Richard Frye

Patent Trials and Appeals Board

Jan 3, 2022

2021000910 (P.T.A.B. Jan. 3, 2022)

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. 12/976,527 12/22/2010 Richard Keith Frye F6270US 7622 201 7590 01/03/2022 UNILEVER PATENT GROUP 700 SYLVAN AVENUE Floor A4 ENGLEWOOD CLIFFS, NJ 07632-3100 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 3771 NOTIFICATION DATE DELIVERY MODE 01/03/2022 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): patentgroupus@unilever.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RICHARD KEITH FRYE ____________ Appeal 2021-000910 Application 12/976,527 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, 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 finally reject claims 12, 14, and 23-32. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42 (2012). Appellant identifies Conopco, Inc., d/b/a Unilever, a corporation of the State of New York as the real party in interest. Appeal Br. 3. Appellant further states Conopco, Inc. is owned by Unilever United States, which is a member of the Unilever Group of companies owned by Unilever N.V. and Unilever PLC. Appeal Br. 3. Appeal 2021-000910 Application 12/976,527 2 Appellant’s invention seeks to address the loss of consistency in bound salads prepared for use in restaurants and other commercial food- dispensing establishments. Spec. 1. According to Appellant, bound salads lose consistency due to watering out (weeping) of the salad over time. Id. Appellant’s invention addresses this problem by adding a source of glucomannan to the salad. The glucomannan absorbs substantial amounts of water and, as such, prevents “watering out” of the salad. Id. at 3. Claim 12 illustrates the invention: 12. A bound salad product which would otherwise experience water separation, comprising dressing and an inclusion, the dressing comprising an emulsified oil and water or being fat free, the inclusion being anything and everything added to the dressing, and said bound salad product having from 10 to 60 wt% salad dressing and having a water separation level of 3 g or less after 2 days of storage at 4 °C and levels of those of the inclusions that impart moisture, amylase or both in the bound salad of from 5 to 90 wt%, and wherein the inclusion which imparts moisture, amylase or both is a source of amylase and/or moisture and is selected from the group of tuna fish, cabbage, fruits, vegetables, cheese, and meats, and the dressing further comprising glucomannan, the source of which is konjac powder at a level of from 0.3 to 2 wt% of the dressing. Appellant requests review of the Examiner’s rejection of claims 12, 14, and 23-32 under 35 U.S.C. § 103(a) as unpatentable over Ryan (US 6,733,769 B1, issued May 11, 2004) and Elise (Elise Bauer, Waldorf Salad, Simply Recipes (Oct. 2007-Aug. 2009), https://www.simplyrecipes.com/ recipes/waldorf_salad/ (“Elise”)). See generally Appeal Br.; Final Act. 2. Appellant presents arguments only for independent claim 12 and does not separately address the patentability of dependent claims 14 and 23-32. See generally Appeal. Br. Accordingly, we select independent claim 12 as Appeal 2021-000910 Application 12/976,527 3 representative of the appealed claims. 37 C.F.R. § 41.37(c)(1)(iv) (2013). Claims 14 and 23-32 stand or fall with claim 12. OPINION After review of the respective positions provided by Appellant and the Examiner, we affirm the rejection of claims 12, 14, and 23-32 for the reasons presented by the Examiner. We add the following for emphasis. Claim 12 We refer to the Examiner’s Final Action for a complete statement of the rejection of claim 12. Final Act. 2-6. Appellant argues Ryan focuses on methods of lowering viscosity and on therapeutic uses such as lowering cholesterol and blood sugar. Appeal Br. 8. Appellant further argues that, while Ryan mentions water retention among other characteristics, the Examiner points to no teaching of bound salads having the recited levels of water separation. Appeal Br. 8. With respect to Elise, Appellant contends that the Examiner points to no teaching of glucomannan in this reference. Appeal Br. 8. Thus, Appellant asserts that the combined teachings of the cited art would not lead one skilled in the art to the claimed invention. Appeal Br. 8-9. Appellant’s arguments do not identify error in the Examiner’s determination of obviousness. Appellant’s arguments principally attack Ryan and Elise individually and, therefore, do not address adequately the rejection the Examiner presents. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“[O]ne cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references.”); see also id. at 425 Appeal 2021-000910 Application 12/976,527 4 (“[T]he test [for obviousness] is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“the [obviousness] analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Appellant’s arguments do not explain adequately why one skilled in the art, using no more than ordinary creativity, would not have been capable of arriving at the claimed invention from the teachings of the cited art. See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”); see also In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (presuming skill on the part of one of ordinary skill in the art). The Examiner presented a reasonable basis for one skilled in the art to expect the prior art bound salad from the combined teachings of Ryan and Elise and the claimed bound salad to have the same properties, such as a water separation level of 3 grams or less after 2 days of storage at 4 °C. In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art products are identical or substantially identical, . . . the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product.”). Accordingly, the burden is shifted to Appellant to demonstrate that the water separation level of the claimed bound salad was not possessed by the prior art. Appellant argues Examples 1-3 in the Specification show the use of konjac flour-a source of glucomannan-resulted in substantially less Appeal 2021-000910 Application 12/976,527 5 drained liquid (watering out) in comparison with most of the commercial mayonnaise products. Appeal Br. 9; Spec. 11-13. Appellant contends this evidence demonstrates a beneficial unexpected result that would be absent from Ryan and Elise. Appeal Br. 9. When evidence of secondary considerations is submitted, we begin anew and evaluate the rebuttal evidence along with the evidence upon which the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976). The burden of establishing unexpected results rests on Appellant. Appellant may meet this burden by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). The unexpected results must be established by factual evidence, and attorney statements are insufficient to establish unexpected results. See In re Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of unexpected results supported by factual evidence must be reasonably commensurate in scope with the degree of protection sought by the claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980). After weighing Appellant’s evidence in support of patentability, including the examples in the Specification, we determine that a preponderance of the evidence weighs in favor of obviousness. We first note that it is not clear that the showing distinguishes the claimed invention from the closest prior art (Ryan). Appellant has not established that any commercial examples tested in Example 3 is representative of the closest prior art. Further, there is no statement that the commercial examples tested do not contain konjac flour. Appeal 2021-000910 Application 12/976,527 6 Moreover, the showing is not reasonably commensurate in scope with the claim because inventive Examples 1 and 2 comprise 0.500% and 0.300% konjac flour while the claim recites a range of 0.3 to 2 wt % konjac flour. Appellant has not explained why the limited number of inventive examples is representative of the full scope of claim 12. Thus, on this record, Appellant’s evidence is insufficient to show the improvement in water separation level would have been unexpected by one of ordinary skill in the art and that the evidence is reasonably commensurate in scope with the claims. Nor has Appellant explained or directed us to evidence showing why the prior art’s bound salad does not necessarily or inherently possess the disputed property. Accordingly, we affirm the Examiner’s prior art rejection of claims 12, 14, and 23-32 under 35 U.S.C. § 103(a) over Ryan and Elise for the reasons the Examiner presents and we give above. CONCLUSION The Examiner’s prior art rejection under 35 U.S.C. § 103(a) is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 12, 14, 23-32 103(a) Ryan, Elise 12, 14, 23-32 Appeal 2021-000910 Application 12/976,527 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (2013). AFFIRMED