Ex Parte AftooraDownload PDFPatent Trial and Appeal BoardSep 27, 201211515277 (P.T.A.B. Sep. 27, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/515,277 09/01/2006 William F. Aftoora WFA.P1400A 7411 23575 7590 09/27/2012 CURATOLO SIDOTI CO., LPA 24500 CENTER RIDGE ROAD, SUITE 280 CLEVELAND, OH 44145 EXAMINER BECKER, DREW E ART UNIT PAPER NUMBER 1782 MAIL DATE DELIVERY MODE 09/27/2012 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 THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte WILLIAM F. AFTOORA ____________________ Appeal 2011-009273 Application 11/515,277 Technology Center 1700 ____________________ Before RICHARD TORCZON, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejections of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2011-009273 Application 11/515,277 2 THE INVENTION Appellant states that the invention is generally directed to solid-form food products, and more particularly directed to pre-formed and pre-flavored solid food products that are easily dispersible in aqueous cooking liquids to form sauces, gravies, glazes, puddings and pie fillings, and a method for preparation of the food product. (Spec. 1, ll. 16-20.) Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A flavored solid-form food product that is easily dispersible in aqueous liquids comprising: an edible fat; a gelled, edible starchy material; a flavoring agent; a solidifying agent; and an aqueous liquid. (Appeal Brief 19, Claims Appendix1.) THE REJECTIONS I. The Examiner rejected claims 1, 4-13, and 15 under 35 U.S.C. § 102(b) as anticipated by Musher (US 2,131,064, issued September 27, 1938) (hereinafter “Musher ‘064”). (Examiner’s Answer, dated February 15, 2011, hereinafter “Ans.” 4.) II. The Examiner rejected claims 2, 3, and 14 under 35 U.S.C. § 103(a) as unpatentable over Musher in view of Bot et al. (WO 96/29894, published October 3, 1996) (hereinafter “Bot ‘894”). (Ans. 5-6.) III. The Examiner rejected claims 16-18 under 35 U.S.C. § 103(a) as unpatentable over Musher ‘064 in 1 Appeal Brief filed December 28, 2010, hereinafter “App. Br.” and “Claims App’x,” respectively. Appeal 2011-009273 Application 11/515,277 3 view of Musher (US 2,278,466, issued April 7, 1942) (hereinafter “Musher ‘466”). (Ans. 6-7.) ISSUES The dispositive issues on appeal are: (1) Did the Examiner err in finding that Musher ‘064 discloses the solid food product recited in claim 1? (2) Did the Examiner err in concluding that Musher ‘064 in view of Bot ‘894 would have rendered claims 2, 3, and 14 obvious? (3) Did the Examiner err in concluding that Musher ‘064 in view of Musher ‘466 would have rendered claims 16-18 obvious? PRINCIPLES OF LAW In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme Court explained that “Section 103 forbids issuance of a patent when ‘the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”’ KSR, 550 U.S. at 406. “If a person of ordinary skill can implement a predictable variation, §103 likely bars its patentability.” KSR, 550 U.S. at 417. “A person of ordinary skill is also a person of ordinary creativity, not an automaton.” Id. at 421. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of Appeal 2011-009273 Application 11/515,277 4 development flowing from the reference’s disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (citation omitted). FACTUAL FINDINGS (FF) 1. Bot ‘894 discloses a sauce base composition containing a starch, “which preferably has not considerably gelled.” (P. 6, ll. 11-12.) 2. Bot ‘894 discloses that some gelling of the starch may take place during the preparation of the sauce base. (P. 6, ll. 15-16.) 3. Bot ‘894 discloses preparing a sauce base such that it comprises 5- 80 parts by weight of a vegetable fat or fat blend, 0.5-15 parts by weight of water dispersible dry milk ingredients, 1-20 parts by weight of a starch or a starch-like product such as modified starch and hydrolyzed starch, up to 40 parts by weight of water, taste and/or flavor compounds, and optionally, 0.25-5 parts by weight of gelatin or a similar hydrocolloid. (P. 2, ll. 14-24.) 4. Bot ‘894 discloses that proportions of ingredients can be adjusted taking into account, inter alia, the taste and mouthfeel consistency desired. (P. 6, ll. 8-10; p. 7, ll. 6-11; p. 7, ll. 22-23.) 5. Musher ‘466 discloses coating hygroscopic food materials with water repellant to keep the food materials from being affected by the aqueous nature of the sugar syrup that is utilized in further preparation. (P. 2, Col. 1, ll. 5-26.) 6. Musher ‘466 discloses foods that quickly disintegrate to eliminate or substantially reduce lumpiness, uneven cooking, and other substantial disadvantages which arise when quick dissolution and Appeal 2011-009273 Application 11/515,277 5 quick disintegrating is retarded or prevented. (P. 1, Col. 1, l. 27- Col. 2, l. 2.) 7. Musher ‘466 discloses effervescent materials, such as the combination of sodium bicarbonate and tartaric acid, which act together and form effervescent action which pushes apart food pieces and food materials within a brick with considerably more rapidity to produce a quicker disintegration of the product so as to retard or prevent the development of lumpiness or caking or lack of proper cooking. (P. 8, Col. 2, l. 68 – P. 9, Col. 1, l. 6.) 8. Musher ‘064 discloses that its food base can be made with a “water-absorbent bodier component which “may be chosen from a wide variety of materials, particularly the thickeners, etc., commonly used in the production of food products.” (P. 1, col. 2, ll. 45-49.) DISCUSSION Issue One, Rejection I With respect to Rejection I, we observe that Appellant’s arguments against each of the claims subject to Rejection I raise the same or similar issues. As such, our analysis will focus on representative claim 1, which contains claim limitations representative of the arguments made by Appellant pursuant to 37 C.F.R. § 41.37(c)(1)(vii). The Examiner found that Musher ‘064 discloses the flavored solid- form food product recited in claim 1. (Ans. 4.) Appellant argues that in contrast to Musher ‘064, the present solid form food product does not include a heavy paste of a water absorbent Appeal 2011-009273 Application 11/515,277 6 bodier and water. (App. Br. 10.) Appellant contends that the present solid form food product is prepared by, inter alia, combining an edible fat and an edible starchy material at a sufficient temperature and for a sufficient period of time to produce a molten mixture (i.e., a roux). (App. Br. 10.) Appellant argues that the food base of Musher ‘064 does not involve the formation of a roux because the heavy water paste of the water-absorbent bodier component is merely admixed with the hard fatty component. (App. Br. 10.) We are not persuaded by Appellant’s arguments. Appellant’s arguments all relate to a method by which the food product of claim 1 may be produced. However, claim 1 does not recite such a method, but only the components of the food product. Appellant has not pointed to adequate evidence to establish that claim 1 excludes the food base disclosed in Musher ‘064. Therefore, Appellant’s arguments are not commensurate in scope with Appellant’s claims. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“Many of appellant's arguments fail from the outset because … they are not based on limitations appearing in the claims.”). Accordingly, we sustain the Examiner’s rejection of the claims subject to Rejection I. Issue Two, Rejection II The Examiner found that Musher ‘064 does not disclose the specific component ratios recited in claims 2 and 3 or the use of one of the preservatives recited in claim 14. (Ans. 5.) The Examiner found that Bot ‘894 discloses the specific ratios and at least one of the recited preservatives (i.e., potassium sorbate). (Ans. 5.) Appeal 2011-009273 Application 11/515,277 7 The Examiner concluded that it would have been obvious to one of ordinary skill in the art to incorporate the specific claimed component ratios and the preservative taught in Bot ‘894 into the invention of Musher ‘064 because both are directed to sauce base compositions; because potassium sorbate was a commonly used food preservative; because Musher ‘064 already possessed the claimed ingredients but simply did not provide any ratios for them in the final product; and because the amounts of particular ingredients of food products were commonly adjusted in order to arrive at a desired taste, texture, mouthfeel, or other characteristic of the final food product. (Ans. 6.) Appellant argues that the Examiner has engaged in impermissible hindsight by combining Bot ‘894 and Musher ‘064. (App. Br. 12-13.) Appellant also contends that Bot ‘894 and Musher ‘064 teach away from each other because Musher ‘064 discloses a heavy water paste of water- absorbent bodier, while Bot ‘894 discloses not to swell (i.e., “gel”) the starchy material. (App. Br. 13-14.) Appellant further contends that the Examiner is arbitrarily selecting the preservatives of Bot ‘894 based merely on the fact that both Musher ‘064 and Bot ‘894 relate to food products, which amounts to nothing more than hindsight reconstruction. (App. Br. 14.) Initially, we are not persuaded by Appellant’s argument that Bot ‘894 and Musher ‘064 teach away from each other because Musher ‘064 discloses a heavy water paste while Bot ‘894 discloses not to gel the starchy material. While Bot ‘894 discloses using a starch, and a preference that the starch has not considerably gelled (FF 1), Bot ‘894 also discloses that some gelling of the starch may take place during the preparation of the sauce base (FF 2). Appeal 2011-009273 Application 11/515,277 8 Thus, Bot ‘894 discloses a starch that has gelled, i.e., a gelled starch. Appellant has not pointed to any persuasive evidence that the preference in Bot ‘894 to use “not considerably gelled” starch would have discouraged the skilled artisan from using the claimed ratios taught by Bot ‘894 in the invention of Musher ‘064, or that the use of the ratios disclosed in Bot ‘894 would be unlikely to be productive if used with a completely gelled starch. See In re Gurley, 27 F.3d at 553. With regard to the claimed ratios, Bot ‘894 informs one of ordinary skill in the art of general component ratios that can be employed with the claimed ingredients. (FF 3.) Appellant has not directed our attention to sufficient persuasive evidence that in looking to Bot ‘894 for general component ratios, a skilled artisan would have been incapable of accounting for variations due to differences in preparation methods or ingredients in order to arrive at a desired taste, texture, mouthfeel, etc. of the desired food product. KSR, 550 U.S. at 421. Rather, Bot ‘894 recognizes that the skilled artisan is capable of adjusting proportions based on the desired outcome, such that the ratios of food components are result effective variables. (See FF 4.) We are further unpersuaded by Appellant’s argument that the Examiner arbitrarily selected the preservative of Bot ‘894. The Examiner provided multiple reasons, discussed supra, as to why it would have been obvious to use the preservative disclosed in Bot ‘894. Appellant has not pointed to any persuasive evidence of record that refutes the Examiner’s rationale. Thus, we are not persuaded by Appellant’s argument that the Examiner engaged in impermissible hindsight reasoning by combining Bot ‘894 and Musher ‘064. Appeal 2011-009273 Application 11/515,277 9 Accordingly, agree with the Examiner that Musher ‘064 in view of Bot ‘894 would have rendered claims 2, 3, and 14 obvious, and we sustain Rejection II. Issue Three, Rejection III The Examiner found that Musher ‘064 does not disclose the use of an edible bicarbonate, such as sodium bicarbonate, as recited in claims 16-18. (Ans. 6.) The Examiner found that Musher ‘466 discloses a solid food product comprising sodium bicarbonate. (Ans. 6.) The Examiner concluded that it would have been obvious to one of ordinary skill in the art to incorporate the sodium bicarbonate of Musher ‘466 into the invention of Musher ‘064 because both references are directed to flavored solid-form food products; because Musher ‘064 includes acidic ingredients such as lemon oil; because sodium bicarbonate was known to be an effective pH buffer material; because consumers commonly desired and enjoyed effervescent foods; and because the sodium bicarbonate of Musher ‘466 provides an effervescent effect which leads to better disintegration characteristics as well as other advantages, such as lowered rancidity due to displacement of oxygen within the food. (Ans. 6-7.) Appellant argues that Musher ‘064 and Musher ‘466 teach away from each other, and therefore, cannot properly be combined to support an obviousness rejection. (App. Br. 15.) Appellant argues that Musher ‘064 discloses combining a water absorbent bodier, such as a starch material, with water or some other aqueous solution to form a heavy water paste, while Musher ‘466 discloses coating hygroscopic paste-producing or powdery Appeal 2011-009273 Application 11/515,277 10 materials with a water repellent in order to prevent contact of hygroscopic materials with aqueous sugar syrup. (App. Br. 16-17.) Appellant further contends that the effervescent material in Musher ‘466 is not included in the food unit to make it more appealing to consumers, but rather to retard lumps and caking, which undermines the Examiner’s alleged motivation to combine the two Musher references. (App. Br. 18.) We are unpersuaded by Appellant’s argument that a skilled artisan would not have used the sodium bicarbonate disclosed in Musher ‘466 in the invention disclosed in Musher ‘064. While Musher ‘466 uses a water repellant coating on its hygroscopic food materials to keep the food materials from being affected by the aqueous nature of the sugar syrup (FF 5), Appellant has not pointed to any disclosure in Musher ‘466 or Musher ‘064 that would have suggested that the sodium bicarbonate used in Musher ‘466 would be unlikely to serve the purpose described by Musher ‘466 in Musher ‘064. See In re Gurley, 27 F.3d at 553. In this regard, the Examiner only relies on Musher ‘466 for the disclosed benefits of sodium bicarbonate in the similar food products of Musher ‘064, which are supported by the record (FF 7). The mere fact that the teachings of the two references are different or disclose different ingredients does not necessitate a finding that the two references teach away. See In re Gurley, 27 F.3d at 553. We are further unconvinced by Appellant’s argument that the effervescent material in Musher ‘466 is not included in the food unit to make it more appealing to consumers. Musher ‘466 reveals that retarding lumping and caking is in fact a characteristic that does make the food of Musher ‘466 more appealing to consumers (FF 6), rather than a characteristic that undermines why one of ordinary skill in the art would have been motivated Appeal 2011-009273 Application 11/515,277 11 to use sodium bicarbonate with Musher ‘064 as argued by Appellant. See W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1550–51 (Fed. Cir. 1983) (noting that the totality of a reference’s teachings must be considered). Accordingly, we agree with the Examiner that Musher ‘064 in view of Musher ‘466 renders claims 16-18 obvious, and we sustain Rejection III. CONCLUSIONS The Examiner did not err in finding that Musher ‘064 discloses the solid food product recited in claim 1. The Examiner did not err in concluding that Musher ‘064 in view of Bot ‘894 would have rendered claims 2, 3, and 14 obvious. The Examiner did not err in concluding that Musher ‘064 in view of Musher ‘466 would have rendered claims 16-18 obvious. DECISION We affirm the Examiner’s rejections. 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). AFFIRMED Appeal 2011-009273 Application 11/515,277 12 rvb/cu Copy with citationCopy as parenthetical citation