Ex Parte Chatel et al

Patent Trial and Appeal BoardNov 21, 2012

11313483 (P.T.A.B. Nov. 21, 2012)

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.usplO.gov APPLICAnON NO. FILING DATE FIRST NAMED INVE."ITOR ATTORNEY DOCKET NO. CONFIRMAnON NO. 5785111313,483 12/2112005 Robert Chatel 006943.01173 6681I 7590 11121/2012 EXAMINER BANNER & WITCOFF, LTD, and ATTORNEYS FOR CLIENT NO, 006943 TRAN, LIEN THUY 10 SOUTH WACKER DR, ART UNIT PAPER NUMBER SUITE 3000 CHICAGO, IL 60606 1793 MAIL DATE DELIVERY MODE 11121/2012 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 ROBERT CHATEL and YONGSOO CHUNG ____________ Appeal 2011-010402 Application 11/313,483 Technology Center 1700 ____________ Before CHUNG K. PAK, HUBERT C. LORIN, and GRACE KARAFFA OBERMANN, Administrative Patent Judges. OBERMANN, Administrative Patent Judge. DECISION ON APPEAL The named inventors (collectively “Appellant”) appeal under 35 U.S.C. § 134 from the rejection of claims 1-4 and 10-15 directed to a cereal composition. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. STATEMENT OF THE CASE Claim 1 is illustrative of the subject matter on appeal: 1. A cereal composition comprising water and, on a dry weight basis: whole grain cereal flour in an amount from about 45% to about 55% by weight based on total dry cereal composition; refined grain cereal flour in an amount from about 20% to about 40% by weight based on the total dry cereal composition; sugar in an amount less than about 15% by weight based on the total dry cereal composition; and waxy starch in an amount from about 2% to about 10% by weight based on the total dry cereal composition, Appeal 2011-010402 Application 11/313,483 2 wherein the composition is suitable for producing an expanded extruded cereal product. The Examiner relies on the following evidence of unpatentability: Ringe US 5,024,996 Jun. 18, 1991 Calandro US 5,093,146 Mar. 3, 1992 Racicot US 7,244,457 B2 Jul. 17, 2007 THE REJECTIONS Appellant seeks our review of two grounds of rejection entered under 35 U.S.C. § 103(a): Claims 1-4 and 10-15 over Calandro in view of Ringe; and claims 1-4 and 10-15 over Racicot in view of Calandro. App. Br. 9.1 ISSUES The following dispositive issues arise: 1. Does the Examiner err in finding that Calandro discloses “waxy starch” within the meaning of claim 1? 2. Does the Examiner err in finding that Calandro’s cereal composition as modified by Ringe “is suitable for producing an expanded extruded cereal product” within the meaning of claim 1? 3. Does the Examiner err in finding that an ordinary artisan would have been led to modify Racicot’s cereal composition to include Calandro’s “waxy starch”? We answer these questions in the negative and AFFIRM. 1 We refer to the Examiner’s Answer mailed February 14, 2011 (“Ans.”), the Appeal Brief filed December 6, 2010 (“App. Br.”), and the Reply Brief filed April 14, 2011 (“Reply Br.”). Appeal 2011-010402 Application 11/313,483 3 ANALYSIS Appellant argues claims 1-4 and 10-15 as a group. We select claim 1 as representative of the group. Claims 2-4 and 10-15 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Rejection 1: Obviousness Over Calandro in view of Ringe The Examiner finds that Calandro’s modified waxy starch is a “waxy starch” within the meaning of claim 1. Ans. 4, 6. We give claim terms their broadest reasonable interpretation consistent with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Appellant directs us to nothing in the claims or the Specification that places any limit on the “waxy starch” of the invention or that distinguishes the “waxy starch” of the invention from Calandro’s modified waxy starch. Claim 1and Spec. generally. On the contrary, the Specification makes clear that the “waxy starch” of claim 1 “can be any suitable starch known to those skilled in the art.” Spec. ¶ [0008]. Appellant’s bare attorney argument purporting to establish what “one skilled in the art knows” about modified waxy starches is not convincing. Reply Br. 2 (raising several technical arguments that are unsupported by objective evidence); see App. Br. 12 (attorney argument that “waxy starch is distinct from a chemically modified” starch); see In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997) (attorney argument cannot take the place of evidence). A preponderance of evidence supports the Examiner’s view that “[t]he claims do not place any limitation on the waxy starch” and the written description sets forth “no composition or characteristics” that “define the waxy starch” of claim 1 “over the waxy starch disclosed in Calandro.” Ans. Appeal 2011-010402 Application 11/313,483 4 6. On this record, we agree with the Examiner that Calandro’s “modified waxy starch . . . is still a waxy starch” within the meaning of claim 1. Id. Appellant also argues that neither Calandro nor Ringe discloses or suggests a whole grain cereal composition that “is suitable for producing an expanded extruded cereal product” as specified in claim 1. App. Br. 13 (“expanded” implies “a puffed cereal” product). On this point, Appellant attacks the individual disclosures of Calandro (i.e., for failing to suggest the specified amount of whole grain flour) and Ringe (i.e., for failing to suggest “a puffed cereal”). Id. Appellant does not, however, effectively rebut the Examiner’s finding that it would have been obvious to vary the proportions of whole wheat and refined flours in Calandro in view of Ringe to arrive at a cereal composition formed from the ingredients in the amounts specified in claim 1. App. Br. 12-14; Ans. 4-5. The Specification reveals that the disputed limitation (suitability for producing a puffed or expanded extruded cereal product) flows naturally from a cereal composition that is formed from the ingredients in the amounts specified in claim 1. Specifically, the Specification discloses that the disputed property flows from “adding relatively small quantities of waxy starch” to the cereal composition. Spec. ¶ [0016]. The disputed limitation thus adds nothing critical over the compositional ingredients of claim 1, but rather, flows naturally from a composition made from those ingredients. As discussed above, the evidence supports the Examiner’s finding that Calandro’s composition as modified by Ringe includes all of the ingredients of the composition in the amounts specified in claim 1, including “waxy starch” in the required amount. Ans. 4-5. On this record, we agree with the Examiner that the disputed limitation represents an intended use that flows Appeal 2011-010402 Application 11/313,483 5 naturally from Calandro’s composition as modified by Ringe. Ans. 4, 7 (disputed limitation is an “intended use” of the specified composition that “does not determine the patentability of the product”). The fact that Appellant may have “recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the difference would otherwise have been obvious." Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985); see In re Kubin, 561 F.3d 1351, 1357 (Fed. Cir. 2009) (“Even if no prior art of record explicitly discusses the [limitation], [applicants’] application itself instructs that [the limitation] is not an additional requirement imposed by the claims on the [claimed invention], but rather a property necessarily present in [the claimed invention].”) We thus affirm the Examiner’s conclusion that the subject matter of claims 1-4 and 10-15 would have been obvious over Calandro in view of Ringe. Rejection 2: Obviousness over Racicot in view of Calandro The Examiner finds that Racicot discloses all of the compositional ingredients of claim 1, but for waxy starch in the specified amount. Ans. 5. Appellant challenges the Examiner’s conclusion that an ordinary artisan would have been led to add Calandro’s waxy starch to Racicot’s cereal composition. App. Br. 14-15. The Examiner finds that Calandro adds waxy starch “to produce a cereal product having a bowl life of up to about 10 minutes.” Ans. 6. Specifically, “[t]he starch forms a film on the cereal to inhibit sogginess.” Id. (citing Calandro 3:58-67; 4:1-5; 8:5-25). Appeal 2011-010402 Application 11/313,483 6 Thus, in the Examiner’s view, an ordinary artisan would have been led by Calandro to add waxy starch to Racicot’s cereal product, “which is typically consumed with milk,” in order to obtain the bowl-life benefits disclosed in Calandro. Id. Appellant counters that an ordinary artisan “would have no idea” that waxy starch “would improve a composition intended for an expanded extrusion.” App. Br. 14. Establishing a prima facie case of obviousness, however, does not require that the references solve the same problem solved by the inventor. In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992) (“[a]s long as some motivation or suggestion to combine the references is provided by the prior art taken as a whole, the law does not require that the references be combined for the reasons contemplated by the inventor”) (citations omitted). On this record, the Examiner makes out a prima facie of obviousness notwithstanding that Appellant uses waxy starch for a different purpose than Calandro. In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972) (“The fact that appellant uses sugar for a different purpose does not alter the conclusion that its use in a prior art composition would be prima facie obvious from the purpose disclosed in the references.”). We thus affirm the Examiner’s conclusion that the subject matter of claims 1-4 and 10-15 would have been obvious over Racicot in view of Calandro. CONCLUSION We have considered Appellant’s other arguments but find them unpersuasive for the reasons stated in the Answer. We thus affirm the rejections of claims 1-4 and 10-15. Appeal 2011-010402 Application 11/313,483 7 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED sld