Upfield US Inc.

Patent Trials and Appeals Board

Jan 31, 2022

2021001258 (P.T.A.B. Jan. 31, 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. 14/005,911 09/18/2013 Arjen Bot 039676.00046 7180 68543 7590 01/31/2022 Arent Fox LLP - Los Angeles 555 West Fifth Street 48th Floor Los Angeles, CA 90013 EXAMINER ZILBERING, ASSAF ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 01/31/2022 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 ARJEN BOT, WILHELMUS CASTENMILLER, INGE DEUTZ, CORNELIS KROON, and ANNA MARIA RUTGERS VAN DER LOEFF Appeal 2021-001258 Application 14/005,911 Technology Center 1700 Before KAREN M. HASTINGS, JAMES C. HOUSEL, and JEFFREY R. SNAY, Administrative Patent Judges. HOUSEL, 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 1-28 under 35 U.S.C. § 103(a) as 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Upfield U.S. Inc. as the real party in interest. Appeal Brief (“Appeal Br.”) filed June 1, 2020, at 3. Appeal 2021-001258 Application 14/005,911 2 unpatentable over Masuda2 in view of Ichiyama,3 as evidenced by Buttermilk Powder4 and Skim Milk Powder.5 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to edible oil-in- water emulsion compositions (see, e.g., claim 1). Appellant discloses that dairy cream is useful in various food products due to its richness in taste, texture, and mouthfeel. Specification (“Spec.”) filed September 8, 2013, 1:12-22. However, according to Appellant, dairy cream is relatively expensive, has limited shelf life, and exhibits fluctuations in its composition and properties. Id. at 1:24-26. In view of this, dairy cream alternatives (“DCA”), oil-in-water emulsions based on vegetable or dairy fats and/or oils, a source of protein, and emulsifiers, have been developed to provide a more cost-effective, consistent product. Id. at 1:28-32, 2:1-2. Appellant teaches that conventional DCAs are usually not multipurpose products because they are either suited for whipping applications or as an additive without whipping (e.g., in drinks, sauces, and soups) and tend to show defects when used for other applications. Id. at 4:23-28. In view of this, 2 Masuda et al., JP 2008-154469 A, published July 10, 2008 (“Masuda”). Further references to Masuda will be to Appellant’s English language translation of Masuda filed on April 7, 2014. 3 Ichiyama et al., US 2009/0246345 A1, published Oct. 1, 2009 (“Ichiyama”). 4 Buttermilk Powder - Milkingredients, www.milkingredients.ca/index- eng.php?id=172 (Oct. 17, 2011) (“Buttermilk Powder”). 5 Skim Milk Powder - Milkingredients, www.milkingredients.ca/index- eng.php?id192 (Apr. 9, 2004) (“Skim Milk Powder”). Appeal 2021-001258 Application 14/005,911 3 Appellant discloses edible oil-in-water emulsion compositions that are multipurpose DCA compositions. Id. at 5:8-19.6 Claim 1, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 1. An edible oil-in-water emulsion composition, comprising: 18 to 50 wt% of a fat phase; 1.8 to 3 wt% of protein; 0.2 to 1 wt% of sucrose fatty acid esters, wherein at least 70 wt% of the total amount of sucrose fatty acid esters is sucrose monostearate, sucrose monopalmitate, or a combination thereof, and the sucrose fatty acid esters have a hydrophilic to lipophilic balance (HLB) of greater than 15; and at least 35 wt% of water; wherein the composition has a pH of between 6 and 8, and comprises 5 to 10 wt% of concentrated milk derivatives. OPINION We review the appealed rejection for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in 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.”)). After considering Appellant’s arguments and the evidence of record, we are not persuaded of reversible error in the stated rejection for the findings, reasoning, and 6 This Decision also cites to the Final Office Action (“Final Act.”) dated September 30, 2019, and the Examiner’s Answer (“Ans.”) dated September 22, 2020. Appeal 2021-001258 Application 14/005,911 4 conclusions set forth in the Examiner’s Answer, which we adopt as our own. We offer the following for emphasis. The Examiner finds Masuda discloses an oil-in-water emulsion comprising 20-50% oil phase, 0.2-3% sucrose fatty acid ester, and 50-80% water. Ans. 4. Because Masuda’s oil, sucrose fatty acid ester, and water content overlap the recited content of these components in the claims, the Examiner concludes that the recited content of each of these constituents would have been prima facie obvious. Id. (citing MPEP § 2144.05). The Examiner finds Masuda discloses its sucrose fatty acid ester comprises at least 50% sucrose monoesters of fatty acids, such as stearic acid (i.e., sucrose monostearate) and/or palmitic acid (i.e., sucrose monopalmitate). Id. Indeed, the Examiner finds Masuda discloses the use of a sucrose fatty acid ester (i.e., S1670) which Appellant discloses as an exemplary sucrose fatty acid ester containing at least 75% monoesters with 70% stearate and 30% palmitate residues and having an HLB value greater than 15. Id. at 4-5. The Examiner finds that Masuda discloses the use of milk derivatives as a source of protein, such as buttermilk powder, skim milk powder, and whole milk powder, but does not disclose the amount recited in claim 1 for a concentrated milk derivative. Ans. 6. For this feature, the Examiner finds Ichiyama discloses that an oil-in-water emulsion may include 1-14 wt% of a milk derivative, such as buttermilk powder, skim milk powder, and/or whole milk powder, and that the inclusion of too little powder results in the deterioration of emulsion stability and milk taste while the inclusion of too much powder results in increased viscosity and cost. Id. The Examiner concludes it would have been obvious to modify Masuda’s oil-in-water composition in view of Ichiyama’s disclosure to adjust the amount of milk Appeal 2021-001258 Application 14/005,911 5 derivatives (e.g., buttermilk powder, skim milk powder, and/or whole milk powder) to obtain an emulsion having a desired flavor, stability, and viscosity. Id. at 6-7. Further, the Examiner determines that in doing so, the resulting emulsion would necessarily provide a protein content as recited in claim 1. Id. at 7 (citing Buttermilk Powder and Skim Milk Powder). The Examiner also finds that Masuda’s oil-in-water emulsion is stable in pH levels of 5-10, but fails to specifically disclose the pH of the emulsion. Id. at 5. Nonetheless, the Examiner finds that Masuda’s emulsion, as modified in view of Ichiyama, comprises the same or similar constituents and is prepared by the same or similar process as recited in the claims. Id. Moreover, the Examiner finds that Masuda’s modified emulsion includes an amount of water without added strong acid or base. Id. As such, the Examiner finds that Masuda’s modified emulsion would inherently have a pH between 6 and 8. Id. (citing MPEP § 2112.01). Appellant argues that the Examiner improperly relies upon a theory of inherency to supply multiple claim limitations contrary to Federal Circuit guidance that the scope of the inherency doctrine is quite narrow, especially in the context of an obviousness rejection. Appeal Br. 5. Appellant contends that the Examiner relies on inherency to satisfy the pH of 6-8 limitation of claim 1, the solid fat content at 5 and 35 degrees C limitation of claim 2, the whipping time limitation of claim 25, and the firmness limitation of claim 28, each of which is inappropriate. Id. at 6-7. In particular, Appellant asserts that, for example, the Examiner fails to set forth a plausible basis for concluding that a whipping time or a Stevens firmness value are inherent properties of the prior art (i.e., Masuda in view of Ichiyama). Id. at 7. Appellant contends that, to the contrary, whipping time is not an inherent Appeal 2021-001258 Application 14/005,911 6 property of the composition. Id. Appellant similarly contends that the Examiner fails to demonstrate that the solid fat content limitation of claim 2 necessarily flows from Masuda, especially because the Examiner concedes that some of Masuda’s fats are different from those disclosed in Appellant’s application. Id. Appellant’s arguments are not persuasive of reversible error. Initially, Appellant contends that the Examiner improperly relies on inherency to satisfy the pH of 6-8 limitation of claim 1. However, as set forth above, the Examiner provides a reasonable basis for finding that Masuda’s emulsion, modified in view of Ichiyama, would necessarily have a pH in the range of 6-8. Appellant fails to dispute or otherwise address, with any particularity, the Examiner’s findings and reasoning in support of the Examiner’s inherency finding in this regard. As to claim 2, which recites that the fat phase has a solid fat content of 40 wt% or more at 5 degrees C, and of 5 wt% or less at 35 degrees C, the Examiner finds that Masuda’s fat phase comprises vegetable fats and oils, 3% or less of which are hydrogenated with solid fat content of not less than 90% at 10°C, and/or melting points between 40-50°C for preferred good melting in the mouth. Ans. 7. The Examiner also finds that Masuda’s fats and oils are the same or similar to Appellant’s fats and oils. Id. Appellant fails to identify any difference between Masuda’s fats and oils and the recited fat phase of claim 2. Thus, the Examiner’s inherency finding has a reasonable basis, especially because an at least 90% solid fat content at 10°C is sufficient to meet the recited solid fat content of 40 wt% or more at 5°C, and, as the Examiner finds without dispute, 5 wt% or less at 35°C “clearly is Appeal 2021-001258 Application 14/005,911 7 a good melting in the mouth profile as the mouth temperature is around 37°C.” Id. As to claim 25, which recites that the emulsion is in a whipped state produced by a whipping time of 2.2-4 minutes, the Examiner finds that Masuda discloses that the emulsion may be whipped.7 Ans. 10, 13. In addition, the Examiner finds that Masuda’s emulsion, as modified in view of Ichiyama, comprises the same or similar constituents and is prepared by the same or similar process as recited in the claims. Id. Therefore, the Examiner finds that Masuda’s emulsion, as modified in view of Ichiyama, would inherently achieve the whipped state following 2.2-4 minutes of whipping. Id. Although Appellant contends that whipping time is not an inherent property of an oil-in-water emulsion, we disagree. Provided that the emulsion is capable of achieving a whipped state, the time it takes to achieve such a state is an inherent property of the emulsion (and other whipping parameters such as whipping speed). In other words, under the same whipping conditions, two identical emulsions will achieve a whipped state in the same time. As to claim 28, which recites a firmness of between 50 and 80, as measured in Stevens value, the Examiner similarly finds that Masuda’s emulsion, as modified in view of Ichiyama, comprises the same or similar constituents and is prepared by the same or similar process as recited in the claims. Ans. 11. Appellant fails to dispute or otherwise identify reversible error in this finding. This finding is sufficient to provide a reasonable basis 7 We note that this claim fails to recite, in any detail, the nature or properties of the whipped state of the emulsion. As such, this claim merely recites the state of the emulsion after 2.2-4 minutes of whipping. Appeal 2021-001258 Application 14/005,911 8 for the Examiner’s finding that Masuda’s emulsion, as modified in view of Ichiyama, would necessarily have the same or similar firmness as that claimed. Appellant next argues that Masuda only provides 1% whey protein and, even if modified in view of Ichiyama to adjust the amount of milk derivatives to attain the desired flavor, stability, and viscosity, such fails to establish that the protein content in an oil-in-water emulsion “would be result-effective as to any parameter.” Appeal Br. 9. Further, Appellant contends that the narrow range of protein recited in claim 1 is critical, and Masuda and Ichiyama fail to guide a skilled artisan to select a protein content in this range. Id. In this regard, Appellant asserts that below the recited range, “the behavior of the composition upon whipping gets unpredictable in terms of firmness, whipping time and further processability.” Id. Thus, according to Appellant, Masuda’s emulsion, even when combined with Ichiyama, would display unpredictable whipping time and firmness parameters. Id. This argument is also not persuasive of reversible error. As the Examiner finds, Masuda teaches that milk derivatives, such as buttermilk and skim milk powder may be added to the composition. Masuda ¶ 16. In addition, the Examiner’s finds, without dispute, that Ichiyama teaches that an oil-in-water emulsion suitable for whipping includes 1-14 wt% of a milk derivative, such as buttermilk or skim milk powder (most preferably 4-10 wt%). Ichiyama ¶ 24. Ichiyama further teaches that, when the amount of this constituent is smaller, the emulsion has decreased stability and milk taste, and, when the amount is larger, the emulsion has increased viscosity and cost. Id. As the Examiner finds, again without dispute, about a third of milk Appeal 2021-001258 Application 14/005,911 9 derivatives, such as buttermilk and skim milk powders, comprise protein. Ans. 7 (citing Buttermilk Powder and Skim Milk Powder as evidentiary support). Therefore, the Examiner reasonably determines that adjusting the amount of milk derivative added to Masuda’s emulsion to attain an oil-in- water emulsion with desired flavor, stability, and viscosity would necessarily result in a protein content within the recited range. Moreover, although Appellant teaches that a protein content within the recited range of the claims is essential (see Spec. 9:28-10:9), Appellant neither argues nor directs our attention to any evidence that the recited protein content range produces unexpected results. To the contrary, we note that the desirable properties achieved with a protein content in the recited range are substantially the same as the desirable properties which Ichiyama teaches are associated with the amount of milk derivatives in the emulsion. As indicated above, Ichiyama teaches that when the amount of milk derivative is too low, the emulsion has decreased stability and poor milk taste, as compared to Appellant’s teaching that low protein content has unpredictable firmness, whipping time, and processability, as well as poor taste. Similarly, Ichiyama teaches that when the amount of milk derivative is too high, the emulsion has increased viscosity and cost, as compared to Appellant’s teaching that high protein content has too high a viscosity to be processed. Compare Ichiyama ¶ 24 with Spec. 9:28-10:9. Accordingly, we sustain the Examiner’s obviousness rejection of claims 1-28 as unpatentable over Masuda in view of Ichiyama, as evidenced by Buttermilk Powder and Skim Milk Powder. Appeal 2021-001258 Application 14/005,911 10 CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Examiner’s Answer, the Examiner’s decision to reject claims 1- 28 under 35 U.S.C. § 103(a) as unpatentable over Masuda in view of Ichiyama, as evidenced by Buttermilk Powder and Skim Milk Powder, is affirmed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-28 103(a) Masuda, Ichiyama, Buttermilk Powder, Skim Milk Powder 1-28 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