Ex Parte Zoltai et al

Patent Trial and Appeal Board

Feb 9, 2015

13450073 (P.T.A.B. Feb. 9, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE 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. 13/450,073 04/18/2012 Peter Zoltai 09402.0033-00000 1384 22852 7590 02/09/2015 FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP 901 NEW YORK AVENUE, NW WASHINGTON, DC 20001-4413 EXAMINER WONG, LESLIE A ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 02/09/2015 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 PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte PETER ZOLTAI, JOHN EDWARDS, JR., MARGARET POOLE, DAVID KREIDER, JOHN LAAPERI, and RICHARD KENAHAN, JR. ____________________ Appeal 2014-008611 Application 13/450,073 Technology Center 1700 ____________________ Before CATHERINE Q. TIMM, MARK NAGUMO, and GEORGE C. BEST, Administrative Patent Judges. TIMM, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellants seek review of the Examiner’s decision to reject claims 53-67 under 35 U.S.C. § 112 ¶ 1 as lacking enablement and claims 55, 56, 58-61, 63, and 64 under 35 U.S.C. §102(b) as anticipated by Kamarei.1 We have jurisdiction under 35 U.S.C. §§ 6(b) and 134(a). We REVERSE and ENTER A NEW GROUND OF REJECTION. 1 US 6,039,985, patented Mar. 21, 2000. Appeal 2014-008611 Application 13/450,073 2 The claims are directed to a method of making a low-carbohydrate dairy beverage (see, e.g., Claim 65), and a method of making a low- carbohydrate dairy beverage product (see, e.g., Claims 53, 55, 60). Claim 55 is illustrative: 55. A method of making a low-carbohydrate dairy beverage product, the method comprising: adding water, a calcium source, a sweetener, a flavor, a vitamin, and skim milk to a tank to obtain a product; as each ingredient is added to the tank, mix the ingredients; ultrapasteurizing the product; homogenizing the product; and cooling the product. Claims Appendix at Appeal Br. 21. Claim 60 is a method with the same steps as claim 55 except that a protein source is added instead of a calcium source. OPINION Enablement The Examiner rejects claims 53-59 under 35 U.S.C. § 112 ¶ 1 “because the specification, while being enabling for calcium caseinate and tricalcium phosphate, does not reasonably provide enablement for all calcium sources.” Ans. 2. The Examiner rejects claims 60-64 “because the specification, while being enabling for proteins including skim milk, caseinate, whey, and Appeal 2014-008611 Application 13/450,073 3 buttermilk, does not reasonably provide enablement for any protein source.” Ans. 2. The Examiner rejects claims 60-67 as lacking enablement because “[t]he addition of calcium as calcium caseinate and/or tricalcium phosphate is critical or essential to the practice of the invention, but not included in the claim(s).” Ans. 3. “[T]o be enabling, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993)). In considering the question of enablement, one must take into account the knowledge of those of ordinary skill in the art. See In re Howarth, 654 F.2d 103, 105 (CCPA 1981) (“An inventor need not, however, explain every detail since he is speaking to those skilled in the art.”). We agree with Appellants that the Examiner’s rejection is based upon an incorrect reading of the Specification and fails to take adequate account of the knowledge of those of ordinary skill in the art. Appeal Br. 10-17. The Specification describes a method of making a low-carbohydrate dairy beverage that involves, for example, adding ingredients to a tank, mixing, ultrapasterizing, homogenizing, and cooling. Spec. col. 1, ll. 49-61. Ingredients such as calcium caseinate and tricalcium phosphate are disclosed as added to increase calcium content. See, e.g., Spec. col. 16, ll. 33-48. Although the Examiner finds the Specification does not disclose any other calcium sources, this is incorrect. The Specification envisions the use of a number of different sources of calcium. For instance, the Specification states that “the primary ingredients for adding calcium are skim milk (UF or regular), tricalcium phosphate, cream, calcium caseinate, whey protein Appeal 2014-008611 Application 13/450,073 4 isolate, and buttermilk.” Spec. col. 16, ll. 38-41. With regard to protein, the disclosure is similar albeit the mentioned ingredients are added to increase protein content. See, e.g., Spec. col. 16, ll. 18-25. In both cases, the respective calcium and protein sources are added to obtain a desired calcium and protein concentration in the beverage. In light of the evidence in the Specification, we determine that a preponderance of the evidence supports Appellants’ position. Selecting the appropriate calcium sources and protein sources to obtain the desired calcium and protein concentration within a dairy beverage made by the method described in the Specification would appear to involve only routine experimentation by those of ordinary skill in the art. Nor does the Examiner provide the findings necessary to support a determination that adding calcium as calcium caseinate or tricalcium phosphate is critical or essential to obtain the desired calcium and protein contents. Anticipation The Examiner rejects claims 55, 56, 58-61, 63, and 64 under 35 U.S.C. § 102(b) as anticipated by Kamarei. Ans. 3-4. There is no dispute that Kamarei teaches the process steps recited in the body of independent claims 55 and 60. Compare Appeal Br. 17-19 and Reply Br. 5 with Ans. 3-4 and 6. The issue is whether Kamarei describes a “low- carbohydrate dairy beverage product” as recited in the preamble of the independent claims (Claims 55 and 60). According to Appellants, the Examiner incorrectly relies on a disclosure of infant formula as anticipating the claimed low-carbohydrate dairy compositions. Appeal Br. 17. Appeal 2014-008611 Application 13/450,073 5 The first step in considering the issue of anticipation is to determine what is encompassed by “low-carbohydrate dairy beverage product.” Turning to the Specification to determine whether it provides guidance with regard to the scope of “low-carbohydrate dairy beverage product” as recited in claims, we find the following passage: One food type for which there has been increased demand for a low-carbohydrate version is dairy products, particularly dairy beverages such as milk. A typical 8 ounce serving of regular milk has approximately 12 grams of carbohydrates, and an 8 ounce serving of chocolate milk has approximately 30 grams of carbohydrates. Spec. col. 1, ll. 22-27. The Specification also discloses: An exemplary aspect of the invention includes a method for making a dairy product. In this exemplary aspect, the dairy product made by the method is a low-carbohydrate dairy beverage. In a more particular aspect, the dairy product has less than 5 grams of carbohydrates per 8 ounce serving. Spec. col. 1, ll. 49-53; see also col. 3, ll. 16-18. The Specification proceeds to disclose low-carbohydrate dairy beverages having a carbohydrate content of approximately 3 grams per 8 ounce serving, Spec. col. 2, ll. 43-46, and 5 grams of carbohydrates per 8 ounce serving. Spec. col. 2, ll. 56-58; see also Spec. col. 9, ll. 36-45. No upper limit on the overall carbohydrate content of a low carbohydrate dairy beverage product is expressed. From the Specification, it can be deduced that “low carbohydrate dairy beverage products” are beverage products containing dairy, such as milk beverages, chocolate milk, dairy-containing coffee drinks (e.g., the cappuccino dairy beverage of Example 7), etc. that contain, for example 5 Appeal 2014-008611 Application 13/450,073 6 grams of carbohydrate per 8 ounces, but can contain higher levels of carbohydrate. How much higher is not clear from the Specification. During prosecution, the Examiner rejected claims 55, 56, 58-61, 63, and 64 under 35 U.S.C. § 112 ¶ 2 because it is not clear what is encompassed by “low-carbohydrate,” Office Action of Dec. 11, 2012 at 4. Appellants responded by citing various passages of the Specification and stating that “based on the information in the specification, one of skill in the art would understand that ‘low-carbohydrate’ includes a range of carbohydrate values less than that found in typical milk products (e.g., less than 12 g/8 ounces for regular milk).” Reply to Office Action of Apr. 8, 2013 at 5. Appellants further stated that “one of skill in the art would also understand that ‘low-carbohydrate’ may include embodiments having more than 5 g of carbohydrate per 8 ounce serving.” Id. at 5-6. The Examiner responded with the Final Office Action of May 29, 2013, which did not contain any rejections under 35 U.S.C. § 112 ¶ 2. The Examiner did not state a reason for withdrawing the rejection. When it was pointed out during the hearing of January 9, 2015 that “e.g., less than 12 g/8 ounces for regular milk” in Appellants’ proposed definition was in the form of an example, Appellants representative stated that they “put in ‘e.g.’ just in case there was a scenario where there was a regular milk product that perhaps had, could be a power shake or something like that.” Hearing Tr. 18:1-4. Appellants appear to envision “low carbohydrate dairy beverage product” as encompassing dairy beverage products that might have more than 12 g/8 oz. of carbohydrate. As a first matter, we do not agree that the Specification provides the type of guidance necessary to lead the ordinary artisan to the definition Appeal 2014-008611 Application 13/450,073 7 proposed by Appellants. Appellants rely on a statement in the Specification stating that there is a need for low-carbohydrate alternatives to dairy beverages such as milk, and notes that a typical 8 ounce serving of regular milk has 12 grams of carbohydrate. Reply to Office Action 5 (citing Spec. 1:20-36). Appellants also cite various disclosures of the carbohydrate concentration ranges of individual ingredients. Reply to Office Action 5 (citing Spec. 4:65- 5:22 (skim milk), 5:51-60 (calcium caseinate), 6:26-34 (whey protein), 6:43-50 (buttermilk), 6:58-66 (cream)). Appellants further point to a portion of the Specification describing adding skim milk in which the selected skim milk may be regular skim milk or ultrafiltered (UF) skim milk and explains that UF skim milk has fewer carbohydrates than regular skim milk, and provides examples of when each type of milk can be used. Reply to Office Action 5 (citing Spec. 11:7-58). Appellants also note that “the specification explains that appropriate ingredients are measured for various characteristics, including carbohydrate content, and that the carbohydrate content of the final product can vary depending on the desired beverage.” Reply to Office Action 5 (citing Spec. 15:66-16:17; 16:49-60). But none of these disclosures provides the type of guidance necessary to determine the upper limit on carbohydrates such that one of ordinary skill in the art can determine if a potentially infringing dairy beverage product made by the steps claimed is a “low-carbohydrate dairy beverage product” within the meaning of the claims. As stated by our reviewing court, as an initial matter, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever Appeal 2014-008611 Application 13/450,073 8 enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). In this case, the Specification does not define “low-carbohydrate dairy beverage product.” Nor do the portions of the Specification cited by Appellants provide carbohydrate concentration ranges for the full scope of dairy beverage products encompassed by the claims, which-as we pointed out above-includes dairy beverage products such as chocolate milk that typically have high concentrations of carbohydrates, i.e., 30 g/8 oz. The fact that regular milk has 12 g/8 oz. is not dispositive, because the claims are not limited to low-carbohydrate regular milk. That Appellants’ Specification discloses various ranges of carbohydrate for individual ingredients and provides example compositions does not provide the kind of guidance that would have allowed the ordinary artisan to understand the range of carbohydrate concentrations permissible in the low-carbohydrate dairy beverage product of the claims. During the hearing, Appellants stated that they “would certainly be willing to stipulate that [a low carbohydrate dairy beverage product] is a dairy beverage product, such as one that contains milk, that has below 12 grams of carbohydrates per eight ounces.” Hearing Tr. 19:7-12. But we cannot accept such a stipulation. Nor would it be proper for us, as it was not proper for the Examiner, to accept a definition proffered by an applicant during prosecution as resolving the meaning of a claim term without adequate evidence that the definition reflects the meaning those of ordinary skill in the art would have given the claim term at the time of the invention when read in light of the Specification. The Examiner and this Board have Appeal 2014-008611 Application 13/450,073 9 an independent obligation to determine the meaning of an application’s claims, notwithstanding the views asserted by an applicant. The obligation is analogous to that of district and appeals court judges. See, e.g., Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555 (Fed. Cir. 1995) (“the trial judge has an independent obligation to determine the meaning of the claims, notwithstanding the views asserted by the adversary parties.”); see also Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 835 (2015) (quoting Markman v. Westview Instruments, Inc., 517 U.S. 370, (1996) (“‘the construction of a patent, including terms of art within its claim,’ is not for a jury but ‘exclusively’ for ‘the court’ to determine.”); In re Abbott Diabetes Care Inc., 696 F.3d 1142, 1148 (Fed. Cir. 2012) (Although, “[i]n contrast to district court proceedings involving an issued patent, claims under examination before the PTO are given their broadest reasonable interpretation consistent with the specification,” claim construction remains a legal question, reviewed de novo.). As a second matter, even if we were to accept that those of ordinary skill in the art would adopt Appellants’ definition of “low carbohydrate dairy beverage product” as a dairy beverage product including “a range of carbohydrate values less than that found in typical milk products (e.g., less than 12 g/8 ounces for regular milk),” the definition does not deliver the required reasonable precision demanded by the statute. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971) (the inquiry is “whether the claims do, in fact, set out and circumscribe a particular area with a reasonable degree of precision and particularity.”). Typical milk products encompass not only regular milk, but chocolate milk, infant formula, coffee drinks (Spec. Ex. 7), and any number of other dairy-based beverages including yogurt drinks, Appeal 2014-008611 Application 13/450,073 10 milk shakes, power shakes, etc. Although the Specification indicates that the upper limit for carbohydrate concentration in a low carbohydrate dairy beverage product is above 5 g/8 oz., how far above 5 grams per 8 ounces is unclear. During prosecution when an applicant can amend the claims, it is the applicant’s burden to draft reasonably precise claims. The term “reasonably” takes into account the fact that language is not as precise a tool for staking out a patent property boundary as compared to, for instance, the numerical coordinates a surveyor uses to stake out land. And yet it is applicant’s burden to draft the claim as precisely as possible given the limitations of language. Morris, 127 F.3d at 1056 (35 U.S.C. § 112 ¶ 2 “puts the burden of precise claim drafting squarely on the applicant.”); see also Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008) (noting that “the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.”); In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989) (“[D]uring patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.”). Because claims 55, 56, 58-61, 63, and 64 are not reasonably precise enough to particularly point out and distinctly claim the subject matter which the applicant regards as his invention, we reject those claims under 35 U.S.C. § 112 ¶ 2. Appeal 2014-008611 Application 13/450,073 11 With regard to the Examiner’s finding of anticipation, we cannot determine whether Kamarei describes a low-carbohydrate dairy beverage product without resort to speculation as to the meaning of “low-carbohydrate dairy beverage product.” Engaging in such speculation would not be appropriate. See In re Steele, 305 F.2d 859, 862 (CCPA 1962). Thus, we procedurally reverse the anticipation rejection. This reversal is procedural in nature and not based on the merits of the rejection.2 CONCLUSION We reverse the Examiner’s rejections under 35 U.S.C. § 112 ¶ 1. We procedurally reverse Examiner’s rejection under 35 U.S.C. § 102(b) without reaching the merits of that rejection. We enter a new ground of rejection, rejecting claims 55, 56, 58-61, 63, and 64 under 35 U.S.C. § 112 ¶ 2. DECISION The Examiner’s decision is reversed and a new ground of rejection entered. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of 2 Should the Examiner and Appellants continue to discuss this rejection in further examination, we encourage both to support their arguments of what is known in the art with specific citations to art of record. Mere argument, whether from an attorney or examiner, cannot take the place of evidence when a finding of fact is required. Appeal 2014-008611 Application 13/450,073 12 rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . REVERSED 37 C.F.R. § 41.50(b) cdc