Sharma, Shri K. et al.

Patent Trials and Appeals Board

Sep 4, 2019

13501013 - (D) (P.T.A.B. Sep. 4, 2019)

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.
13/501,013 09/14/2012 Shri K. Sharma 003278.00788 3909
23409 7590 09/04/2019
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN AVENUE
Suite 3300
MILWAUKEE, WI 53202
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/04/2019 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHRI K. SHARMA, ABELARDO GUTIERREZ DEL TORO, and
AMAN K. SHARMA1
____________

Appeal 2019-000499
Application 13/501,013
Technology Center 1700
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
LILAN REN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants request our review under 35 U.S.C. § 134(a) of the
Examiner’s decision finally rejecting claims 1–7, 9, 10, 14, 15, and 17–33.
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).

1 Appellants identify the real party in interest as Rich Products Corporation.
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STATEMENT OF THE CASE
Claim 1 is illustrative of Appellants’ subject matter on appeal and is
set forth below:
1. A whippable composition including a plurality of
particles and comprising 4 to 10% fat, 0.1 to 0.5% fiber, 0.5 to
2.0% protein, 0.1 to 0.6% emulsifiers, 10-20% sweeteners, 0.3 to
1.0% stabilizers and 35 to 65% water, said fiber is insoluble fiber,
said stabilizer includes hydrophilic colloids, said sweetener
includes one or more compounds selected from the group
consisting of monosaccharides, disaccharides and
polysaccharides, said sweetener absent com syrup, said
whippable composition formulated to be whipped to form a
product having an overrun of at least 394% and which is stable
and can be stored and distributed at refrigerated temperatures
after being whipped, the particles including said fiber; and
wherein the fat is palm kernel oil or coconut oil or
combinations and fractions thereof.

THE REJECTIONS
1. Claims 25–33 are rejected under 35 U.S.C. § 112(b) or 35
U.S.C. § 112 (pre-AIA), second paragraph, as being indefinite.
2. Claims 1, 3, 4, 6, and 10 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Cain et al. (US 5,409,719; iss.
Apr. 25, 1995).
3. Claims 1–7, 9, 10, 14, 15, and 17–33 are rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Murphy et al.
(US 5,336,515; iss. Aug. 9, 1994) in view of Dell et al. (US
4,505,943; iss. Mar. 19, 1985).

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ANALYSIS
For purposes of this appeal, we address separately argued claims 1, 3
4, 14, and 25, and the remaining claims stand or fall with the argued claims,
consistent with 37 C.F.R. § 41.37(c)(1)(iv) (2017).2
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 each of the Examiner’s prior art rejections on appeal for the reasons
set forth in the Final Office Action and in the Answer, and affirm for the
reasons presented in the record by the Examiner. However, we reverse the
indefiniteness rejection.

Rejection 1
It is the Examiner’s position that the limitation “at least 80% of the
particles in said composition are between 5 and 200 microns, at least 90% of

2 We note that where Appellants’ statements do not constitute substantive
arguments as to the separate patentability of certain claims because
Appellants merely assert without further explanation that an applied
reference does not disclose, and would not have suggested, the subject
matter recited in these claims, we do not separately address such claims (see,
e.g., pages 48–50 of the Appeal Brief). In re Lovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011) (“[T]he Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art. Because Lovin did not provide such arguments,
the Board did not err in refusing to separately address claims 2–15, 17–24,
and 31–34.”).

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the particles are at least 2 microns” is indefinite. Ans. 3. However, we agree
with Appellants that claim 25 is definite for the reasons provided by
Appellants on pages 27–28 of the Appeal Brief and on pages 1–3 of the
Reply Brief. We thus reverse Rejection 1.

Rejection 2
We refer to the Examiner’s stated position as set forth on pages 3–5
and 12–16 of the Answer and adopt the position therein as our own.
Appellants’ position is set forth on pages 28–36 of the Appeal Brief
and on pages 3–8 of the Reply Brief.3 We are unpersuaded by Appellants’
arguments in the record for the reasons presented by the Examiner in the
record, including the Examiner’s position on pages 12–16 of the Answer.
We emphasize that when claimed ranges overlap or lie inside ranges
disclosed by the prior art for every component in a claim, a prima facie case
of obviousness is established. See In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003); In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). Indeed,
the law is replete with cases in which the difference between the claimed
invention and the prior art is some range or other variable within the claims.

3 It is noted that Appellants present certain arguments in the Reply Brief for
the first time. For example, on page 6 of the Reply Brief, Appellants argue
for the first time that Cain teaches that the thickener content plus the
sweetener content divided by the water content is greater than 1.5. Cain, col.
3, ll. 1–32 (we note that this is one embodiment of Cain so Cain is not
limited to this embodiment). We will not consider such new argument and
evidence because they are not accompanied by a showing of good cause
explaining why the argument and evidence could not have been presented in
the Appeal Brief. See Ex parte Borden, 93 USPQ2d 1473, 1476–77 (BPAI
2010) (informative).

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These cases have consistently held that the Appellants must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range. In re Woodruff,
919 F.2d 1575, 1578 (Fed. Cir. 1990).
In view of the above, we affirm Rejection 2.

Rejection 3
We refer to the Examiner’s stated position as set forth on pages 5–12
and on pages 16–19 of the Answer, and adopt the position therein as our
own.
Appellants’ position is set forth on pages 36–50 of the Appeal Brief
and on pages 9–14 of the Reply Brief. We are unpersuaded by Appellants’
arguments in the record therein for the reasons presented by the Examiner in
the record, including the Examiner’s response made on pages 12–19 of the
Answer. We add that in addition to the reasons given by the Examiner, we
note that Appellants’ arguments are not persuasive because they are based
on alleged deficiencies in the teachings of the individual references, and fail
to show error in the Examiner’s findings and conclusions with respect to the
combined teachings of the references. See In re Young, 927 F.2d 588, 591
(Fed. Cir. 1991) (explaining that the test for obviousness is what the
collective teachings of the prior art would have suggested to one of ordinary
skill in the art); In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991). Also, as
stated by the Examiner on page 19 of the Answer (for example), the
teachings of the applied art are not limited to the examples or to a single
embodiment; rather the entire disclosure is available for all that it teaches to
one skilled in the art. With regard to Appellants’ arguments regarding the
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Declarations (Reply Br. 10–11), we are unpersuaded by them for the reasons
stated by the Examiner on pages 14–15 of the Answer.

DECISION
Rejection 1 is reversed.
Rejections 2 and 3 are affirmed.
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