Ex Parte Barrett et al

Patent Trial and Appeal Board

Mar 31, 2017

13624002 (P.T.A.B. Mar. 31, 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.
13/624,002 09/21/2012 Christopher J. Barrett 7547US02 5542
30173 7590 04/04/2017
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
LEBLANC, KATHERINE DEGUIRE
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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, DOUGLAS L. GOEDEKEN,
DANIEL R. GREEN, VICTOR T. HUANG, LAUREN A. JACOBSON,
CHRISTINE M. NOWAKOWSKI, SCOTT K. WHITMAN, and
DANIELLE M. WOJDYLA
Appeal 2016-002801
Application 13/624,002
Technology Center 1700
Before JULIA HEANEY, MONTE T. SQUIRE, and JEFFREY R. SNAY,
Administrative Patent Judges.
Opinion for the Board by SQUIRE, Administrative Patent Judge.
Opinion dissenting by SNAY, Administrative Patent Judge.
SQUIRE, Administrative Patent Judge.
Appeal 2016-002801
Application 13/624,002
DECISION ON APPEAL1
Appellants2 appeal the Examiner’s Final Rejection of claims 30, 31,
35-37, and 59-69. 35 U.S.C. § 134(a). We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
The Claimed Invention
Appellants’ disclosure is directed to sugar coatings for pre-sweetened
breakfast cereal products, pre-sweetened breakfast cereal products, other
coated sweetened food products, and related methods. Spec. 1. The
disclosure describes coated food products having a sugar (i.e., sucrose)
coating and the coating exhibiting desirable levels of sucrose crystallinity
and a desired sucrose ratio (i.e., total sucrose per total soluble solids).
Abstract. Claim 30 is illustrative of the claimed subject matter on appeal
and is reproduced below from the Claims Appendix to the Appeal Brief
(App. Br. 24) (key disputed claim limitations italicized and bolded):
30. A pre-sweetened comestible comprising a coated base,
comprising:
a base and a dried coating at a surface of the base, the
dried coating comprising sucrose and non-sucrose soluble
solids,
1 In our Decision, we refer to the Final Office Action appealed from, mailed
November 5, 2014 (“Final Act.”); the Advisory Action mailed January 22,
2015 (“Adv. Act.”); the Appeal Brief dated June 11, 2015 (“App. Br.”); the
Examiner’s Answer to the Appeal Brief dated November 5, 2015 (“Ans.”);
and the Reply Brief dated January 4, 2016 (“Reply Br.”).
2 Appellants identify General Mills, Inc. as the Real Party in Interest.
App. Br. 3.
2
Appeal 2016-002801
Application 13/624,002
wherein the crystallinity of the sucrose in the dried coating is
a value y or greater calculated according to the formula:
crystallinity (y) > 2.28x2 - I.19x + 0.28
wherein x is a sucrose ratio of weight sucrose per total weight
soluble solids in the coating.
The References
The Examiner relies on the following references as evidence in
rejecting the claims on appeal:
Furda et al.,
(hereinafter “Furda”)
Green et al.,
(hereinafter “Green”)
Fong et al.,
(hereinafter “Fong”)
Gilbertson et al., CA 1168919
(hereinafter “Gilbertson”)
US 4,379,171
US 2005/0255218 Al
US 2008/0317919 Al
Apr. 5, 1983
Nov. 17, 2005
Dec. 25, 2008
June 12, 1984
The Rejections
On appeal, the Examiner maintains the following rejections:
1. Claims 30, 31, 35, 59-61, and 64-66 are rejected under pre-
AIA 35 U.S.C. § 102(b) as being anticipated by Fong. Final Act. 2; Ans. 3.
2. Claims 30, 63, 64, and 69 are rejected under pre-AIA
35 U.S.C. § 102(b) as being anticipated by Furda. Final Act. 3; Ans. 4.
3. Claims 36 and 67 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Fong. Final Act. 4; Ans. 5.
4. Claim 37 is rejected under pre-AIA 35 U.S.C. § 103(a) as being
unpatentable over Fong in view of Green. Final Act. 5; Ans. 6.
5. Claims 30, 62, 64, and 68 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Gilbertson in view of Fong. Final Act.
5; Ans. 7.
3
Appeal 2016-002801
Application 13/624,002
OPINION
Having considered the respective positions advanced by the Examiner
and Appellants in light of this appeal record, we affirm the Examiner’s
rejections for the reasons set forth in the Answer to the Appeal Brief and
Final Office Action appealed from, which we adopt as our own.
Nevertheless, we highlight and address specific findings and arguments for
emphasis as follows.
Rejection 1
Appellants argue claims 30, 31, 35, 59-61, and 64-66 as a group.
App. Br. 15. We select claim 30 as representative and the remaining claims
stand or fall with claim 30. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner determines that Long discloses all of the limitations of
claim 30 and anticipates the claim. Ans. 3, 4. In particular, the Examiner
finds that Long teaches a cereal composition comprising a dried coating at
the surface of the cereal base and that coating comprises from about 56% to
about 70% sucrose and from about 16% to about 28% non-sucrose soluble
solid (i.e., maltodextrin) on a dry weight basis. Id. at 3 (citing Long 7).
The Examiner finds further that, based on the coating composition
percentage ranges Long discloses, the ratio of sucrose to total amount of
soluble solids (i.e., the “x” value in the claimed formula3) ranges from about
0.67-0.81 and yields a “crystallinity of the sucrose” (i.e., the “y” value
calculated according to the claimed formula) ranging from 0.5-0.8. Ans. 4.
3 As used herein, the terms claimed “formula” and “Equation I” each refers
to claim 30’s recitation: “crystallinity (y) > 2.28x2 - 1.19x + 0.28”
(App. Br. 24).
4
Appeal 2016-002801
Application 13/624,002
Appellants argue that the Examiner’s rejection should be reversed
because the rejection “erroneously uses Equation I of claim 30 to ‘calculate’
a crystallinity value of a coating.” App. Br. 15; see also Reply Br. 2^1. In
particular, Appellants contend that using Equation I to calculate crystallinity
of a coating is “impossible” because Equation I is not a tool for calculating a
level of sucrose crystallinity of a dried coating “whether the coating is in the
prior art or part of the invention.” App. Br. 15, 16. Appellants further argue
that the Examiner’s rejection of claim 30 based on inherency is “not well
supported or persuasive” because it relies on the Examiner’s above-
identified erroneous use of Equation I. Id. at 17, 18.
We do not find Appellants’ arguments persuasive of reversible error
in the Examiner’s analysis and findings. To serve as an anticipatory
reference, “the reference must disclose each and every element of the
claimed invention.” In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
Based on the record before us, we find that a preponderance of the
evidence supports the Examiner’s determination (Ans. 3, 4) that Long
discloses each and every element of claim 30, including the “wherein the
crystallinity of the sucrose in the dried coating is a value y or greater”
limitation as calculated according to the claimed formula. Long 6, 7, 9,
13.
As the Examiner finds (Ans. 3,4, 8) and Appellants do not dispute,
Long teaches a base and a dried coating comprising sucrose and non-sucrose
soluble solids as claimed. Long 6, 7, 9, 13. As the Examiner further
finds (Ans. 4, 9, 10), based on Long’s disclosure of the coating composition
ranges and as calculated according to the claimed formula, the “crystallinity
(y)” value of the prior art product ranges from 0.5-0.8, which would satisfy
5
Appeal 2016-002801
Application 13/624,002
the “crystallinity (y) > 2.28x2 - 1.19x + 0.28” limitation of claim 30.
Appellants’ argument exposes no reversible error in the Examiner’s factual
findings and analysis in this regard.
Moreover, as the Examiner correctly points out (Ans. 9), where the
claimed and prior art products are identical or substantially identical in
structure or composition, a prima facie case of anticipation has been
established, and the burden shifts to Appellants to demonstrate that the prior
art product does not possess the claimed properties. In re Best, 562 F.2d
1252, 1255 (CCPA 1977); see also In re Spada, 911 F.2d 705, 709 (Fed. Cir.
1990) (“When the PTO shows a sound basis for believing that the products
of the appellant and the prior art are the same, the appellant has the burden
of showing that they are not.”).
Appellants have not met this burden. In particular, Appellants have
not identified or directed us to persuasive evidence in the record that shows
that the prior art product Fong discloses is not the same and does not possess
the same properties as Appellants’ claimed product.
Appellants’ argument that the Examiner’s inherency finding is “not
well supported or persuasive” (App. Br. 17) is unpersuasive and insufficient
to satisfy Appellants’ burden and adequately rebut the Examiner’s findings
in this regard. Best, 562 F.2d at 1255 (explaining that Appellants’ “burden
of proof is the same” regardless of whether the rejection is based on
inherency under § 102 or obviousness under § 103); see also In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984). Appellants’ reliance on their
processing method to show that it would achieve a product having a higher
level of crystallinity at a lower sucrose ratio than the processing method
disclosed in Fong (App. Br. 19-20, citing Spec. pp. 20, 22, 28, and 30) is
6
Appeal 2016-002801
Application 13/624,002
not persuasive, because it does not sufficiently explain how Appellants’
specific coating methods lead to a product having relatively high sucrose
crystallinity, or specifically how Appellants’ crystallinity would compare to
Long’s.
We do not find Appellants’ arguments regarding the claimed formula
and, in particular, that the Examiner erred by using the claimed formula to
calculate a crystallinity value (App. Br. 15-17) persuasive for the well-stated
reasons provided by the Examiner at pages 8 through 11 of the Answer.
As the Examiner correctly points out (Ans. 10), Appellants included
the claimed formula as a limitation of the claim and specifically defined
crystallinity in those terms. Appellants’ argument in this Appeal, however,
that essentially the claimed formula is not a claim limitation and should not
have been used by the Examiner to calculate a crystallinity is not persuasive
because it directly contradicts the express language of claim 30, which
recites that the crystallinity of the sucrose in the dried coating is, indeed,
“calculated” according to the claimed formula. App. Br. 24 (Claims App’x).
Moreover, as previously discussed above, we find that the Examiner’s
determination that Long anticipates claim 30 is supported by the
preponderance of evidence. Appellants’ arguments regarding the claimed
formula also rest principally on attorney argument and, without more, are
insufficient to rebut or establish the Examiner’s determination in this regard.
De Blauwe, 736 F.2d at 705.
Accordingly, we affirm the Examiner’s rejection of claims 30, 31, 35,
59-61, and 64-66 under 35 U.S.C. § 102(b) as being anticipated by Long.
7
Appeal 2016-002801
Application 13/624,002
Rejections 2, 3, 4, and 5
Appellants do not present any additional substantive arguments in
response to the Examiner’s Rejections 2 through 5, stated above. Rather,
Appellants repeat and rely on essentially the same arguments presented in
response to the Examiner’s Rejection 1 and the Long reference. App. Br. 22
(seeking reversal because of the “mistaken understanding of the relevance of
Equation I” and the “same mistaken understanding of the Long reference . . .
referred to above”); see also id. at 23 (contending the rejections are
“traversed” because of the “identical mistake made in the previously-
described rejections based on Long”).
Accordingly, based on the findings and technical reasoning provided
by the Examiner and for the same reasons discussed above for affirming
Rejection 1, we affirm the Examiner’s Rejections 2, 3, 4, and 5.
DECISION/ORDER
The Examiner’s rejections of claims 30, 31, 35-37, and 59-69 are
affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
8
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. BARRETT, DOUGLAS L. GOEDEKEN,
DANIEL R. GREEN, VICTOR T. HUANG, LAUREN A. JACOBSON,
CHRISTINE M. NOWAKOWSKI, SCOTT K. WHITMAN, and
DANIELLE M. WOJDYLA
Appeal 2016-002801
Application 13/624,002
Technology Center 1700
Before JULIA HEANEY, MONTE T. SQUIRE, and JEFFREY R. SNAY,
Administrative Patent Judges.
Opinion dissenting by SNAY, Administrative Patent Judge.
Each of the rejections on appeal is premised on the Examiner’s
interpretation of claim 30 as reciting a sucrose crystallinity (“y”) that is
calculated by inserting a sucrose ratio (“x”) into the recited formula.
Because I conclude that the foregoing interpretation of the claim is incorrect,
I respectfully dissent from the decision that the rejections should be
affirmed.
Sole independent claim 30 specifies the “crystallinity of the sucrose in
the dried coating” as:
crystallinity (y) > 2.28x2 -1.19x + 0.28
Appeal 2016-002801
Application 13/624,002
where “x is a sucrose ratio of weight sucrose per total weight soluble solids
in the coating.” Under the Examiner’s claim interpretation, the recited
formula is satisfied by any value of “x” because for any “x” there would be a
(y) = 2.28x2 -1.19x + 0 .28. As such, the Examiner’s interpretation
effectively eliminates the crystallinity recitation from the claim. “A claim
construction that gives meaning to all the terms of the claim is preferred over
one that does not do so.” Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d
1364, 1372 (Fed. Cir. 2005).
Rather, I agree with Appellants that a correct reading of claim 30
requires a minimum sucrose crystallinity (y) relative to the sucrose ratio (x)
present in the dried coating, as defined by the recited formula. See App. Br.
12. Such a reading is consistent with Appellants’ separate definitions given
for sucrose crystallinity and sucrose ratio. Compare Spec. 12:28-30 (“The
‘crystallinity’ value [y] of sucrose in a dried coating refers to a ratio of
sucrose in the coating that is crystalline sucrose, per the total amount of
crystalline and non-crystalline sucrose in the coating.”), with Claim 30
(“wherein x is a sucrose ratio of weight sucrose per total weight soluble
solids in the coating”). This interpretation also gives consequential effect to
the recited formula by excluding coatings having a crystallinity value that is
less than 2.28x2 - 1.19x + 0.28.
Because the Examiner based each of the rejections on what I consider
an erroneous claim interpretation, I would reverse.
2