Ex Parte 6777014 et al

Patent Trial and Appeal Board

Sep 8, 2015

95000238 (P.T.A.B. Sep. 8, 2015)

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.
95/000,238 04/20/2007 6777014 LEE655/52000 2959
60474 7590 09/09/2015
GRAY ROBINSON, P.A.
P.O. Box 2328
FT. LAUDERDALE, FL 33303-9998
EXAMINER
KUNZ, GARY L
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
09/09/2015 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE PATENT TRIAL AND APPEAL BOARD
____________

SARA LEE CORPORATION
Requester and Appellant

v.

NATURE’S FIRST, INC.
Patent Owner and Respondent
____________

Appeal 2015-003839
Reexamination Control 95/000,238
Patent 6,777,014 B2
Technology Center 3900
____________

Before LORA M. GREEN, RICHARD M. LEBOVITZ, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

FINAL DECISION ON APPEAL UNDER 37 C.F.R. § 41.77(f)

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In an earlier Decision (mailed September 19, 2013, Appeal No. 2013-
006017)) (hereinafter “Decision”), the Board entered rejections for claims
1–7, 10, 12–17, 20, 21, 26, 27, and 30 designated as new grounds under
37 C.F.R. § 41.77(b). See Decision 26. Patent Owner, Nature’s First, Inc.
(hereinafter “Patent Owner”), elected to reopen prosecution under 37 C.F.R.
§ 41.77(b)(l). See Request to Reopen Prosecution before the Examiner
under 37 C.F.R. § 41.77(b)(l) (dated October 21, 2013) (hereinafter
“Request”). In the Request, Patent Owner submitted amendments to claims
1, 2, 4, 5, 7, 10, 13, 15, 17, 21, 27 and 30 and cancelled claims 6, 12, 14, 16,
20, and 26. Patent Owner further provides new evidence in the form of the
Third Declaration of Harjit Singh Under 37 C.F.R. § 1.132, executed on
October 18, 2013.
On November 20, 2013, pursuant to 37 C.F.R. § 41.77(c), third party
requester, Sara Lee Corporation (hereinafter “Requester”), filed comments
in reply to Patent Owner’s Request. The Examiner entered a Determination
under 37 C.F.R. § 41.77(d) on September 8, 2014 (hereinafter
“Determination”). Patent Owner and Requester submitted further comments
under 37 C.F.R. § 41.77(e) on October 8, 2014 and November 7, 2014,
respectively (hereinafter “PO Comments” and “Req. Comments,”
respectively).
The proceeding has been returned to the Board under 37 C.F.R.
§ 41.77(f) for a final decision. Our new Decision is deemed to incorporate
the earlier Decision, except for those portions specifically withdrawn herein,
if any. 37 C.F.R. § 41.77(f).
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The ’014 Patent relates to the use of “agglomerate[ed]” or
“instantiz[ed]” milk powder for beverage vending purposes. Col. 2, ll. 24–
41. The independent claims 1, 4, 5, 7, 10, and 30 were amended limiting the
scope to a method of preparing a dairy beverage having an agglomerated
nonfat dry milk powder “specifically manufactured for use in devices which
vend hot beverages” and with a moisture content in the range of 2.8% to
3.5%. Claim 10, which is illustrative of the claimed subject matter, reads as
follows (with underlining showing added text, brackets showing deleted text
relative to the original patent claim, and italics showing language changes in
the Request):
10. A method of preparing a dairy beverage which includes
a natural dairy beverage additive, the natural dairy additive
being specifically manufactured for use in devices which vend
hot beverages, the method comprising the steps of:
agglomerating [liquid] natural milk into an agglomerated
non fat dry milk [a natural dairy beverage additive] powder
consisting of dairy ingredients only, wherein [such that] the
agglomerated non fat dry milk powder has a particle bulk
density in the range of 0.25 g/cc to 0.34 g/cc, a moisture
content in the range of 2.8% to 3.5%, and a scorched particle
mass not greater than 15 milligrams; and
placing at least the agglomerated non fat dry milk powder
and coffee into a device which vends hot beverages.
Request 5.
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Patent Owner contends that the amendments submitted with the
Response overcome all the grounds of rejection entered in the earlier
Decision,1 namely:
I. Claims 1–5, 7, 10, 13, 15, 17, 21, 27, and 30 under 35 U.S.C.
§ 103(a) as obvious over Pisecky;2
II. Claims 1–5, 7, 10, 13, 15, 17, 21, 27, and 30 under 35 U.S.C.
§ 103(a) as obvious over Peebles3 in view of published
U.S. Standards for either Whole or Nonfat Dry Milk (together
referred to as “US Grade Standards”)4 and any one of the
Vending Machine References;5

1 The rejections in the Decision were directed to claims 1–7, 10, 12–17, 20,
21, 26, 27, and 30, however the recited rejections herein do not include
claims 6, 12, 14, 16, 20, and 26 that have been cancelled in the Request.
2 Jan Pisecky, Handbook of Milk Powder Manufacture, Niro A/S, 1997
(“Pisecky”).
3 US 2,835,586, issued May 20, 1958, to David D. Peebles (“Peebles”).
4 USDA Specifications for Instant Dry Whole Milk, published by the
US Department of Agriculture, Agricultural Marketing Service, Dairy
Division, (January 1993) and United States Standards for Grades of Nonfat
Dry Milk (Spray Process), published by the US Department of Agriculture,
Agricultural Marketing Service, Dairy Division (February 2, 2001). Since
the claims are directed only to nonfat milk, we reference only the latter
document as “US Grade Standards.”
5 The Examiner appears to rely on the US Grade Standards, but does not
expressly include these references in the rejection. See RAN 49–52.
Requester states the non-adopted rejection as including the US Grade
Standards (Req. App. Br. 6 and 23), and Patent Owner agrees with the
rejection as stated by Requester. PO Res. Br. 3 and 13.
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OBVIOUSNESS BASED ON PISECKY
Findings of Fact
Instant Properties
In the Decision, we explained that Pisecky describes that
agglomerated nonfat (or skim) milk has “instant properties” under certain
conditions, namely having a mean particle size higher than 180 microns, a
bulk density of not higher than 0.48 g/cm3, less than 20% of particles smaller
than 125 microns and a fat content of not higher and preferably well below
1%. Decision, 7; Pisecky, Section 8.2.1, page 112.
Pisecky teaches that the “usual quality requirements for instant skim
milk” include a maximum bulk density of 0.48 g/cm3 and “scorched
particles” not greater than 15 milligrams. Decision 7. Pisecky also teaches
“moisture content max. 3.5%.” Pisecky, Section 8.2.1, page 112;
Determination 4; RAN 41-44.
Low Bulk Density
In the Decision, we found that Pisecky states that “low bulk density,
as achieved by agglomeration[,] is an important factor influencing other
powder properties, mainly flowability and instant properties.” Decision 9;
Pisecky, Section 10.3, page 154 (emphasis added). Pisecky describes the
many factors involved in controlling the bulk density of milk powders.
Decision 9; Pisecky 154–161. For example, Pisecky teaches “[t]he main
tools for obtaining a low bulk density are agglomeration and increasing the
occluded air content.” Decision 9; Pisecky 161 (emphasis omitted). Pisecky
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particularly discloses bulk densities as low as 0.35 g/cm3. Decision 9;
Pisecky, Section 8.2.1, page 112.
Flowability in vending machines of hot drinks
Pisecky states that “good flowability is the necessary qualification of a
product for its intended utilization, e:g [sic] powders to be used in
dispensing machines for various hot or cold drinks.” Decision 9; Pisecky,
Section 10.5, page 165 (emphasis added).
Pisecky further teaches that “better flowability is associated with
higher bulk density, especially the loose value. The tapped-to-constant bulk
density value remains almost unchanged.” Id. An additional element
affecting flowability, as described by Pisecky, is a high fat content.
Decision 10; Pisecky 166 (“[A] very detrimental effect on flowability is a
high free fat content especially if low melting fat is involved”).
Pisecky further explains that loose value is a measure of bulk density
with no compaction and that “tapped-to-constant” bulk density is a
measurement of bulk density with some compaction. Id. at Section 11.3,
page 195. Pisecky teaches that the “difference between loose- and tapped-
to-extreme- bulk density is not a constant value but depends, among other
factors, mainly on flowability. With good free-flowing powders this
difference is relatively small.” Id. Finally, Pisecky describes expected
flowability of agglomerated skim milk powder and rewetted agglomerated
skim milk powder based on a particular objective testing protocol described
therein. Id. at Section 11.18, page 215.
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Analysis
The Examiner found that Pisecky describes a moisture content that
overlaps the newly added moisture content recited in the claims.
Determination 6. Patent Owner does not dispute this finding. See generally
PO Comments.
Patent Owner contends that the claimed ranges for bulk density,
moisture content, and scorched particle mass are “critical ranges” for and
provide “unexpectedly superior results” upon use in hot beverage vending
machines. Request 12–13; PO Comments 4. Patent Owner further contends
that Nature’s First Milk Topping powder, having the properties recited in the
claims, has had “continued commercial success.” Request 9; PO Comments
9–10. Patent Owner relies on the additional testimony of Dr. Singh.
Unexpected Results
Dr. Singh testified that he had performed “objective (using
appropriate measuring instruments) and subjective flowability, solubility,
and dispersion tests on various formulations of agglomerated NDM powders
in an effort to obtain an optimal formulation or range of formulations for
using the powder in a hot beverage vending machine without requiring the
use of non-dairy flow agents.” Third Singh Decl. ¶ 9. In particular, Dr.
Singh testifies to testing agglomerated NDM powders (listed as powders A
through E) having the following characteristics and with the following
results which we have summarized in the table below. Id. ¶¶ 9–14.
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A B C D E
scorched
particle mass
(mg)
“15 mg or less” “15 mg or less” “15 mg or
less”
“15 mg or
less”
“15 mg or
less”
bulk density
(g/cc)
“from about 0.38”
to “about 0.50”
“from about
0.22” to “about
0.18”
0.25-0.34 0.25-0.34 0.25-0.34
Moisture
content (%)
2.8-3.5 2.8-3.5 “from about
3.8” to “about
5.5”
“from about
2.5” to “about
2.0”
2.8-3.5
result “poor flowability”
because it
“tended to bridge”
“large particles
that often
accumulated
. . . and
clogged the
machine”
“tendency to
clump”
“tended to jam
in the mixing
bowl . . . and
clog it”
“best flow . . .
minimal
caking,
bridging, and
clumping
during
dispensing”

Dr. Singh performed the testing “[d]uring the time period from about
April 2000 to about February 2001.” Id. ¶ 9. Dr. Singh determined that
“[p]owders with such formulation [as formula E] provided optimal flow
from the vending machine notwithstanding the machine’s complicated
operating conditions and optimal dispersion and dissolution of the dispensed
powder in the resulting hot beverage.” Id. ¶ 16. In particular, Patent Owner
argues that the results are unexpected because Pisecky states that “higher
bulk density” achieves better flowability. PO Comments 6.
Pisecky discloses that it was known at the time of the invention to
make an agglomerated nonfat milk powder that has instant properties,
namely wettability and dispersibility. Pisecky Section 8.2.1, page 112.
Pisecky also teaches that flowability is the “necessary qualification” for use
in both hot and cold vending apparatus. Id. at Section 10.5, page 165.
Pisecky then describes that low bulk density, achieved by agglomeration,
and a low fat content are properties that improve flowability. Id. at Section
10.3, page 154; Section 10.6, page 166. Accordingly, Pisecky’s statements
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would have suggested to the skilled artisan that suitable flowability for
vending machines would have been expected for non-fat milk powder
merely by agglomeration.
Pisecky describes that agglomerated nonfat milk has instant properties
with a bulk density below 0.48 g/ml or g/cc and a moisture content of less
than 3.5%. See supra page 5. Patent Owner has not established through
data or through expert testimony that the improvement in flowability within
the narrower claimed bulk density ranges of 0.25 g/cc and 0.34 g/cc over the
range described in Pisecky below 0.48 g/cc or within the narrower moisture
content range 2.8–3.5% over the range described in Pisecky of maximum of
3.5% are improvements that would have been unexpected in light of the
prior art.
We agree with the Examiner and the Requester that it would have
been obvious to one of ordinary skill in the art to have discovered optimal
and workable ranges of bulk density and moisture content within the ranges
disclosed by Pisecky because both factors were identified as affecting the
powder’s flowability and instant properties.
Rejections based on optimization must be weighed along with
evidence of unexpected results. See, e.g., In re Peterson, 315 F.3d 1325,
1330-31 (Fed. Cir. 2003) (“In general, an applicant may overcome a prima
facie case of obviousness by establishing ‘that the [claimed] range is critical,
generally by showing the claimed range achieves unexpected results relative
to the prior art range,’” which “standard applies when . . . the applicant seeks
to optimize certain variables by selecting narrow ranges from broader ranges
disclosed in the prior art.”) (quoting In re Geisler, 116 F.3d 1465, 1470
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(Fed. Cir. 1997); In re Wertheim, 541 F.2d 257, 267 (CCPA 1976)
(recognizing that “ranges which overlap or lie inside ranges disclosed by the
prior art may be patentable if the applicant can show criticality in the
claimed range by evidence of unexpected results”).
However, we agree with the Examiner and Requester that the
Declarations of Dr. Singh are insufficient to establish unexpected results.
To show unexpected results, applicant must establish: “(1) that there
actually is a difference between the results obtained through the claimed
invention and those of the prior art,. . . and (2) that the difference actually
obtained would not have been expected by one skilled in the art at the time
of invention.” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). “[O]ne
should consider the substantiality of the differences between the properties
of the prior art and those of the invention to determine the significance of
those differences” and, thus, “to determine the weight such evidence should
be given in the obviousness analysis.” Bristol-Myers Squibb Co. v. Teva
Pharms. USA, Inc., 769 F.3d 1339, 1344–1345 (Fed. Cir. 2014) (en banc).
A demonstration of mere improvement, without a showing that the
improvement is significant or unexpected, is insufficient evidence of
unexpected results. See In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995)
(“Mere improvement in properties does not always suffice to show
unexpected results. . . . [W]hen an applicant demonstrates substantially
improved results . . . and states that the results were unexpected, this should
suffice to establish unexpected results in the absence of evidence to the
contrary.”); In re Chupp, 816 F.2d 643, 646 (Fed. Cir. 1987) (“[T]he mere
submission of some evidence that a new compound possesses some
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unpredictable properties does not require an automatic conclusion of
nonobviousness in every case.”); In re Merck & Co., Inc., 800 F.2d 1091,
1099 (Fed. Cir. 1986) (“In the absence of evidence to show that the
properties of the compounds differed in such an appreciable degree that the
difference was really unexpected, we do not think that the Board erred in its
determination.”); In re Corkill, 771 F.2d 1496, 1501 (Fed. Cir. 1985) (“A
greater than expected result is an evidentiary factor pertinent to the legal
conclusion of [ ] obviousness.”).
Dr. Singh testifies to having performed “objective (using appropriate
measuring instruments) and subjective” testing, but provides no details or
description of the type or quality of either the objective or subjective testing
performed. Without the underlying facts as to how Dr. Singh’s reported
results (which appear only subjective and not objective) were obtained, we
agree with the Examiner and the Requester that the results are merely
conclusory and not probative evidence of non-obviousness.
Dr. Singh did not provide the necessary data to show that the test
results were comparative. Specifically, Dr. Singh testified that the results
were performed over a period of time, from about April 2000 to about
February 2001, but he did not testify that the instruments used to obtain the
values reported for Powders A through E were the same for each powder and
had been calibrated such that the objective measurements of scorched
particle size, bulk density, and moisture content were comparative across
this ten month period of time. Dr. Singh did not even disclose what types of
instruments were used to accomplish the reported measurements.
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In addition, with respect to the subjective measurements, Dr. Singh
stated that he tested the formulations “in hot beverage vending machines,
such as the Cino desktop vending machine . . . , the Colibri vending machine
. . . , and the Cafe Diem vending machine . . . .” Third Singh Decl. ¶ 9. In
other words, at least three different vending machines, possibly more, were
used to obtain the results reported for flowability. Yet, in paragraphs ¶¶ 10-
15 of the declaration where the results are reported, Dr. Singh did not
disclose what machines were used and whether the same machines were
used. Dr. Singh also did not explain whether the results represented one test
on one machine, or represented more than one test on more than one
machine. There is no detail on how the tests were performed, and how many
tests were performed for each powder. Absent such information, it cannot
be determined whether the reported results for each powder are
representative, comparative, and whether they are significantly different
from each other.
Affidavits/declarations are entitled to little, if any, weight if the
opinion is considered by the panel to be unsupported and lacking the
underlying facts to support the conclusions. See, e.g., In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004) (“[T]he Board is entitled to
weigh the declarations and conclude that the lack of factual corroboration
warrants discounting the opinions expressed in the declarations.”); In re
Thompson, 545 F.2d 1290, 1295 (CCPA 1976) (affidavit related to
secondary consideration of nonobviousness, notably copying, “sets forth no
specifics and falls far short of constituting probative evidence.”); In re
Brandstadter, 484 F.2d 1395, 1406 (CCPA 1973) (holding that affidavits
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fail in their purpose when they recite conclusions and few facts to buttress
the conclusions). The lack of details renders Dr. Singh’s testimony
insufficient to dispel the teachings in Pisecky, and other references,
regarding agglomerated nonfat milk powder having excellent flowability.
Even if the evidence is sufficient to objectively demonstrate a critical
range for the particular use of the known agglomerated skim milk powder in
hot vending applications, there is insufficient evidence to demonstrate that
the results were unexpected or significantly improved over what would have
been expected based on the teachings of Pisecky. We note that Pisecky
describes an expected objective range for flowability of an agglomerated
skim milk powder (and even better flowability for a rewetted agglomerated
skim milk powder) based on recognized flowability testing in the prior art.
Pisecky Section 11.18, page 215. Patent Owner has not presented
persuasive evidence that Pisecky’s reported ranges of flowability do not
reflect actual flowability ranges for hot vending applications or for any
particular humidity level. Patent Owner has not shown objective flowability
determinations outside of these expected flowability ranges for the more
narrow ranges of bulk density and moisture content of agglomerated milk
products.
Because Pisecky specifically states that agglomerated milk products
with low or no fat content have “good flowability” (Section 10.3, page 154)
and that “good flowability is the necessary qualification of a product . . . to
be used in dispensing machines for various hot or cold drinks” (Section 10.5,
page 165), the skilled artisan would have expected that the use of some
quantity of bulk density (Section 10.3) and moisture content (Section 10.1)
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within the reported range would be optimal for use in a hot vending
apparatus because both factors were identified as a result-effective variables
when formulating a milk powder. Dr. Singh’s testimony shows no more
than optimization for a known use based on routine testing. See Third Singh
Decl. ¶ 9 (Dr. Singh refers to “an optimal formulation or range of
formulations”) and ¶ 16 (“Powders with such a formulation provided
optimal flow from the vending machine notwithstanding the machine’s
complicated operating conditions and optimal dispersion and dissolution of
the dispensed powder in the resulting hot beverage.”); see also PO
Comments 5 (referring to a determination of “optimal flowability”).
To the extent that Pisecky also describes that “higher bulk density”
achieves better flowability, this finding is with respect to “loose value” bulk
density, but not for “tapped” bulk density. Pisecky Section 10.5, page 165.
Pisecky further describes that for “good free-flowing powders,” there is no
distinction between loose and tapped bulk density. Id. at Section 11.3, page
195. Without further explanation, the statement with respect to “high bulk
density” appears to be inapplicable to “good free-flowing powders” such as
agglomerated skim milk powders, which Pisecky further describes as having
low bulk density as a contributing factor to its good flowability. Id. at
Section 10.3, page 154.
Commercial Success
Patent Owner presents additional evidence of commercial success.
Dr. Singh testifies regarding the interest of API, “one of the largest vending
machine manufacturers in the United States,” in using Nature’s First Milk
Topping power, as an alternative to “non-dairy creamers” for using in
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vending applications for “cappuccinos and lattes” to compete with
Starbucks. Third Singh Decl. ¶¶ 19–20. Dr. Singh also testifies that success
with API led to discussions with Sara Lee and Kraft Foods, who also used
non-dairy creamer, “to create the frothy toppings on lattes and cappuccinos.”
Id. ¶ 21. According to Dr. Singh, this discussion led to Sara Lee and Kraft
Foods’ “sales of allegedly infringing milk powder for use in hot beverage
vending machines.” Id. Dr. Singh also testifies to Starbucks selection of
Nature’s First Milk Topping powder for its hot beverage vending machines,
and reports Coca Cola currently testing Nature’s First Milk Topping powder
for use in a hot vending machine. Id. ¶ 22.
According to Patent Owner, Dr. Singh’s further testimony is evidence
of non-obviousness and provides “a nexus between the commercial success
and the claimed agglomerated NDM powder.” See Request 9; PO
Comments 10.
We agree with the Examiner that Patent Owner’s evidence, namely
the new testimony of Dr. Singh, is not probative of non-obviousness over the
prior art of record.
Proof of commercial success is not simply a matter of producing sales
figures or, in this case, naming particular parties interested in a commercial
product. An applicant must produce hard evidence of commercial success,
particularly commercial success in the relevant market. Commercial success
or other secondary considerations may presumptively be attributed to the
claimed invention only where “the marketed product embodies the claimed
features, and is coextensive with them.” Ormco Corp. v. Align Tech. Inc.,
463 F.3d 1299, 1311–12 (Fed. Cir. 2006) (quoting Brown & Williamson
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Tobacco Corp. v. Phillip Morris, Inc., 229 F.3d 1120, 1130 (Fed. Cir.
2000)). However, commercial success “is relevant in the obviousness
context only if there is proof that the sales were a direct result of the unique
characteristics of the claimed invention—as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In order to be probative of
non-obviousness, the commercial success must be attributed to the material
difference between the claimed invention and the closest prior art. Asyst
Technologies, Inc. v. Emtrak, Inc., 544 F.3d 1310, 1316 (Fed. Cir. 2008)
(“[T]here was no evidence that the success of the commercial embodiment
. . . was attributable to the . . . only material difference between [the prior
art] and the patented invention.”); J.T. Eaton & Co. v. Atlantic Paste & Glue
Co., 106 F.3d 1563, 1571 (Fed. Cir. 1997) (“the asserted commercial success
of the product must be due to the merits of the claimed invention beyond
what was readily available in the prior art”); see also In re Caveney, 386
F.2d 917, 923 (CCPA 1967) (“[T]he failure of those in the trade to make
appellant’s invention in no way bears on its nonobviousness in view of
Walch. . . . It seems to us that appellant’s commercial success may well be
due to those features of his ducts which are covered by the Walch patent. . . .
Commercial success, in such circumstances, is no indication of patentability
over the Walch device.”).
Dr. Singh testifies that at the time of the alleged commercial success,
hot vending machine companies, such as API, Sara Lee, and Kraft Foods,
were using “non-dairy creamers” in hot vending machine applications.
However, Pisecky explicitly teaches agglomerated nonfat milk powders as a
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substitute and improvement over non-dairy creamers (Section 8.4.3, pages
124-125), providing a reason to have replaced the creamer with a milk
powder, particularly a nonfat milk powder, for both hot and cold vending
applications. Thus, the evidence of success in using an agglomerated nonfat
milk powder instead of non-dairy creamer in any vending application,
including hot vending applications, is taught by the prior art. Patent Owner
has not shown that the asserted commercial success of their product was due
to the particular selection of bulk density and moisture content rather than
the fact that its product is an agglomerated skim milk powder, as taught by
Pisecky, rather than a non-dairy creamer. Thus, Patent Owner has not
demonstrated a nexus between the claimed and novel features of the
invention and the adoption of Nature First’s Milk Topping powder by its
commercial partners.
Summary
For the reasons discussed above, the evidence supports a conclusion
that the skilled artisan would have expected that the agglomerated nonfat
milk powder, having the properties described in Pisecky, would have been
suitable and successfully used in hot vending machine applications and
would have had the benefit of improved flowability, wettability, and
dispersibility over other whole and nonfat powder milk products available at
the time of the invention. We are not persuaded that the Patent Owner’s
evidence demonstrates improved results using a narrower range of moisture
content and/or bulk density than would have been expected by routine
optimization by one of ordinary skill in the art. Further, we are not
persuaded that any commercial success of Nature First’s Milk Topping
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powder is due to the use of a more narrow range of bulk density and/or
moisture content rather than merely being an agglomerated skim milk
powder as an alternative to non-dairy creamers currently being used in such
applications.
Accordingly, we maintain the rejection of claims 1–5, 7, 10, 13, 15,
17, 21, 27, and 30 under 35 U.S.C. § 103(a) as obvious over Pisecky.

OBVIOUSNESS BASED ON PEEBLES IN VIEW OF US GRADE
STANDARDS AND THE VENDING MACHINE REFERENCES
Findings of Fact
In the Decision, we explained that Peebles teaches a method for the
manufacture of dry skim milk powder. Decision 22; Peebles, col. 1, ll. 15–
17. In addition to finding that Peebles describes a bulk density within the
claimed range (Decision 22; Peebles, col. 6, ll. 55–58), Peebles also teaches
that the agglomerated skim milk product has a moisture content of 3% to
6%. Peebles, col. 2, ll. 18–21; Determination 9; RAN 13.
Our Decision quotes the following from Peebles:
Due to its free flowing characteristics it is easy to remove from
a container and can be poured from a spout without plugging or
dusting. Conventional skim milk powder, on the contrary,
cannot be poured from an ordinary spout such as that used on
the conventional retail salt package.
Another advantage of the present product is that when
exposed to moist air it will not cake, whereas conventional
skim milk powder cakes hard under this condition. This is
because the lactose content is largely hydrated during the
process, whereby it is in crystalline form in the finished
product.
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Decision 22, Peebles, col. 9, ll. 52–63 (emphasis added); see also col. 1, ll.
53–55 (“a product that, while hygroscopic, does not cake upon the
absorption of a reasonable amount of moisture.”).
The United States Extra Grade standard for nonfat dry milk includes a
moisture content of not more than 4.0%. US Grade Standards 2; Req.
Comments 7; see RAN 17; see also Requester’s Comments 9, filed
November 20, 2013.
Analysis
The Examiner found that Peebles describes a moisture content that
overlaps the newly added moisture content recited in the claims.
Determination 9. Patent Owner does not dispute this finding. See generally
PO Comments.
Patent Owner contends that Peebles does not disclose any particular
formulation for an agglomerated skim milk powder used in a hot beverage
vending machine because it fails to describe the use of its agglomerated
skim milk powder in a vending machine at all. Request 15; PO Comments
7.
Patent Owner contends that Dr. Singh’s testimony contradicts Peebles
teaching of not caking upon exposure to moist air when using agglomerated
skim milk with a moisture content of greater than 3.5%, which Dr. Singh
testifies “tended to clump in the milk powder hopper of the machine.”
Request 15.
As with the rejection above, Patent Owner further contends that the
claimed ranges for bulk density and moisture content are “critical ranges”
for use in hot beverage vending machines. Request 15–16; PO Comments 4.
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Patent Owner further contends that Nature’s First Milk Topping powder,
having the properties recited in the claims, has had “continued commercial
success.” Request 9; PO Comments 9–10. Patent Owner again relies on the
additional testimony of Dr. Singh.
Peebles teaches that agglomerated nonfat milk powder having the
recited bulk density has good wettability and good dispersibility and free
flowing characteristics that make it is easy to remove from a container and
poured from a spout without plugging or dusting. These known
characteristics of agglomerated nonfat milk powder would have provided
sufficient reasons for one of ordinary skill in the art to have used the product
over other known powdered milk products in vending applications,
including hot vending applications, such as those described in the vending
machine references, which recognized the problems of flowability and
clogging in hot beverage machines using non-instant powdered milk
products. See e.g., Reese ’002, col. 1, ll. 10-37; Reese ’610, col. 1, ll. 12-39;
Ford, col. 1, ll. 9-37.
We agree with the Examiner that it would have been obvious to use
Extra Grade agglomerated nonfat milk powder as described in the US Grade
Standards, which is not disputed by the Patent Owner. Extra Grade
agglomerated nonfat milk powder has a narrower moisture content range
than described in Peebles, namely less than 4.0%, which is closer to the
claimed range of 2.8–3.5 %. Thus, Patent Owner’s arguments about the
range of the prior art being substantially higher than the claimed range (“as
high as 6%”) is unavailing, when a narrower range is recognized by US
standards as being a property of a better grade of skim milk powder.
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Moreover, for the reasons discussed above, Patent Owner’s evidence
is insufficient to demonstrate criticality of the claimed range or that the
claimed range demonstrates unexpectedly superior results due to the lack of
details provided as to how the subjective data presented was obtained,
particularly in light of the contrary teachings of the prior art of record.
For the reasons discussed above, Patent Owner’s evidence of
commercial success is also insufficient to be probative of lack of
obviousness over the prior art agglomerated skim milk powder product.
Accordingly, we maintain the rejection of claims 1–5, 7, 10, 13, 15,
17, 21, 27, and 30 are rejected under 35 U.S.C. § 103(a) as obvious over
Peebles in view of US Grade Standards and the vending machine references.

DECISION
We maintain the following grounds of rejection:
1. claims 1–5, 7, 10, 13, 15, 17, 21, 27, and 30 are rejected under
35 U.S.C. §103(a) as obvious over Pisecky and
2. claims 1–5, 7, 10, 13, 15, 17, 21, 27, and 30 are rejected under
35 U.S.C. §103(a) as obvious over Peebles in view of U.S. Grade
Standards and the Vending Machine References.

In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this Decision becomes final and
appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.
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PATENT OWNER:
Gray Robinson, P.A.
P.O. Box 2328
Ft. Lauderdale, FL 33303-9998

THIRD-PARTY REQUESTER:

Stephen M. Hash
Vinson and Elkins, LLP
2801 Via Fortuna, Suite 100
Austin, TX 78746