Ex Parte Chatel et al

Patent Trial and Appeal Board

Apr 28, 2016

13656776 (P.T.A.B. Apr. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/656,776 10/22/2012
110933 7590 04/28/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Robert Chatel
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.
CQKER.3070DIV 2087
EXAMINER
MUKHOPADHYAY,BHASKAR
ART UNIT PAPER NUMBER
1793
MAILDATE DELIVERY MODE
04/28/2016 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 PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT CHATEL,
JUSTIN FRENCH, and SANDY MUI
Appeal2014-007502
Application 13/656,776
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-18 of Application 13/656,776
under 35 U.S.C. § 103(a) as obvious. Final Act. 1 (Oct. 2, 2013).
Appellants 1 seek reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b ).
For the reasons set forth below, we AFFIRM.
1 The Quaker Oats Company is identified as the real party in interest.
Appeal Br. 2.
Appeal2014-007502
Application 13/656,776
BACKGROUND
The '776 Application describes a process for expanding a high fiber
cereal product by extrusion. Spec. i-fi-12, 4, and 8. The Specification
describes the process as including waxy starch to facilitate the extrusion of
whole grain cereals with significant amounts of dietary fiber. Id.
Claims 1 and 9 are representative of the '776 Application's claims and
are reproduced below from the Claims Appendix to the Appeal Brief:
1. A method of producing a high-fiber expanded cereal
product comprising:
forming a cereal composition by combining a waxy starch in
an amount from about 5 to about 15% by weight of the total
cereal composition, a fiber source in an amount from about 1 to
about 15% by weight of the total cereal composition, and whole
grain cereal flour in an amount of from about 60 to about 90%
by weight of the total cereal composition;
mixing the cereal composition with water in the form selected
from the group consisting of liquid water, steam, and blends
thereof to form a wet, free-flowing mixture; and
extruding the wet, free-flowing mixture at a temperature
between about 300 and about 350°F and forming the expanded
cereal product.
9. A method of producing an expanded cereal product
compnsmg:
forming a cereal composition by combining a waxy starch in
an amount from about 7 to about 10% by weight of the total
cereal composition, a fiber source is in an amount from about 6
to about 10% by weight of the total cereal composition, and
whole grain cereal flour in an amount of from about 60 to about
90% by weight of the total composition;
mixing the total cereal composition with water in the form of
liquid water, steam, and blends thereof, to form a wet, free-
flowing mixture; and
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Application 13/656,776
extruding the wet, free-flowing mixture to form a cooked
cereal dough that expands as it exits the extruder.
Appeal Br. 10, 12.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Cantenot, 2 Singh, 3 and
Faa. 4 Final Act. 3; Ans. 3.
2. Claim 1-18 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination ofUsiak5 and Paa. Final
Act. 6; Ans. 6.
DISCUSSION
Appellants argue for the reversal of claims 1-18 on the basis of
limitations present in independent claims 1 and 9. See Appeal Br. 5-8;
Reply Br. 1-2. We, therefore, limit our analysis to claims 1 and 9.
Dependent claims 2-8 and 10-18 will stand or fall with claims 1 and 9,
respectively. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Rejection 1. The Examiner rejected claims 1-18 as obvious over the
combination of Cantenot, Singh, and Paa. Final Act. 3; Ans. 3.
2 US Patent No. 4,418,088, issued Nov. 29, 1983.
3 US Patent No. 6,451,362 Bl, issued Sept. 17, 2002.
4 US 2008/0050493 Al, published Feb. 28, 2008.
5 EP 1000553 Al, published May 17, 2000.
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Application 13/656,776
The Examiner found that Cantenot describes or suggests every
limitation of the method recited in claims 1 and 9 except: (i) the specific
type of extruder to make an expanded cereal product and (ii) amounts of the
other individual ingredients to make expanded cereal. Final Act. 3. As the
Examiner found, Singh describes a method of expanding cereal, with fiber
constituents and amounts of other ingredients, using a twin screw extruder.
Id., citing Singh, col. 4, 11. 50-65; col. 5, 11. 20-22, 30-35. The Examiner
further found Paa teaches that waxy com starch as an added ingredient
softens the texture and expands during cooking. Final Act. 4, citing Paa,
i-fi-f 14, 8. The Examiner determined that one of ordinary skill in the art
would have been motivated to combine Cantenot's process of making wheat
flour cereal with: (i) Singh's twin screw extruder, which expands cereal
pieces, and (ii) Faa's waxy starch, which softens texture and expands during
cooking, thereby contributing to crunchy structure. Id. at 4--5.
Appellants argue that this rejection should be reversed because:
(1) Paa discloses that waxy starch softens food texture, which teaches away
from Appellants' invention of providing "longer bowl-life" to a "lighter and
crispier" extruded product, Appeal Br. at 4--5, (2) Paa teaches that modified
starch, not waxy starch, contributes to crunchy structure, id. at 6, (3) Paa is
non-analogous art because it is directed to baked food products, id. at 6-7,
and ( 4) Singh teaches away from the claimed invention by teaching the use
of a phytoglycogen coating, instead of waxy starch, to impart the "longer
bowl-life" property in cereal. Id. at 7. We address these arguments below.
First, Appellants' teaching away arguments (1) and (4) are directed to
the properties of reduced solubility in water/milk, lightness, and
crispiness. However, these properties do not appear in the claims-which
are methods of producing an expanded cereal product. The limitations
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Appeal2014-007502
Application 13/656,776
recited in each claim are silent to as to any degree of reduced solubility,
lightness, or crispiness. "Many of appellant's arguments fail from the outset
because, ... they are not based on limitations appearing in the claims .... "
In re Self, 671F.2d1344, 1348 (CCPA 1982).
Furthermore, Appellants' arguments (1) and (4) essentially contend
that the prior art did not recognize the problem solved by their invention.
See Appeal Br. 4--7. Thus, Appellants argue a person of ordinary skill in the
art would not have been motivated to modify Cantenot's process of making
wheat flour cereal to include the waxy starch as described by Paa. Id. at 5.
This argument does not persuade us that the Examiner erred by
concluding that claims 1 and 9 would have been obvious to a person of
ordinary skill in the art. "[T]he law does not require that the references be
combined for the reasons contemplated by the inventors." In re Beattie, 974
F.2d 1309, 1312 (Fed. Cir. 1992); see also In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006). The Supreme Court has stated that it is error to "look only
to the problem the patentee [or applicant] was trying to solve.'' KSR Int'!
Co. v. Teleflex, Inc., 550 U.S. 398, 420 (2007).
In this case, the Examiner identified a reason, albeit a reason different
from that identified by Appellants, for the person of ordinary skill in the art
to combine Cantenot and Paa. Specifically, the Examiner relies on Faa's
disclosure that waxy starch contributes to food product softness as a reason
to combine the cited references. Cross Med. Prods., Inc. v. Medtronic
Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005) ("One of
ordinary skill in the art need not see the identical problem addressed in a
prior art reference to be motivated to apply its teachings."); see also In re
Oetiker, 977 F.2d 1443, 1448 (Fed. Cir. 1992) (Nies, C.J., concurring).
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Application 13/656,776
Appellants have not convinced us that the Examiner erred by relying on
Faa's disclosure for a reason to combine the cited references.
Second, Appellants' argument (2) correctly identifies error in the
Examiner's findings because Paa does not teach that waxy starch contributes
to crunchy structure. We, however, consider this error harmless because, as
stated above: (i) crunchy structure is not a limitation recited in the claims
and (ii) the Examiner identified a suitable reason for the person of ordinary
skill in the art to combine Cantenot and Paa.
Third, Appellants' argument (3) asserts that the Examiner's proposed
combination with Faa's non-analogous art would have the "skilled artisan []
completely waste [Faa's] sheeting and cutting steps[] by using an extrusion
process that would reconstitute the cut pieces back into a bulk dough that is
extruded through a die orifice .... " Reply Br. 2. We are not persuaded by
Appellants' argument because it is well-established that a determination of
obviousness based on teachings from multiple references does not require
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