 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). Appeal 2009-004514 Application 10/919,472 6 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., Appeal 2009-004514 Application 10/919,472 7 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 Appeal 2009-004514 Application 10/919,472 8 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 Appeal 2009-004514 Application 10/919,472 9 (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 Appeal 2009-004514 Application 10/919,472 10 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 Appeal 2009-004514 Application 10/919,472 11 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 STITES & HARBISON PLLC 1199 NORTH FAIRFAX STREET SUITE 900 ALEXANDRIA, VA 22314 Copy with citationCopy as parenthetical citation