Ex Parte ANAND et al

Patent Trial and Appeal BoardMay 10, 2016

13363809 (P.T.A.B. May. 10, 2016)

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. 13/363,809 02/01/2012 Ashish ANAND CFLAY.00698 4735 110933 7590 05/10/2016 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 05/10/2016 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ASHISH ANAND, HEIDI KLEINBACH–SAUTER, VAMSHIDHAR PUPPALA, PRAMILA SRIVASTAVA, and NGOC TRINH ____________ Appeal 2014–005998 Application 13/363,809 Technology Center 1700 ___________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and JULIA HEANEY, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 1–56, with claims 1, 12, 30, and 41 being independent, under 35 U.S.C. § 103(a) as being unpatentable over Faa (US 1 The Real Party in Interest is stated to be Frito–Lay North America, Inc. (Br. 2). Appeal 2014–005998 Application 13/363,809 2 7,947,320 B2, issued May 24, 2011).2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 1 is illustrative of the subject matter on appeal (emphasis added):3 1. A crisp bread snack food product based on a traditional bread recipe having: a) a moisture content of between about 1.5–3.5% by weight; b) a thickness of about 2–14 millimeters; c) 42–47% air cells over the total area of said crisp bread snack food product; and d) a breaking force of between about 24–121 Newtons, wherein said crisp bread snack food product is shelf– stable, and further wherein said crisp bread snack food product comprises a formulation comprising about 15–75% of cereal flour, about 5–25% starches, about 0.5– 15% proteins, about 0.5–5% flavoring ingredients, about 0.5–5% leavening agents, about 0.3–3% salt, about 2–15% sugar, about 2–25% fat ingredients, and about 0.5–5% fibers, wherein said formulation is derived from a traditional bread recipe and said crisp bread snack food product has a flavor substantially similar to said traditional bread. 2 The Examiner’s rejection of the claims under 35 U.S.C. 112 (pre–AIA), first paragraph as failing to comply with the written description has been withdrawn on appeal. Ans. 2. 3 Independent claims 12, 30 and 41 substantially mirror claim 1 with respect to the product limitations, with claim 12 adding limitations directed to the method of producing the product, and claims 30 and 41 including additional limitations concerning various viscosities of the dough form of the crisp bread product. See App. Br. 11–14 and Claims App’x. Claim 41 does not claim an air cell percentage. Claims App’x. Appeal 2014–005998 Application 13/363,809 3 ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we sustain the Examiner’s rejections for essentially those reasons expressed in the Answer, including the Response to Argument section, and we add the following primarily for emphasis. The Examiner’s determination that Faa suggests overlapping ranges for all of the formulation components, moisture content, and thickness is not in dispute (see, e.g., App. Br. 11–14; Ans. 5; Faa, col. 5, ll. 33–48 and Tables I and II). A prima facie case of obviousness arises when the ranges of a claimed composition overlap the ranges disclosed in the prior art. Where the “claimed ranges are completely encompassed by the prior art, the conclusion [that the claims are prima facie obvious] is even more compelling than in cases of mere overlap.” In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (quoting In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). It is well established that a reference is not limited to its examples or preferred embodiments. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (holding that the prior art's disclosure of over 1200 possible combinations rendered all possible formulations obvious). It is also well settled that when a claimed product reasonably appears to be substantially the same as a product disclosed by the prior art, the burden is on the applicant to prove that the prior art product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Appeal 2014–005998 Application 13/363,809 4 Appellants’ arguments that Faa’s formulation fails to disclose the claimed air cell percentage and breaking force are unavailing, along with the remarks concerning the claimed dough viscosities in claims 30 and 41 (App. Br. 10–14). First, regarding the breaking force, the Examiner points out that Faa discloses that measured hardness is the same as breaking force, and that Faa discloses a hardness that overlaps the claimed breaking force range. Ans. 6– 7. Appellants do not dispute the Examiner’s comparison of Faa’s hardness and the claimed breaking force. See Reply Br., generally. Next, regarding the air cell percentage, Appellants state that it would not have been obvious to tailor the air cell percentage of the food product because Faa does not provide any incentive or motivation to modify or even be concerned with the air cell percentage. App. Br. 13. This argument is unavailing, since the Examiner has established that the products of Faa and the claimed invention have the same formulations of ingredients and undergo substantially the same process to become a baked product (e.g., Ans. 6), so the burden shifts to Appellants to provide some rationale or evidence why the resulting products do not have similar air cell percentages. Ans. 6; see also In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255. Moreover, Appellants’ Specification does not specify that the dough is treated in any special way to achieve the claimed air cell percentage range. See Ans. 6. The amount of leavening in Faa, which affects the degree of porosity, falls within the claimed range and Faa discloses similar processing4, so it would have been obvious that Faa’s product would have an 4 We note that both Appellants’ Specification and Faa disclose mixing the ingredients in a dough mixer and baking for similar periods of time at Appeal 2014–005998 Application 13/363,809 5 air cell percentage substantially similar to that of the claimed invention. Id. Appellants emphasize that their product is a “crisp bread” and that Faa discloses a “baked snack food product with a soft, crunchy texture similar to a cracker,” along with different types of bread having different air cell percentages. Reply Br. 1–2. Nevertheless, we do not discern any difference in formulation, processing, or other treatments that would cause the two substantially similar bread products to have significantly different air cell percentages, and Appellants have not directed us to any such differences. Appellants rely upon the same arguments for claims 12–29 as for claim 1 (App. Br. 13). With respect to the dough viscosities in claims 30 and 41, the claims are directed to products, not the processes of making the products. It has been well established that, when a product recited in product-by-process format reasonably appears to be the same as or obvious from a product of the prior art, the burden is on applicant to show that the prior art product is in fact different from the claimed product, even though the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Here, the claimed invention and Faa’s product are formed of similar formulations and similar processes, so a preponderance of the evidence supports the Examiner’s determination that the intermediate dough of Faa would have similar properties, including viscosities, as the claimed invention’s intermediate dough. Ans. 7; see also In re Spada, 911 F.2d at 708; In re Best, 562 F.2d at 1255. Additionally, Appellants have made no similar temperatures. Compare Spec. Para. 18 with Faa, col. 6, ll. 17–3 and col. 6, 66 to col. 7, 8. Appeal 2014–005998 Application 13/363,809 6 showing that the intermediate dough of Faa has different viscosities or that the resulting products differ in some manner based on the respective intermediate doughs differing in some way. See App. Br. 13–14. As such, Appellants’ remarks concerning the claimed viscosities in claims 30 and 41 are not convincing. Appellants have not persuasively presented facts or reasons to convince us that the Examiner failed to establish a prima facie case of obviousness as to the claims on appeal. Accordingly, we sustain the § 103 rejection of all of the claims on appeal. The decision of the Examiner is 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)(1). AFFIRMED