Ex Parte Brinker et al

Patent Trial and Appeal BoardApr 27, 2016

12597713 (P.T.A.B. Apr. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/597,713 01119/2010 466 7590 YOUNG & THOMPSON 209 Madison Street Suite 500 Alexandria, VA 22314 04/29/2016 FIRST NAMED INVENTOR Eva-Maria Brinker 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. 2001-1730 1873 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 04/29/2016 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): DocketingDept@young-thompson.com yandtpair@firs ttofile. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EV A-MARIA BRINKER and KERSTIN SCHMIDT Appeal2014-008945 Application 12/597,713 Technology Center 1700 Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and BRIAND. RANGE, Administrative Patent Judges. RANGE, Administrative Patent Judge. DECISION ON APPEAL SUMMARY Appellants appeal 1 under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 20, 22, 24--30, and 34--36. We have jurisdiction. 35 U.S.C. Â§ 6(b). We AFFIRM. 1 According to the Appellants, the real party in interest is CSM Nederland B.V. of Diemen, Netherlands. Br. 1. Appeal2014-008945 Application 12/597,713 STATEMENT OF CASE Appellants describe the claimed invention as relating to a sweetened dough that utilizes non-fermentable carbohydrates so that it can be stored for several hours without dough collapse due to overproofing (i.e., yeast producing too much gas). Spec. 1 :7-12; 2:6-11. Claim 20, reproduced below, is illustrative of the claimed subject matter: 20. A process of preparing a yeast-leavened sweetened dough having a sweetness that is equivalent to the sweetness of a dough containing 5-20% sucrose by weight of flour, said yeast- leavened sweetened dough comprising: 40-80 wt% of flour; 25-50 wt% of water; 3-25wt% of nonfermentable carbohydrates selected from the group consisting of lactose, arabinose, cellobiose, trehalose, xylose, sugar alcohols and combinations thereof; and 0.5-5 wt.% of yeast; said process comprising the steps of combining a dry particulate mix with an aqueous composition and optionally other bakery ingredients to form a flour- and yeast-containing dough, followed by proofing the dough so as to obtain the yeast- leavened dough, said mix comprising: up to 90 wt.% of non-fermentable carbohydrates selected from the group consisting of lactose, arabinose, cellobiose, trehalose, xylose, sugar alcohols and combinations thereof, including at least 3 wt.% of a non-fermentable sugar alcohol and at least 3 wt.% of non-fermentable reducing sugars selected from the group consisting of lactose, arabinose, cellobiose, xylose and combinations thereof; 0-50 wt.% of fermentable sugars selected from the group consisting of sucrose, maltose, glucose, fructose and combinations thereof; 2 Appeal2014-008945 Application 12/597,713 two or more bakery ingredients selected from the group consisting of: 10-90 wt.% of viable yeast; 10-50 wt.% of baking powder; 5-90 wt.% of emulsifier; 3-50 wt.% of ascorbic acid; and 0.0001-1 wt.% ofbakery enzyme; all of these percentages being calculated on the combined amount of these two to five bakery ingredients; and wherein the weight ratio of non-fermentable carbohydrates to fermentable sugars in the dough exceeds 2: 1; and wherein the dough contains less than 5% of fermentable sugar by weight of flour. Br. 13-14 (Claims Appendix). REFERENCES The Examiner relied upon the prior art below in rejecting the claims on appeal: Inoue et al. (hereinafter "Inoue") US 7 ,815,952 B2 REJECTIONS The Examiner made the following rejections: Oct. 19, 2010 Rejection 1. The Examiner rejected claims 20 and 36 under pre-AIA 35 U.S.C. Â§ 112 i-f 2 as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Final Act. 2. Rejection 2. The Examiner rejected claims 20, 22, 24--30, and 34--36 under pre-AIA 35 U.S.C. Â§ 103(a) as unpatentable over Inoue. Id. 3 Appeal2014-008945 Application 12/597,713 ANALYSIS Rejection 1. The Examiner rejects claims 20 and 36 under the second paragraph of pre-AIA 35 U.S.C. Â§ 112 as indefinite. Final Act. 2; Ans. 2, 5. The 2nd paragraph ofÂ§ 112 requires that claims, viewed in light of the specification, inform those skilled in the art about the scope of the invention with reasonable certainty while also recognizing absolute precision is unattainable. Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The Examiner maintains that claim 20 is vague and indefinite because it recites "a flour- and yeast-containing" dough but flour and yeast are not strictly required as mix ingredients. Final Act. 2. As a threshold matter, the Examiner and the Appellants appear to agree claim 20's "flour- and yeast- containing" recitation is limiting. Final Act. 2; Br. 3--4; Ans. 5. We also agree; the recitation is limiting because it is included in the body of the claim where steps of the claimed process are recited. The recited language does not, however, render claim 20 indefinite. There is no contradiction between (1) the "flour- and yeast-containing" recitation requiring flour and yeast in the dough and (2) the mix not explicitly requiring flour or yeast. This is because the dough preparing process of claim 20 comprises various steps. To the extent not explicit, adding flour and/or yeast could be an additional, unrecited step. Similarly, the recited mix comprises ingredients. To the extent not explicit, the mix could additionally comprise unrecited ingredients including flour and/or yeast. The Examiner's Â§ 112 i-f 2 analysis therefore does not persuade us that claim 20 does not define the scope of the claimed invention with reasonable 4 Appeal2014-008945 Application 12/597,713 certainty. Based on the record before us, we therefore reverse the Examiner's 35 U.S.C. Â§ 112 i-f 2 rejection of claims 20 and 36. Rejection 2. The Examiner rejects all claims on appeal as obvious over Inoue. Appellants do not separately argue claims 22, 24--30, or 34--36. We therefore limit our discussion to claim 20. See 37 C.F.R. Â§ 41.37(c)(l)(iv) (2013). We sustain the Examiner'sÂ§ 103 rejection based on the findings of fact, conclusions of law, and rebuttals to arguments well-expressed by the Examiner in the Final Action and in the Answer. We note that the Examiner's findings and rebuttals provided by the Examiner's Response to Argument (Ans. 5-8) stand unchallenged because Appellants have not filed a reply brief. We provide additional comments below for emphasis. Appellants argue Inoue is not concerned with a "sweetened dough having a sweetness equivalent to 5-20% sucrose by weight of flour." Br. 7. We are not persuaded because the Examiner correctly explains that Inoue teaches, for example, dough having sweetener up to 20%. Ans. 5-7; Inoue 7:34--45. The Examiner also explains that Inoue teaches bakery products including Danish pastry, bagels, scones, etc. (Final Act. 3; Inoue 10:36-41) and that it would have been obvious to a person of skill in the art to vary bakery formulations (including amount of sweetener) depending on the type of bakery product and the flavor, taste, and texture desired (Final Act. 3--4; Ans. 6-7). Appellants also argue that the "less-fermentable saccharides" of Inoue are not the same as the claimed "non-fermentable saccharides." Br. 9. We disagree. Saccharide is a synonym for sugars-a type of carbohydrate. The Specification defines "non-fermentable carbohydrate[ s ]" almost identically 5 Appeal2014-008945 Application 12/597,713 to how Inoue defines "less-fermentable saccharides." Compare Spec. 5:3-5 (defining "non-fermentable carbohydrate[s]" as "carbohydrates that cannot readily be digested by ordinary yeast, notably ordinary baker's yeast (S. cerevisiae)") with Inoue 4:56-58 (defining "less-fermentable saccharide[s]" as saccharides "which are not fermented easily by baker's yeast"). Moreover, Inoue and claim 20 list many of the same examples of non- fermentable carbohydrates/less-fermentable saccharides. Ans. 7; Inoue 5:56-6:8 (referencing, for example, lactose, trehalose, and sugar alcohols). Appellants' argument that Inoue' s sweetened dough examples do not provide "sufficient guidance to 'optimize' the method of INOUE so as to approach the claimed invention" is also not persuasive. Br. 9-10. Appellants incorrectly state that only Inoue's Examples 7, 11, 12, and 13 are directed to sweetened dough. Id. The Specification defines "sweetened dough" as "a dough that contains added sweetener, e.g. a fermentable sugar such as sucrose, a non-fermentable sugar such as lactose and/or a sugar alcohol such as sorbitol." Spec. 5:12-15. Under this definition, Inoue's Examples 8 and 9 are also sweetened dough. Inoue 30:58-31: 13 (establishing Example 8 includes maltose, maltitol, and sucrose sweetener); Inoue 31 :40-63 (establishing Example 9 includes trehalose, maltitol, and sucrose sweetener). Appellants do not rebut the Examiner's explanation of why claim 20's ranges are obvious in view of Inoue's Examples 8 and 9. Ans. 7-8. Finally, Appellants argue that Inoue fails to suggest that sweetened dough as claimed would have advantageous properties such as "high- proofing stability in combination with adequate surface browning during baking." Br. 11. This argument appears to be implying unexpected results. 6 Appeal2014-008945 Application 12/597,713 Appellants refer to pages 12 and 13 of the Specification as disclosing recipes providing a browning effect (Br. 11 ), but those pages do not describe any results as unexpected. As a consequence, Appellants do not provide the appeal record with any evidence of unexpected results reasonably commensurate with the scope of claim 20. See In re Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011) ("Evidence of secondary considerations must be reasonably commensurate with the scope of the claims."). This argument is, therefore, also not persuasive. We thus sustain the Examiner's rejection of claims 20, 22, 24--30, and 34--36. DECISION For the reasons above, we reverse the Examiner's rejection of claims 20 and 36 under pre-AIA 35 U.S.C. Â§ 112 i-f 2. For the reasons provided by the Examiner and emphasized above, we affirm the Examiner's rejection of claims 20, 22, 24--30, and 34--36 under 35 U.S.C. Â§ 103 as unpatentable over Inoue. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 7