NESTEC S.A.

Patent Trials and Appeals Board

Jul 1, 2021

2020004609 (P.T.A.B. Jul. 1, 2021)

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.
14/649,300 06/03/2015 Madhavi Ummadi 3712036-02443 5724
29157 7590 07/01/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
LE, EMILY M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
07/01/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MADHAVI UMMADI and NISHANT ASHOK JOSHI

Appeal 2020-004609
Application 14/649,300
Technology Center 1700
Before BEVERLY A. FRANKLIN, RAE LYNN P. GUEST, and
JANE E. INGLESE, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–7, 9–13, and 20–22. 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(a). Appellant identifies the real party in interest as SOCIÉTÉ DES
PRODUITS NESTLÉ S.A. Appeal Br. 2.
Appeal 2020-004609
Application 14/649,300

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. A frozen confection product essentially or completely free
of corn syrup and comprising oat syrup from natural enzyme
hydrolysis of oats, wherein the oat syrup is 3-6 wt.% of the frozen
confection product, the frozen confection product further
comprising a pH adjusting agent in an amount of 0.05 to 2.0%
by weight such that the frozen confection product has a pH of 5.0
to 6.5, the frozen confection product further comprising a dairy
component selected from the group consisting of milk, cream and
mixtures thereof, wherein milk-solid non-fat from the dairy
component is 5-15 wt.% of the frozen confection product, and
total solids are 36-41 wt.% of the frozen confection product.

REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tapfer US 5,482,728 Jan. 9, 1996
Whalen ‘162 US 5,723,162 Mar. 3, 1998
Whalen ‘9742 US 6,685,974 B2 Feb. 3, 2004
Bramley US 2007/0014908 A1 Jan. 18, 2007
Rudolph US 2010/0247723 A1 Sept. 30, 2010

2 On page 9 of the Answer, the Examiner points out that Whalen ‘974 is the
correct citation for this reference.
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REJECTION
Claims 1–3, 5–7, 9–13, and 20–22 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rudolph in view of Whalen ‘162 and
Whalen ‘859, and further in view of Bramley and Tapfer. Ans. 3–8.3
OPINION
Although presented under separate headings, Appellant’s arguments
regarding claims 2, 3, 12, 20, 21, and 22 are substantially the same as for
claim 1. Appeal Br. 5–12. In accordance with 37 C.F.R. § 41.37(c)(1)(iv)
(2019), we select claim 1 as representative, and the remaining claims stand
or fall with claim 1.
Upon consideration of the evidence and each of the respective
positions set forth in the record, we find that the preponderance of evidence
supports the Examiner’s findings and conclusion that the subject matter of
Appellants’ claims is unpatentable over the applied art. Accordingly, we
sustain the Examiner’s rejection on appeal essentially for the reasons set
forth in the Final Office Action and in the Answer, and affirm, and we add
the following for emphasis only.
We refer to the Examiner’s statement of the rejection set forth on
pages 2–7 of the Final Office Action and on pages 3–8 of the Answer.
Appellant first argues that one skilled in the art would not have
combined the applied references to arrive at the ranges of total solids,
overrun, and milk solids non-fat recited in claim 1 for the reasons set forth
on page 6 of the Appeal Brief. Therein, Appellant submits that the

3 There are two Examiner’s Answers in the record. We use the Answer
mailed April 14, 2020.
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Application 14/649,300

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Examiner provides no reason why one skilled in the art would have modified
Rudolph to have the total solids and overrun of Tapfer or the milk solids
non-fat of Bramley. This position is reiterated on pages 2–3 of the Reply
Brief. We are unpersuaded by this line of argument. As explained by the
Examiner at the bottom of page 8 of the Answer, for example, it is the
Examiner’s position that the combination of ingredients in a recipe are not
beyond the skilled artisan’s modifications nor is it beyond the applied prior
art of record. In support of this position, the Examiner refers to In re Levin,
178 F.2d 945, 948 (CCPA 1949) (holding that it is a matter of obviousness
for one of ordinary skill in the art to combine conventional ingredients in a
food product, and to determine their optimum amounts, in the absence of
evidence that the ingredients co-react or cooperate in a manner to produce an
unexpected result). Ans. 7. Within this context, the Examiner combines the
references, and states how overlapping ranges support the prima facie case.
Ans. 6, 8. In the absence of evidence that the ingredients co-react or
cooperate in a manner to produce an unexpected result, as in the instant case,
we are unpersuaded of error in the Examiner’s position.
Appellant next argues that one skilled in the art would not have
combined the applied references to arrive at the percentage of oat syrup
recited in claim 1 (3–6 wt %) for the reasons presented on pages 6–7 of the
Appeal Brief. We are unpersuaded by this line of argument essentially for
the reasons stated by the Examiner on pages 9–11 of the Answer. Therein,
Examiner explains that the sugar and corn syrup is already taught in
Rudolph and that it would have been obvious to have replaced the sugar and
corn syrup with oat syrup (taught in both Whalen ‘162 and Whalen ‘974)
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Application 14/649,300

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while achieving the characteristic mouthfeel of an “ice cream like” or dairy
based frozen confection. Ans. 10. In other words, again, it is the Examiner’s
position that it is a matter of obviousness to combine conventional
ingredients in a food product, and to determine their optimum amounts (for
example, to achieve the level of mouthfeel desired), in the absence of
evidence that the ingredients co-react or cooperate in a manner to produce an
unexpected result. We thus are unpersuaded of error in the Examiner’s
stated position.
Appellant next argues that the skilled artisan would not have
combined the cited references to arrive at the frozen dessert containing dairy
recited in claim 1 for the reasons presented on pages 7–8 of the Appeal
Brief. Therein, Appellant argues that each of the Whalen references are
directed to non-dairy frozen confections while Rudolph is directed to dairy
confections. This argument is reiterated on page 4 of the Reply Brief. We
are unpersuaded by this line of argument. As the Examiner points out on
page 12 of the Answer, Rudolph teaches both dairy and non-dairy products.
Rudolph, ¶46.
Appellant next argues that the Examiner used improper piecemeal
reconstruction and improperly relied on per se rules of obviousness for the
reasons presented on pages 8–9 of the Appeal Brief and on pages 3–5 of the
Reply Brief. Appellant states that the Examiner’s reliance upon In re Levin
is improper for the reasons stated therein. Appeal Br. 9. We are
unpersuaded by this line of argument, and refer to our discussion of In re
Levin, supra, in this regard.

Appeal 2020-004609
Application 14/649,300

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In view of the above, we affirm the rejection.
CONCLUSION
We affirm the Examiner’s decision.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–3, 5–7, 9–
13, 20–22
103(a) Tapfer, Whalen ‘162,
Whalen ‘859,
Bramley, Rudolph
1–3, 5–7, 9–
13, 20–22

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED