McPherson, Andrew Edward. et al.

Patent Trials and Appeals Board

Jun 10, 2020

13708487 - (D) (P.T.A.B. Jun. 10, 2020)

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.
13/708,487 12/07/2012 Andrew Edward McPherson 1410-101056-US 5048
48940 7590 06/10/2020
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
EXAMINER
COX, AMBER M
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
06/10/2020 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 ANDREW EDWARD MCPHERSON,
TORI ANN BOOMGAARDEN,
BRIAN E. LEVINE, and GARY FRANCIS SMITH1
____________

Appeal 2019-000826
Application 13/708,487
Technology Center 1700
____________

Before ROMULO H. DELMENDO, N. WHITNEY WILSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–24. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as Kraft
Foods Group Brands LLC. Appeal Br. 3. The Appellant states that Kraft
Foods Group Brands LLC is “100% owned by KFG Management Services
LLC,” which is “100% owned by the Kraft Heinz Foods Company.” Id.
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BACKGROUND
The subject matter on appeal relates to emulsifying salt-free cheese
products and associated methods. E.g., Spec. ¶ 1; Claim 1. Claim 1 is
reproduced below from page 26 (Claims Appendix) of the Appeal Brief:
1. A processed cheese that does not contain significant levels of
emulsifying salts, the processed cheese comprising:
a natural cheese or a mixture of natural cheeses providing from
about 5 weight percent to about 30 weight percent dairy
protein;
about 30 weight percent to about 80 weight percent water;
about 0.5 weight percent or less of emulsifying salts so that the
processed cheese does not contain significant levels of
emulsifying salts;
about 0.1 weight percent to about 10 weight percent of a non-
crosslinked modified starch having a degree of substitution of
less than about 0.2 D.S. and containing amylopectin and
substantially no amylase; and
a uniform distribution of amylopectin with substantially no
intact starch granules and substantially no starch agglomerates
with less than about 0.1 weight percent amylase so that the
processed cheese has substantially no amylase therein, the
amylopectin and amylase from the modified starch in a form
and in a ratio effective to provide substantially no texture or
flavor to the processed cheese.
REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 1–8 and 23 over Smith (US 2009/0092730 A1, published
Apr. 9, 2009), Merkenich (US 5,234,707, issued Aug. 10, 1993), and the
Tate & Lyle High Performance Cook-Up Starches Product Application Grid,
https://web.archive.org/web/20080621214957/http://www.tateandlyle.com/T
ateAndLyle/products_applications/product_application_grids/americas/high
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_performance_cookup_starches.htm (last accessed June 4, 2020) (dated June
21, 2008) (“Tate & Lyle”);
2. Claim 10 over Smith, Merkenich, Tate & Lyle, and Gamay (US
2009/0186129 A1, published July 23, 2009);
3. Claims 9, 11–20, and 24 over Smith, Merkenich, Tate & Lyle,
Buwalda (US 2003/0157232 A1, published Aug. 21, 2003), and Mounsey
(Modification of imitation cheese structure and rheology using pre-
gelatinised starches, 226 Eur. Food Res. Technol. 1039 (2007));
4. Claim 21 over Smith, Merkenich, Tate & Lyle, Buwalda,
Mounsey, and Gamay;
5. Claim 22 over Smith, Merkenich, Tate & Lyle, Buwalda,
Mounsey, and Henry (US 6,998,145 B2, issued Feb. 14, 2006).
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated October 26, 2017, and in the Examiner’s Answer.
The Appellant provides two claim groupings: (1) claims 1–10 and 23,
Appeal Br. 16, and (2) claims 11–22 and 24, id. at 24. For group 1, the
Appellant presents arguments concerning claim 1. For group 2, the
Appellant presents arguments concerning claim 11. We address claims 1
and 11 below. The remaining claims on appeal will stand or fall according
to the Appellant’s claim groupings.
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Claim 1
The Examiner finds that Smith teaches a processed cheese product
that comprises each component of claim 1 except that Smith discloses the
use of “starches” generally (“understood to be inclusive of numerous starch
products,” Ans. 8) rather than the specific “non-crosslinked modified starch”
of claim 1 that “contain[s] amylopectin and substantially no amylose.”
Ans. 4–5; claim 1. The Examiner finds that Merkenich discloses a cheese
product similar to Smith’s that includes a modified starch made from waxy
maize that is “amylopectin-rich and amylose poor,” and that Merkenich
further discloses that modified starches “are taste-neutral . . . and do not give
rise to lumps.” Ans. 4–5. The Examiner finds that Merkenich, like Smith, is
concerned with reducing the amount of emulsifying salts in processed
cheese, and that Merkenich teaches that the use of modified starches made
from waxy maize “permit[s] the added amount of processing salts
(emulsifying salts) to be approximately halved in comparison with known
recipes.” Id.
The Examiner determines that a person of ordinary skill in the art
would have been motivated to use a modified starch, as taught or suggested
by Merkenich, as the starch of the cheese product of Smith because (1) both
Smith and Merkenich desire to minimize the amount of emulsifying salts in
processed cheese, and Merkenich teaches that modified starches are suitable
for such cheese products, and (2) Smith teaches the addition of starches to its
cheese products to “improve texture, flavor, nutrition, and/or cost attributes,”
and Merkenich’s disclosure that modified starches are taste neutral and do
not give rise to lumps would have made such starches desirable in Smith’s
application. Id. at 6, 23.
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The Examiner finds that Smith and Merkenich do not disclose the
specific properties of the modified starch recited by claim 1, e.g., the degree
of substitution of less than about 0.2 D.S., the uniform distribution of
amylopectin, and the form and ratio of amylopectin and amylose. Id. at 7.
The Examiner finds that commercially available Shur-Fil 677 was a known
modified waxy starch suitable for use in dairy products, including cheese
sauces, as evidenced by Tate & Lyle, and that the Appellant’s Specification
shows that Shur-Fil 677 possesses the properties of the non-crosslinked
modified starch of claim 1. Id. The Examiner finds that it would have been
obvious to use Shur-Fil 677 as the starch of Smith because:
Smith et al. teach that starches (understood to be inclusive of
numerous starch products) may be suitable for use in the
processed cheese composition, while Merkenich et al. establish
that using taste-neutral amylopectin-rich and amylase-poor
modified, hydroxypropyl starch in processed cheese comprising
low levels of processing/emulsifying salts was already known
in the art, and [Tate & Lyle] discloses Shur-Fil 677 (modified
starch) is suitable for cheese sauces (dairy products).
Id. at 8.
In view of those findings and other findings less relevant to the issues
raised by the Appellant in this case, the Examiner concludes that the subject
matter of claim 1 would have been obvious to a person of ordinary skill in
the art. Id. at 4–8.
The Appellant first argues that Smith minimizes the use of
emulsifying salts by using a calcium-reduced casein source, while
Merkenich “provide[s] alternative methods of achieving a similar result.”
Appeal Br. 16–17. The Appellant also argues that, because Smith allegedly
uses starch “only to adjust texture, flavor, nutrition, and/or cost,” “there
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would have been no reason to include a specific starch from another
reference unless one of ordinary skill in the art was led to believe it would
meet one of the objectives for starch identified in Smith.” Id. at 17.
Those arguments are not persuasive of reversible error in the
Examiner’s rejection. Smith discloses, for example, that a “smooth texture”
is desirable, and that “optional ingredients” such as “starches” may be used
to “improve texture.” Smith ¶¶ 18, 20. Merkenich teaches a preference for
modified starches made from waxy maize that have high amylopectin and
low amylose content, that are “taste-neutral,” and that do “not have a
denaturing action or give rise to lumps.” Merkenich at 2:51–68 (emphasis
added).
Consistent with the Examiner’s findings, a person of ordinary skill in
the art evaluating the use of starches to impart smooth texture to cheese
products, as suggested by Smith, would have had reason to use starches such
as those disclosed by Merkenich which are described as being taste-neutral
and not giving rise to lumps, i.e., producing a smooth texture. A person of
ordinary skill in the art evaluating starches in view of Smith would have
been specifically motivated to use a modified starch made from waxy maize,
as indicated by Merkenich, because Merkenich discloses that such starches
are suitable for cheese products that do not contain significant levels of
emulsifying salts, such as the cheeses of Smith. Thus, in view of the art as a
whole, a person of ordinary skill in the art would have understood that
modified starches made from waxy maize would have been particularly
desirable for use as the starch of Smith because Merkenich discloses that
such starches do not give rise to lumps, consistent with Smith’s goal of a
smooth texture, and because Merkenich indicates that such starches would
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have advanced Smith’s goal of producing cheese products without
emulsifying salts. See Smith at Abstract.
The Appellant also argues that “Smith teaches away from the claimed
invention” because “Smith identifies starches to adjust texture, flavor,
nutrition, and/or cost” whereas “the present application require starch of a
type ‘effective to provide substantially no texture or flavor to the processed
cheese.’” Appeal Br. 18.
That argument is not persuasive because, as set forth above, Smith
discloses that a “smooth texture” is desirable. Smith ¶ 18. Smith’s
disclosure that “optional ingredients” such as “starches” may be used to
“improve texture,” id. ¶ 20, is best understood as indicating that starches
may be used to obtain “smooth texture,” which is not inconsistent with and
does not teach away from the “substantially no texture” recitation of claim 1.
See, e.g., Spec. ¶ 18 (similar to Smith, describing “a smooth texture” as a
desirable property of the cheese products disclosed by the Specification).
The Appellant also argues that Merkenich’s “require[ment] that its
modified starches display a high viscosity in water that is constant for at
least 10 minutes at temperatures of 60°C to 90°C . . . categorically excludes
the starches of the present application [such as Shur-Fil 677], which exhibit
high viscosity development quickly above 60°C, then exhibit a steady
decrease[] in viscosity as the starch granules rupture and are dispersed.”
Appeal Br. 18 (citing Spec. ¶¶ 54. 55, & Fig. 2).
That argument is not persuasive of reversible error in the Examiner’s
rejection. As an initial matter, the Examiner is proposing the use of Shur-
Fil 677 with the cheese of Smith, not Merkenich.
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Additionally, we recognize that Merkenich discloses that, “at
temperatures of 60° to 90° C., [the modified starches] must display in water
a high viscosity which is constant for at least 10 minutes.” Merkenich at
2:60–63. The data cited by the Appellant, however, does not establish that a
person of ordinary skill in the art would have considered Shur-Fil 677, a
known modified starch made from waxy maize, to be inadequate for
Merkenich’s purpose. In particular, we observe that both the “waxy corn
starch” and the “substituted waxy corn starch” of the Appellant’s Figure 2,
see Appeal Br. 19, demonstrate a viscosity that increases rapidly with time
and heat, and it appears that both of those starches maintain a fairly constant
viscosity (after an initial drop-off) to the far limit (24 minutes) of the x-axis
of Figure 2. Although the Appellant asserts that its data show that Shur-Fil
677 “does not maintain a constant high viscosity . . . as required by
Merkenich,” Appeal Br. 19, the Appellant fails to establish what Merkenich
intended by the words “high” and “constant,” and, as set forth above, the
Appellant’s own data could reasonably be interpreted as showing that the
starches have both a high and a reasonably constant viscosity to the far limit
of the x-axis. See Spec. Fig. 2. The Appellant’s assertion to the contrary is
unsupported attorney argument. See In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974) (“Attorney’s argument in a brief cannot take the place of
evidence.”).
On this record, we are not persuaded that Merkenich teaches away
from modified starches that fall within the scope of claim 1, including Shur-
Fil 677. At most, a person of ordinary skill in the art may not have known
with certainty whether Shur-Fil 677 would be a suitable starch for use with
Smith. “The reasonable expectation of success requirement for
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obviousness,” however, “does not necessitate an absolute certainty for
success.” PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed.
Cir. 2014).
The Appellant next argues that “no reasonable rationale is provided
for selecting the identified starch from the numerous starches listed in [Tate
& Lyle].” Appeal Br. 19–21.
That argument is not persuasive. Smith discloses the use of
“starches,” which the Examiner finds, and the Appellant does not dispute, is
best “understood to be inclusive of numerous starch products.” Ans. 8. As
set forth above, Merkenich discloses modified starches made from waxy
maize that a person of ordinary skill in the art would have considered
particularly suitable for use with Smith. Tate & Lyle discloses that Shur-
Fil 677 was a known modified waxy starch. Ans. 7. The Examiner’s
proposed combination is the use of a known element (i.e., Shur-Fil 677, a
known modified waxy starch) according to its established function (i.e.,
starch for use with processed cheese products that have low emulsifying salt
content). The fact that the prior art may teach or suggest the suitability of
numerous other starches does not detract from the disclosures of Merkenich
and Tate & Lyle which suggest the suitability of modified waxy starches
such as Shur-Fil 677. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d
804, 807 (Fed. Cir. 1989) (“That the [prior art] patent discloses a multitude
of effective combinations does not render any particular formulation less
obvious.”).
The Appellant also argues that Tate & Lyle indicates Shur-Fil 677 as
suitable for use in cheese sauces but not in “processed cheeses.” Appeal
Br. 20.
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That argument is not persuasive for reasons stated by the Examiner in
the Answer. See Ans. 28. Smith specifically contemplates cheese “sauces”
and “dips.” See Smith ¶¶ 3, 13. Smith indicates that such products are
“process[ed] cheese.” Id. ¶ 3. Tate & Lyle’s indication that Shur-Fil 677 is
suitable for cheese sauces is sufficient for a person of ordinary skill in the art
to reasonably expect that Shur-Fil 677 would function successfully in the
Examiner’s proposed combination. See also Spec. ¶ 47 (disclosing a cheese
sauce); see also PAR Pharm., 773 F.3d at 1198 (certainty of success not
required).
The Appellant also argues that the “Appellant is proceeding contrary
to accepted wisdom,” and that unexpected results support a conclusion of
nonobviousness in this case. Appeal Br. 21–23. The Appellant cites the
Declaration of Andrew E. McPherson, a named inventor, for support.
Although we have considered the McPherson declaration and
attributed some weight to it, the Appellant’s arguments are not persuasive of
reversible error in the Examiner’s rejection. Cf. In re Bulina, 362 F.2d 555,
559 (CCPA 1966) (“[A]n affidavit by an applicant or co-applicant as to the
advantages of his invention is less persuasive than one made by a
disinterested person.”); see also Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed.
Cir. 2010) (factfinder has discretion to give more weight to one item of
evidence over another unless no reasonable trier of fact could have done so).
As an initial matter, we observe that, although Dr. McPherson discusses
some of the references at issue in this case, Dr. McPherson does not mention
the Merkenich reference. The Appellant fails to persuasively establish that
the inventors proceeded contrary to accepted wisdom in view of the prior art
discussed above, particularly Merkenich, which specifically teaches the use
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of modified starches made from waxy maize for a purpose the same as or
similar to that of the Appellant, i.e., to produce a processed cheese product
with reduced emulsifying salt content.
The Appellant’s argument concerning unexpected results is
unpersuasive for at least the reason that the Appellant does not assert or
show that the relied-upon results are commensurate in scope with the claims.
In re Peterson, 315 F.3d 1325, 1329–31 (Fed. Cir. 2003). “Establishing that
one (or a small number of) species gives unexpected results is inadequate
proof, for ‘it is the view of [the CCPA] that objective evidence of non-
obviousness must be commensurate in scope with the claims which the
evidence is offered to support.’” In re Greenfield, 571 F.2d 1185, 1189
(CCPA 1978) (quoting In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)).
Claim 1 encompasses numerous cheese products having a wide range
of ingredient concentrations and ratios, and it encompasses any non-
crosslinked modified starch having the recited characteristics. The relevant
results identified by the Appellant, see Appeal Br. 22, are far more limited
and appear, for example, to use only Shur-Fil 677 as the starch. The
Appellant does not allege that those limited results are representative of the
full scope of claim 1. Accordingly, on this record, we are not persuaded that
unexpected results support a conclusion of nonobviousness. See In re
Huang, 100 F.3d 135, 139 (Fed. Cir. 1996) (appellant bears burden of
showing unexpected results).
In summary, we have carefully considered the Appellant’s arguments,
but we are not persuaded of reversible error in the Examiner’s rejection of
claim 1.
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Claim 11
Claim 11 is directed to a method of preparing an emulsifying salt-free
processed cheese, such as that of claim 1. Claim 11 requires, inter alia,
“heating a blend of water and a non-crosslinked modified starch having a
degree of substitution of less than about 0.2 D.S. and containing amylopectin
and substantially no amylase to its gelatinization temperature to form a
cooked starch paste,” then blending the paste and a cheese with water to
form a cheese mixture, and then heating the mixture to form an emulsifying
salt-free processed cheese. Appeal Br. 27–28.
The Examiner relies on Smith, Merkenich, and Tate & Lyle as set
forth above. Ans. 10–11. The Examiner further finds that Smith teaches a
method of forming an emulsifying salt-free processed cheese involving “the
steps of blending the natural cheese, water (moisture), and optional starch
product together” to form a cheese mixture, followed by heating. Id. at 11.
The Examiner finds, however, that Smith “fail[s] to disclose the step of
blending water and a modified starch . . . to its gelatinization temperature to
form a cooked starch paste.” Id.
The Examiner finds that Buwalda teaches “a method [for] forming a
starch gel (paste) by mixing a modified starch . . . with water and heating the
mixture to a temperature above the gelatinization temperature of the starch,”
and that Buwalda’s “gel (cooked starch paste) is formed in the preparation of
the product in which the starch is used such as imitation (processed) cheese.”
Id. The Examiner determines that “it would have been obvious to
incorporate this step of Buwalda into the processed cheese formation process
of Smith et al. in order to properly prepare a starch that is suitable for being
mixed with the other cheese ingredients.” Id. at 12.
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The Examiner also finds that Mounsey teaches a method of making
processed cheese in which it is desirable to pre-gelatinize the starch prior to
blending with other cheese mixture ingredients “to give the desired texture
in imitation cheese.” Id. at 12. The Examiner determines that it would have
been obvious to “blend a pre-gelatinized starch with all of the other cheese
ingredients of Smith et al., in order to obtain an emulsifying salt free
processed cheese with desirable texture.” Id.
The Appellant first argues that Mounsey’s disclosure of “pre-
gelatinized starch – a modified starch that is dispersible in cold water – is
completely different from a starch paste containing starch that has been
heated to its gelatinization temperature.” Appeal Br. 25.
That argument is not persuasive. As set forth above, the Examiner
also relies on Buwalda as teaching the desirability of mixing starch with
water and heating to form a starch paste prior to mixing with other
ingredients to form processed cheese. The Appellant fails to address
Buwalda other than in a cursory fashion. We understand the Examiner’s
rejection to be based on Buwalda’s disclosure of a starch composition that
falls within the scope of the term “starch paste,” and additionally on
Mounsey’s disclosures concerning the desirability of gelatinizing a starch
before mixing it with other cheese ingredients. Ans. 10–12. Although we
discern no persuasive reason to believe that Mounsey’s pre-gelatinized
starch falls beyond the scope of the term “starch paste” merely because
Mounsey’s starch is dispersible in cold water, even if the Appellant were
correct about that, the Appellant has not shown that Buwalda’s starch
composition falls beyond the scope of the term “starch paste.”
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The Appellant also argues that “Mounsey teaches away from using
pre-gelatinized starch to replace casein as an emulsifier in imitation or
processed cheese,” and that “there is no reason” to “replace[] a portion of the
calcium-reduced casein source in Smith with a pregelatinized starch to
reduce the amount of emulsifying salts needed.” Appeal Br. 25.
That argument is not persuasive because the Examiner does not
propose replacing any element of Smith with any element of Mounsey. The
Examiner proposes, instead of blending Smith’s cheese, water, and starch
together before heating, that it would have been obvious in view of Mounsey
and Buwalda to blend the water and starch together and heat to form a starch
paste prior to blending with the cheese ingredients to improve texture. The
Appellant’s “teach away” argument fails to address or otherwise show error
in that rationale. As noted above, the Appellant fails to address Buwalda.
To the extent that Mounsey suggests that certain pre-gelatinized
starches “result[] in longer processing time, less cohesiveness, and reduced
melting properties,” see Appeal Br. 25, the Appellant does not allege or
show that those disadvantages would result from the specific starch
proposed for use by the Examiner (Shur-Fil 677). Nor does the Appellant
address whether a person of ordinary skill in the art would have considered
those disadvantages to outweigh the benefits of pregelatinization (e.g.,
improved texture) identified by the Examiner. Cf. Winner Int’l Royalty
Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“[T]he benefits,
both lost and gained, should be weighed against one another.”).
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 11.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
1–8, 23 103(a) Smith, Merkenich, Tate & Lyle 1–8, 23
10 103(a) Smith, Merkenich, Tate & Lyle, Gamay 10
9, 11–20,
24 103(a)
Smith, Merkenich, Tate &
Lyle, Buwalda, Mounsey
9, 11–20,
24
21 103(a)
Smith, Merkenich, Tate &
Lyle, Buwalda, Mounsey,
Gamay
21
22 103(a)
Smith, Merkenich, Tate &
Lyle, Buwalda, Mounsey,
Henry
22
Overall
Outcome 1–24
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