NESTEC S.A.

Patent Trials and Appeals Board

Apr 7, 2021

2020002819 (P.T.A.B. Apr. 7, 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.
15/055,838 02/29/2016 Marie-Louise Mateus 3712036-02588 1021
29157 7590 04/07/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
WATTS, JENNA A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/07/2021 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 MARIE-LOUISE MATEUS, PASCALINE HOEBLER,
NICOLAS AURIOU, and PETER FRANKHAUSER1
____________

Appeal 2020-002819
Application 15/055,838
Technology Center 1700
____________

Before KAREN M. HASTINGS, CHRISTOPHER C. KENNEDY, and
SHELDON M. MCGEE, 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 8–16 and 18–20. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of preparing shelf-
stable liquid whey protein compositions. E.g., Spec. ¶ 2; Claim 8. Claim 8
is reproduced below from page 14 (Claims Appendix) of the Appeal Brief:

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
SOCIÉTÉ DES PRODUITS NESTLÉ S.A. Appeal Br. 2.
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8. A method for producing a neutral, shelf-stable non-gel liquid
composition having an energy content ranging from 110
kcal/100 g to 200 kcal/100 g and a total protein content ranging
from 9 g/100 g to 13 g/100 g for enteral administration, wherein
the total protein content is composed of 60-100% unhydrolysed
intact whey protein, the method comprising:
admixing at least one whey protein source with at least one
carbohydrate source, lipid source, and emulsifier in water at a
temperature range of between 30°C-60°C to form a first mixture;
adding to the first mixture at least one ingredient selected from
the group consisting of a mineral, a vitamin, a trace element, and
a thickening agent, and at least one additional ingredient to form
a second mixture;
adjusting the pH of the second mixture to between 6.5 and 7.5 by
adding a food grade base or acid to obtain a neutral, non-gel
liquid composition that does not gel;
preheating the neutral, non-gel liquid composition at a
temperature of between 60°C-80°C;
a single step of exposing the neutral, non-gel liquid composition
under ultra-high temperature treatment using direct steam
injection at a temperature range of between 140-145°C for 7
seconds holding time to obtain the neutral, shelf-stable non-gel
liquid composition;
homogenizing the neutral, shelf-stable non-gel liquid
composition at a temperature range of 60°C-80°C at a total
pressure of 200 bars;
cooling the neutral, shelf-stable non-gel liquid composition at a
temperature range of 20°C-35°C; and
transferring the neutral, shelf-stable non-gel liquid composition
into a sterilized container for enteral use.
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REJECTIONS ON APPEAL
The claims stand rejected under 35 U.S.C. § 103(a) as follows:
1. Claims 8–13, 15, 16, 18, and 20 over Jost,2 Olson,3 and Kamarei.4
2. Claim 14 over Jost, Olson, Kamarei and Liebrecht.5
3. Claim 19 over Jost, Olson, Kamarei, and Schmitt.6
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 July 11, 2019, and in the Examiner’s Answer.
The Appellant presents arguments for claims 8, 16, and 20. We
address those claims below. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), the remaining claims on appeal will stand or fall with
claim 8, from which they depend.
Claim 8. The statement of the Examiner’s rejection appears at pages
3–12 of the Final Action and is repeated at pages 4–14 of the Examiner’s
Answer. Of particular relevance to the issues raised by the Appellant in this
appeal, the Examiner acknowledges that Jost teaches preparing a protein
phase and a fat phase separately, and separately sterilizing those phases (i.e.,

2 US 2003/0099761 A1, published May 29, 2003.
3 WO 2007/108827 A1, published Sept. 27, 2007.
4 US 6,093,425, issued July 25, 2000.
5 US 6,106,874, issued Aug. 22, 2000.
6 WO 2007/110421 A2, published Oct. 4, 2007.
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two sterilization steps), prior to combining those phases to form a whey
protein composition. E.g., Ans. 7. The Examiner finds, however, that
mixing the protein and fat phases of Jost prior to sterilization would result in
a single sterilization step, and that “selection of any order of performing
process steps is prima facie obvious in the absence of new or unexpected
results.” Id. at 8–9 (quoting MPEP § 2144.04(IV)(C)). The Examiner also
finds that both Olson and Kamarei teach similar compositions in which the
protein and fat are mixed together prior to a single sterilization step. Ans. 11
(discussing Kamarei), 12 (discussing Olson). The Examiner finds that it was
known in the art that the protein and fat phases could either be individually
sterilized and then mixed (as in Jost), or mixed and then subjected to a single
sterilization step together (as in Kamarei and Olson). Ans. 13. In view of
those findings, the Examiner finds that it would have been an obvious
alternative to mix Jost’s protein and fat phases prior to sterilization, resulting
in a single sterilization step as required by claim 8. See Ans. 4–14.
The Appellant first argues that Jost teaches away from a single
sterilization step. Appeal Br. 6–7. The Appellant relies on Jost’s disclosure
that, “[a] third important element is the introduction in adequate proportions,
of a separately sterilized fat phase.” Id. at 8 (quoting Jost ¶ 25).
That argument is not persuasive of reversible error in the rejection.
The relied upon paragraph is expressly described by Jost as a “preferred
embodiment.” Jost p.2 (header preceding ¶ 23). Moreover, that paragraph
does not criticize or disparage combining the protein phase and the fat phase
prior to sterilization; it simply discloses that a separately sterilized fat phase
is preferred in Jost. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004)
(“The prior art’s mere disclosure of more than one alternative does not
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constitute a teaching away from any of the[] [disclosed] alternatives . . . .”);
cf. In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012) (“[J]ust because
better alternatives exist in the prior art does not mean that an inferior
combination is inapt for obviousness purposes.”). The Appellant does not
persuasively dispute the Examiner’s findings that both Olson and Kamarei
independently teach or suggest heat treatment after mixture of a protein
phase and a fat phase, and that mixing prior to heat treatment was known in
the art as an alternative to heat treatment prior to mixing. See Ans. 11–13.
On this record, we are not persuaded that Jost teaches away from the
claimed invention.
The Appellant also argues that “the specification demonstrates
attendant advantages of the specifically claimed single step sterilization,”
e.g., “that the claimed single step sterilization is simpler and more cost-
effective.” Appeal Br. 7–8.
That argument is unpersuasive because “any superior property must
be unexpected to be considered as evidence of non-obviousness.” See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in
original). The Appellant has not argued that the alleged “attendant
advantages,” Appeal Br. 7, would have been unexpected.
The Appellant also argues that the Examiner’s rejection is improperly
based on hindsight. Id. at 8–9.
That argument is unpersuasive because, as explained above, the
Appellant does not persuasively dispute the Examiner’s findings that both
Olson and Kamarei independently teach heat treatment after mixture of a
protein phase and a fat phase, and that mixing prior to heat treatment was
known in the art as an alternative to heat treatment prior to mixing. See
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Ans. 11–13. The Examiner’s proposed combination is based on the
disclosures of Olson and Kamarei; not on impermissible hindsight. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“The combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.”); see also id. (“[W]hen a
patent claims a structure already known in the prior art that is altered by the
mere substitution of one element for another known in the field, the
combination must do more than yield a predictable result.”); In re Burhans,
154 F.2d 690, 692 (CCPA 1946) (rearranging sequence of steps may be
prima facie obvious); In re Gibson, 39 F.2d 975, 976–77 (CCPA 1930)
(selection of any order of mixing ingredients is prima facie obvious).
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 8. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to
identify the alleged error in the examiner’s rejections . . . .”).
Claim 16. Claim 8 recites a homogenization temperature range of
60–80°C. Appeal Br. 14 (Claims Appendix). Claim 16 depends from claim
8 and recites, “wherein the homogenizing step is performed at 65°C.” Id. at
15.
The Examiner acknowledges that the prior art “teach[es] the claimed
homogenization step at a temperature of 60°C,” but determines that “one of
ordinary skill in the art would have reasonably expected similar results of
homogenization at 60 or 65°C, absent any teachings of criticality associated
with the claimed homogenization temperature.” Ans. 15.
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In the Appeal Brief, the Appellant argues that the Examiner’s
“conclusory statement” is inadequate to support an obviousness rejection.
Appeal Br. 10.
In the Answer, the Examiner responds by repeating the Examiner’s
finding that there is no patentable distinction between homogenizing at 60 or
65°C, and the Examiner also cites MPEP § 2144.05(I) for the proposition
that “a prima facie case of obviousness exists where the claimed ranges and
prior art ranges do not overlap but are close enough that one skilled in the art
would have expected them to have the same properties.” Ans. 25.
The Appellant files a Reply Brief but does not further address
claim 16.
Although temperature values of 60°C (prior art) and 65°C (claim 16)
are not ranges, the Appellant does not dispute the Examiner’s findings that
homogenization temperatures of 60°C and 65°C would yield the same
results or that they are sufficiently close to each other that a person of
ordinary skill in the art would have viewed a temperature of 65°C as obvious
in view of a disclosed temperature of 60°C. On this record, we are not
persuaded of reversible error in the Examiner’s rejection of claim 16. See In
re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (“We have also held that
a prima facie case of obviousness exists when the claimed range and the
prior art range do not overlap but are close enough such that one skilled in
the art would have expected them to have the same properties.”); In re Aller,
220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected that a
change in temperature . . . would be an unpatentable modification.”).
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Claim 20. Claim 20 depends from claim 8 and recites that “the
energy content of the . . . composition ranges from about 180 kcal/100 g to
200 kcal/100 g.” Appeal Br. 15 (Claims Appendix).
The Examiner finds that Jost’s disclosure of “compositions having
energy densities up to 2kcal/ml” teaches or suggests the subject matter of
claim 20. Ans. 5.
The Appellant argues that “nothing in Jost actually discloses this
energy content.” Appeal Br. 11–12.
That argument is not persuasive. At paragraph 15, Jost expressly
discloses compositions having “an energy density of between 1 and 2
kcal/ml.” The Appellant does not dispute the Examiner’s finding that an
energy density of 2 kcal/ml corresponds to the recited density range of
“about 180 kcal/100 g to 200 kcal/100 g.”
On this record, we are not persuaded of reversible error in the
Examiner’s rejection of claim 20.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§ Reference(s)/Basis Affirmed Reversed
8–13, 15, 16,
18, 20 103(a) Jost, Olson, Kamarei
8–13, 15,
16, 18, 20
14 103(a) Jost, Olson, Kamarei, Liebrecht 14
19 103(a) Jost, Olson, Kamarei, Schmitt 19
Overall
Outcome 8–16, 18–20
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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