Ex Parte Barrett et al

Patent Trial and Appeal Board

Jan 30, 2017

13173298 (P.T.A.B. Jan. 30, 2017)

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.
7320US02 8890
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
13/173,298 06/30/2011
7590
John A. O'Toole
P.O. Box 1113
Minneapolis, MN 55440
Christopher J. Barrett
01/30/2017 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 CHRISTOPHER J. BARRETT, PATRICK C. DREESE,
DANIEL R. GREEN, VICTOR T. HUANG, CHRISTINE
NOWAKOWSKI, FERN A. PANDA, and SCOTT WHITMAN1
Appeal 2015-005909
Application 13/173,298
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35U.S.C. § 134 from the
Examiner’s rejection under 35 U.S.C. § 103 of claims 1-18 and 27-30 over
Creighton2 in view of Green3 and Lawson.4 We have jurisdiction pursuant
to 35 U.S.C. §6.
We REVERSE.
1 Appellants identify General Mills, Inc. as the real party in interest. Appeal
Br. 4.
2 Creighton et al., US 5,176,936, issued January 5, 1993.
3 Green et al., US 2005/0255218 Al, published November 17, 2005.
4 Lawson et al., US 2009/0208609 Al, published August 20, 2009.
Appeal 2015-005909
Application 13/173,298
BACKGROUND
Appellants’ claimed invention relates to coating formulations for use
in preparing sugar-reduced pre-sweetened cereals and methods for their
preparation and use. Spec. Abstract. Independent claim 1 is directed to a
slurry that includes, inter alia, 1-20% non-hydrated starch. Independent
claims 11 and 13 are directed to a method of preparing a slurry and a method
of using a slurry, respectively, that includes, inter alia, 1-20% non-hydrated
insoluble starch. The recited 1-20% non-hydrated starch has a particle size
of 50 microns or less. (Appeal Br., Claims Appendix, Claims 1, 11, 13; pgs.
23-24).
Independent claim 1 is representative.
1. A pre-sweetener reduced sucrose hypocrystalline sugar
slurry, comprising:
40 - 70% sucrose (dry weight basis);
10 - 35% non-sucrose soluble solids;
1 - 20% non-hydrated starch having a particle size of
50 microns or less; and,
8 - 25% moisture.
Appeal Br. (Claims Appendix) 23.
DISCUSSION5
Upon consideration of the record, we are persuaded that the Examiner
erred in determining that one of ordinary skill in the art, armed with the
knowledge of cited prior art would have been led to the subject matter of the
claims within the meaning of 35 U.S.C. § 103(a). “[T]he Examiner bears the
5 We refer to the Specification filed June 30, 2011, the Final Office Action
mailed June 24, 2014, the Appeal Brief filed November 21, 2014; the
Examiner’s Answer mailed April 8, 2015, and the Reply Brief filed May 21,
2015.
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Application 13/173,298
initial burden ... of presenting a prima facie case of unpatentability.” In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Creighton relates to sugar coated ready-to-eat breakfast cereal
products. As relied on by the Examiner (Final Act. 3—4; Ans. 3-4;
Creighton col. 9,11. 29-68), Creighton teaches a sugar coating solution that
includes sucrose, com symp, and water and can additionally include a
triglyceride, a flavor constituent, vitamins, and colors (Creighton col. 9,
11. 33-35, 39-42).
Green relates to preparing ready-to-eat breakfast cereal products by
coating cereal base pieces with a low sugar sweetener in powder form.
Green Abstract. Green teaches that the dry coating compositions can
include “flavors in powder form (e.g., spray dried on a starch particulate
carrier).” Green 136. In the Final Office Action, the Examiner finds that
Green teaches a slurry that includes a flavor ingredient on starch. Final Act.
4 (“Green teaches a coating slurry comprising a flavor ingredient on
starch”), 8 (“[T]he fact is that Green teaches a slurry and further teaches that
the slurry is known to contain starch in an amount of 1 to 10%”). In the
Answer, having conceded that “Green may not teach a ‘coating’ slurry,” the
Examiner finds that Green “teaches a coating for ready to eat cereal products
and further teaches that the coating can comprise additional materials to
enhance the properties.” Ans. 8 (citing Green 135).
In the Final Office Action, the Examiner de facto concludes that it
would have been obvious to one of ordinary skill in the art at the time of the
invention to have used starch particles with adhered flavor in the slurry of
Creighton to efficiently coat a substance with the flavor component (Final
Act. 4, 8). The Examiner also concludes, alternatively, that it would have
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Application 13/173,298
been obvious to add non-hydrated starch to the sugar slurry of Creighton to
“provide a non-gritty thickening for effective coating of the sugar slurry onto
cereal” (Final Act. 5).
In the Answer, following Appellants’ argument that the cited portion
of “Green does not teach adding the starch as an ingredient in a slurry”
(Appeal Br. 7), the Examiner maintains that Green “teaches a flavor loaded
starch particle that is part of a coating” and that it would have been obvious
to “include such flavor loaded starch particle in the coating of Creighton . . .
[to] provide the predictable result of adding flavor to the cereal of
Creighton.” Ans. 8.
On this record, we are unable to sustain the Examiner’s rejection
because the Examiner has failed to set forth the requisite rational basis for
including non-hydrated starch particles in a slurry as required by
independent claims 1,11, and 13. While Creighton discloses that the sugar
coating solution can include a flavor constituent (Creighton col. 9,11. 40-
42), the Examiner fails to set forth a sufficient reason for providing the
required flavor in a powder form on a starch particulate carrier, particularly
where the use of the starch particulate carrier disclosed in Green is in the
context of its use as a powdered coating, not in a slurry (Green Abstract,
1135-36). As to the Examiner’s de facto determination that Green teaches a
slurry because the coating can contain additional materials (Ans. 8, citing
Green 135), we find it unfounded where there is no indication that any
adjuvant ingredient is included to form a slurry and where none of those
listed are necessarily liquids (Green 135).
As to the Examiner’s reasoning that it would have been obvious to
include starch in the slurry of Creighton as a flavor carrier to efficiently coat
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Application 13/173,298
a substance or to act as a thickener for effective coating of the sugar slurry
onto cereal (Final Act. 4-5, 8), reasoning which Appellants contest (see,
e.g., Appeal Br. 7-9; Reply Br. 2-3), we find the Examiner’s articulated
reasoning insufficient where it merely sets forth in a conclusory manner that
there is improved coating without sufficiently explaining that there is a
deficiency, how including the starch overcomes it, or that the characteristics
of increased slurry stickiness or thickness are otherwise desirable. In sum,
on this record, we find lacking the requisite basis for including 1-20% non-
hydrated starch in a slurry. See, e.g., Belden Inc. v. Berk-TekLLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015) (“[Ojbviousness concerns whether a skilled
artisan not only could have made but would have been motivated to make the
combinations or modifications of prior art to arrive at the claimed
invention.”); In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not. . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”); In re Sporck, 301
F.2d 686, 690 (CCPA 1962).
Further, as to independent claims 11 and 13 which both recite the
inclusion of “1-20% non-hydrated insoluble starch” (emphasis added), the
Examiner has also erred in failing to address that the included starch is
insoluble. See generally Final Act.; Ans. As highlighted by Appellants’
arguments grounded on the included starch remaining non-hydrated in the
slurry (Appeal Br. 8, 14, 19), the issue is not that the included starch is not
hydrated, but rather that it is capable of remaining so in the slurry, i.e., that it
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is insoluble.6 Accordingly, the Examiner has also fallen short of
establishing a prima facie case of obviousness for independent claim 11—
with dependent claims 12, 17, 18, and 27—and independent claim 13—with
dependent claims 14-16 and 28-30—for the additional reason that the
recited “insoluble” limitation is not addressed. As our reviewing court has
stated (parentheses omitted), “obviousness requires a suggestion of all
limitations in a claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003); see also Warner, 379 F.2d at 1017; Sporck, 301 F.2d
at 690.
We decline to scour the record in the first instance for facts that might
support the rejection as our primary role is review, not examination de novo.
CONCLUSION
The Examiner’s decision rejecting claims 1-18 and 27-30 is
REVERSED.
REVERSED
6 In the event of further prosecution, Appellants and the Examiner should
consider the import of independent claim 1 ’s omission of “insoluble” in light
of the Specification describing, inter alia, the inclusion of “insoluble filler
materials such as non-hydrated starch ... in partial substitution for sucrose”
(Spec. Ill) and that “[ijnclusion of a non-hydrated filler starch is obtained
by adding an insoluble starch material” (Spec. 112).
6