Ex Parte Barrett et al

Patent Trials and Appeals BoardApr 10, 2019

13624073 - (D) (P.T.A.B. Apr. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/624,073 09/21/2012 30173 7590 04/12/2019 Diederiks & Whitelaw, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 FIRST NAMED INVENTOR Christopher J. Barrett 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 7448US02 (GMI0123/US) 6941 EXAMINER LEBLANC, KATHERINE DEGUIRE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 04/12/2019 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): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CHRISTOPHER J. BARRETT, DANIEL R. GREEN, VICTOR T. HUANG, and CHRISTINE M. NOWAKOWSKI 1 Appeal2018-006560 Application 13/642,073 Technology Center 1700 Before BRADLEY R. GARRIS, N. WHITNEY WILSON, and MICHAEL G. McMANUS, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellant appeals from the Examiner's rejections under 35 U.S.C. Â§ 103(a) of claims 1--4, 6-9, 20, 28- 31, 36, 63, and 68-75 as unpatentable over Long et al. (US 2008/0317919 Al, published Dec. 25, 2008; "Long") in view of Stevens et al. (WO 2005/051094 A2, published June 9, 2005; "Stevens") and claims 60 and 61 as unpatentable over these references in combination with 1 Appellant is the Applicant, General Mills, Inc., which is identified as the real party in interest (App. Br. 4). Appeal2018-006560 Application 13/642,073 Green et al. (US 2005/0255218 Al, published Nov. 17, 2005; "Green"). We have jurisdiction under 35 U.S.C. Â§ 6. We AFFIRM-IN-PART. Appellant claims a ready to eat cereal comprising a base, a slurry layer on the base, and a particulate coating on the slurry layer (independent claim 1) as well as a method of preparing a ready to eat cereal comprising the step of coating a slurry-coated base with particulates (remaining independent claim 29). A copy of claims 1 and 29, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A ready to eat cereal comprising: a base; a slurry layer on the base produced by applying a slurry coating to the base, the slurry layer containing from about 30 to about 80 parts by weight sucrose, from about 10 to 60 parts by weight non-sucrose soluble solids, and not more than 10 parts by weight oil based on total parts by weight sucrose, non- sucrose soluble solids, and oil; a particulate coating on the slurry layer, the particulate coating produced by applying particulates to the slurry coating, wherein the particulates comprise pregelatinized starch, whole grain flour, non-whole grain flour, dextrin, soluble fiber, partially soluble fiber, insoluble fiber, protein, or a combination thereof. 2 Appeal2018-006560 Application 13/642,073 29. A method of preparing a ready to eat cereal comprising: providing a cereal base; coating the base with a slurry, the slurry containing from about 30 to about 80 parts by weight sucrose, from about 10 to 60 parts by weight non-sucrose soluble solids, and not more than 10 parts by weight oil, based on total parts by weight sucrose, non- sucrose soluble solids, and oil; and coating the slurry-coated base with particulates, wherein the particulates comprise pregelatinized starch, whole grain flour, non-whole grain flour, dextrin, soluble fiber, partially soluble fiber, insoluble fiber, protein, or a combination thereof. Appellant states that"[ c ]laims 2, 3, 4, 9, 20 and 28 will stand or fall with claim 1" (App. Br. 8) and that "[c]laims 31 and 36 will stand or fall with claim 29" (id. at 10). We sustain the rejections of claims 1--4, 6-9, 20, 28-31, 36, 60, 61, 63, and 68 for the reasons expressed in the Final Office Action, the Examiner's Answer, and below. In rejecting the independent claims, the Examiner finds that Long discloses preparing a ready to eat cereal by providing a cereal base with a slurry layer of sucrose and maltodextrin in order to obtain a reduced-sugar cereal having sufficient bowl life and crunchiness (Final Action 3). The Examiner finds that Long does not teach a particulate coating on the slurry layer but that Stevens teaches providing cereal with a particulate coating of pregelatinized starch in order to retain its texture and strength in milk (id. at 4 ( citing Stevens ,r,r 8, 12, 18, 45)). The Examiner concludes that it would have been obvious to provide Long's slurry layer with a particulate coating 3 Appeal2018-006560 Application 13/642,073 as taught by Stevens in order to further achieve the bowl life goal of Long (id.). Appellant argues "Stevens does not teach a ready to eat cereal with a particulate coating as required by the present claims [because] ... the starch of Stevens is applied as part of a slurry or as a dry coating that is thereafter sprayed with water to hydrate the coating to form a film" (App. Br. 6 (citing Stevens ,r,r 25, 40)). This argument lacks persuasive merit. The film-formation disclosed in Appellant's cited paragraphs 25 and 40 of Stevens relates to the wet slurry coatings of Examples 1--4 (Stevens ,r 24) rather than the dry coating embodiment disclosed in Stevens' paragraph 12. In the record before us, Appellant provides no convincing support for the argument that the dry coating forms a film after being hydrated. On the other hand, Stevens teaches the dry coating typically comprises smaller particles because they "more readily hydrate and form the coating when water is applied[, and] [a]s a result, the smaller particles are also less likely to be visible after drying" (Stevens ,r 18 ( cited by the Examiner)). This teaching reflects that the smaller particles, after hydration and drying, do not transform into a film as argued but rather continue to exist as particulates. In addition, Appellant fails to convincingly explain why the particulate coating limitations of the independent claims are not satisfied by Stevens' dry coating prior to being hydrated (i.e., when the coating is concededly in the form of particulates). 4 Appeal2018-006560 Application 13/642,073 Appellant's arguments concerning dependent claims 6, 30, 63, and 68 (App. Br. 8-11) are unpersuasive for the reasons given by the Examiner (Ans. 9-14). For the above-stated reasons and those expressed in the Final Action and the Answer, we sustain theÂ§ 103 rejections of claims 1--4, 6-9, 20, 28- 31, 36, 60, 61, 63, and 68. However, we do not sustain the rejection of dependent claims 69-75 as unpatentable over Long in view of Stevens. Our reasons follow. In rejecting claim 69, the Examiner finds that "Stevens is silent on the amount of pregelatinized starch in the particulate layer so that one cannot determine the ratio of weight sucrose to total weight soluble solids" (Final Action 6). Nevertheless, the Examiner concludes that "it would have been obvious to adjust the amount of sucrose, maltodextrin and pregelatinized starch (non-sucrose soluble solids) depending on taste and bowl life desired in the cereal composition since these effects are discussed in Long and Stevens" (id. at 6-7). The Examiner fails to support this obviousness conclusion with adequate rationale for the proposition that adjusting the amounts "depending on taste and bowl life desired" would have resulted in ratios within the claimed range. According to Appellant, "neither of the cited references, Long and Stevens, teaches that the ratio of sucrose to soluble solids is a factor to be considered when selecting a particular weight percentage for either the sucrose or non-sucrose soluble solids" (App. Br. 12), and the 5 Appeal2018-006560 Application 13/642,073 Examiner does not argue otherwise (see Ans. 14--15). For these reasons, the rejection of claim 69 is based improperly on mere conclusory statements rather than articulated reasoning with rational underpinning. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness") quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). As for the crystallinity limitations of claims 70 and 71, the Examiner states that "since Long and Stevens teach the cereal of claim[ s] 1 and 29, one of ordinary skill in the art would expect the coating of the prior art to have the claimed crystallinity" (Final Action 3). As above, the Examiner offers no rationale in support of the position that the combination of Long and Stevens necessarily would yield a coating having the crystallinity required by claims 70 and 71. In fact, such a position is undermined by the Examiner's belief that the amounts of sucrose and non-sucrose soluble solids are responsible for the claimed crystallinity (Ans. 14) because, as explained earlier, the Examiner fails to establish a prima facie case of obviousness for the claim 69 weight ratio of sucrose to total soluble solids. Appellant states that neither Long nor Stevens discloses a concern for crystallinity or teaches that the ratio of sucrose to soluble solids is a factor to be considered (App. Br. 13; see also id. at 14), and again the Examiner does not argue otherwise (Ans. 14--15). Consequently, the rejection of claims 70 and 71 also is based improperly on mere conclusory 6 Appeal2018-006560 Application 13/642,073 statements rather than articulated reasoning with rational underpinning. See Kahn, 441 F .3d at 988. Appellant argues that the rejection of claims 72-75 is improper because the "consisting of' language of these claims excludes the maltodextrin required by Long (App. Br. 14--15). In response, the Examiner posits that dependent claims 72-7 5 do not exclude Long's maltodextrin (Ans. 15). While parent claims 1 and 29 recite the open term "comprising" and further recite "non-sucrose soluble solids," the dependent claims under consideration require the non-sucrose soluble solids to be selected from a group consisting of specific solids that do not include the maltodextrin of Long. The Examiner's opposing view is contrary to the plain language of the claims and is inconsistent with the guidance ofMPEP Â§ 2111.03 as Appellant points out (Reply Br. 5). In summary, we sustain the rejections of claims 1--4, 6-9, 20, 28-31, 36, 60, 61, 63, and 68, but we do not sustain the rejection of claims 69-75. DECISION The decision of the Examiner is affirmed-in-part. No time period for taking any subsequent action in connection with 7 Appeal2018-006560 Application 13/642,073 this appeal maybe extended under 37 C.F.R. Â§ 1.I36(a)(l)(iv). AFFIRMED-IN-PART 8