UPFIELD US INC.

Patent Trials and Appeals Board

Jan 6, 2022

2021001113 (P.T.A.B. Jan. 6, 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. 14/771,410 08/28/2015 Theodorus Berend Jan BLIJDENSTEIN 039676.00056 4108 68543 7590 01/06/2022 Arent Fox LLP - Los Angeles 555 West Fifth Street 48th Floor Los Angeles, CA 90013 EXAMINER MCCLAIN, TYNESHA L. ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 01/06/2022 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): patentdocket@arentfox.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THEODORUS BEREND JAN BLIJDENSTEIN, KATRINA GESINA HEIJNE, RENATE GEMMA JACOBINE MARIA JACOBS, and SERGEY MICHAILOVICH MELNIKOV Appeal 2021-001113 Application 14/771,410 Technology Center 1700 Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-8 and 10-19. We have jurisdiction. 35 U.S.C. § 6(b). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Upfield U.S. Inc. Appeal Br. 3. Appeal 2021-001113 Application 14/771,410 2 CLAIMED SUBJECT MATTER The claims are directed to an edible aerated water-in-oil emulsion and a process for the manufacture of the emulsion. Claims 1, 14; Spec. 1:3-6. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An edible aerated water-in-oil emulsion, comprising from 10 to 85 wt. % of a liquid oil; from 0.5 to 50 wt.% of a hardstock fat; from 10 to 85 wt.% of a water-phase; and from 0.45 to 3 wt.% of a lecithin; wherein the emulsion has a Stevens value at 5°C of from 50 to 125, and an overrun of from 2 to 200%; and a water droplet size distribution, as expressed in e-sigma, of at most 2.0. REJECTIONS I. Claims 1-8 and 10-19 under 35 U.S.C. § 103(a) as unpatentable over Wilton2 and II. Claims 1-8 and 10-19 under 35 U.S.C. § 103(a) as unpatentable over Reddy.3 OPINION Each of the independent claims require “a water droplet size distribution, as expressed in e-sigma, of at most 2.0.” Appeal Br. 15-16. The dispositive issue on appeal is whether the Examiner provided sufficient evidentiary support to establish whether the claimed water droplet size distribution is a result-effective variable. See Final Act. 3-4. Because the 2 US 3,682,656, issued August 8, 1972. 3 US 6,171,624 B1, issued January 9, 2001. Appeal 2021-001113 Application 14/771,410 3 Examiner failed to do so on this record, we reverse the obviousness rejections. Rejection over Wilton The Examiner finds that Wilton fails to expressly disclose the water droplet size distribution limitation, but teaches that “the glyceride crystals of the fatty matter [are] present as a three dimensional solid network in which liquid oils and droplets of the aqueous phase are enclosed and . . . this arrangement forms an important contribution to the stability of the margarine emulsion against phase separation.” Final Act. 4 (citing Wilton 1:42-47). The Examiner also finds Wilton discloses the particle size of the hard fat particles and the bubble size of the gas bubbles are critical, too large hard fat particles have too great a tendency to separate from the emulsion system, which tendency cannot sufficiently be counteracted by the stabilizing effect of the dispersed gas bubbles, and if the gas bubbles have too great a diameter they will on storage separate from the spread by buoyancy forces, and thus the emulsion stabilizing effect of the gas bubbles is lost after some time. Id. (citing Wilton 3:14-23). Based on these disclosures, the Examiner determines that it would have been obvious to one of ordinary skill “to adjust the particle size of the components of the emulsion, including the hard fat particles, gas bubbles, and aqueous phase droplets, in the emulsion of Wilton through routine experimentation to obtain a stable emulsion.” Final Act. 4. Appellant argues Wilton fails to recognize that water droplet size distribution is result-effective for any property or outcome. Appeal Br. 8-9. Appellant thus argues “that the ‘routine optimization’ rationale applied in the Office Action is inappropriate.” Id. at 9 (citing In re Aller, 220 F.2d 454 Appeal 2021-001113 Application 14/771,410 4 (CCPA 1955); MPEP § 2144.05(II.A) (9th ed. Rev. 10.2019, rev. June 2020)). We agree with Appellant (Appeal Br. 11) that there is insufficient evidence to establish that varying the water droplet size distribution achieves any particular result. In re Antonie, 559 F.2d 618, 620 (CCPA 1977) (explaining that “the discovery of an optimum value of a variable in a known process is normally obvious,” but not when “the parameter optimized was not recognized to be a result-effective variable.”). The only disclosure of Wilton relied upon by the Examiner that discusses an aqueous phase merely mentions the presence of “droplets of the aqueous phase” as part of a three- dimensional solid network. Wilton 1:42-47. That disclosure fails to tie any particular result to adjusting the water droplet size distribution. Id. For this reason, the rejection cannot be sustained. Rejection over Reddy The Examiner finds that Reddy fails to expressly disclose the water droplet size distribution limitation, but “teaches preparing an emulsion of superior appearance, taste, and texture (no inferior appearance due to phase separation or bleeding or leaching of the various components) comprising water droplets having a size distribution (D3,3) of less than about 10 microns.” Final Act. 11 (citing Reddy Abstract; 1:30-43; 8:19-30). Based on these disclosures, the Examiner determines that it would have been obvious to one of ordinary skill “to optimize the water droplet size distribution in the emulsion of Reddy through routine experimentation to obtain an emulsion of superior appearance, taste, and texture.” Id. Appeal 2021-001113 Application 14/771,410 5 Appellant argues that the relied-upon evidence is silent regarding the result-effective nature of the claimed water droplet size distribution. Appeal Br. 13. We agree with Appellant. Here, the Examiner attempts to combine two seemingly disparate disclosures within Reddy to establish the result-effective nature of varying the water droplet size distribution. Final Act. 11. Specifically, the Examiner identifies Reddy’s discussion in the “Background of the Invention” expressing a general desire to prepare “a heterogeneous edible spread with superior appearance, taste and texture.” Reddy 1:42-43. This portion of Reddy, however, says nothing of water droplet size distribution. Id. The Examiner then points to another portion of Reddy that generally speaks to a water droplet “size distribution (d3.3) of less than about 30 microns, and preferably, less than about 10 microns.” Reddy 8:19-30. This part of Reddy says nothing of water droplet size distribution as expressed in e- sigma, and furthermore fails to discuss any result that can be achieved by varying such distribution. Id. We, therefore, agree with Appellant (Appeal Br. 13-14) that the relied-upon portions of Reddy fail to evince that the water droplet size distribution is result-effective as to the appearance, taste, or texture properties of the emulsion as found by the Examiner. Reddy Abstract; 1:30- 43; 8:19-30; Antonie, 559 F.2d at 620. For this reason, the rejection cannot be sustained. CONCLUSION The Examiner’s rejections are reversed. Appeal 2021-001113 Application 14/771,410 6 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s) / Basis Affirmed Reversed 1-8, 10-19 103(a) Wilton 1-8, 10-19 1-8, 10-19 103(a) Reddy 1-8, 10-19 Overall Outcome 1-8, 10-19 REVERSED