Ex Parte Cole

Patent Trial and Appeal BoardDec 28, 2018

14367648 (P.T.A.B. Dec. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/367,648 06/20/2014 29157 7590 K&L Gates LLP-Chicago P.O. Box 1135 CHICAGO, IL 60690 01/02/2019 FIRST NAMED INVENTOR Frank Arthur Cole 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. 3712036-02169 8171 EXAMINER BADR, HAMID R ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 01/02/2019 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): USpatentmail@klgates.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte FRANK ARTHUR COLE Appeal2018-002255 Application 14/367,648 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. WILSON, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. Â§ 134(a), Appellant1 appeals from the Examiner's April 25, 2017 decision finally rejecting claims 12, 13, 15, 16, 20, and 21 as unpatentable under 35 U.S.C. Â§ 103(a). We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). We reverse. CLAIMED SUBJECT MATTER Appellant's disclosure is directed to methods for making dough and dough products said to have improved characteristics (Spec. ,r 1 ). Increasing 1 Appellant identifies the real party in interest as Nestec S.A. (Appeal Br. 2). Appeal2018-002255 Application 14/367,648 malted barley flour amounts and specific processing steps are said to create desired attributes in the dough, such as open grain/cell structure, without excessive fermentation or high water absorption (id. ,r 6). Claim 12 is representative and is reproduced below from the Claims Appendix of the Brief ( emphasis added): 12. A method of making a dough-based food product, the method comprising: mixing a pizza dough having malted barley flour in an amount greater than 1 % to about 5. 0% by flour weight, wherein the malted barley flour comprises at least one enzyme with an enzyme activity level from about 80Â° Lintner to about 110Â° Lintner; fermenting the pizza dough for an amount of time between about 60 and about 120 minutes; and baking the pizza dough to form the dough-based food product. DISCUSSION The only appealed rejection is of claims 12, 13, 15, 16, 20, and 21 as obvious over Tangel2 in view ofRettey3 and Singh. 4 Dependent claims 13, 15, and 16 will stand or fall with claim 12. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Claims 20 and 21 will be addressed separately. Claim 12. The Examiner finds that Tangel discloses each step in the claimed method for making a dough-based food product except that it is 2 Tangel, US 3,615,679, issued Oct. 26, 1971. 3 Rettey, US 2006/0188630 Al, published Aug. 24, 2006. 4 T. Singh et al., Malting of Hulless Barley Cultivars and Glenlea (T. aestivum) Utility Wheat, 342 J. Food Sci. 342--46 (1985). 2 Appeal2018-002255 Application 14/367,648 silent with respect to the requisite: (i) fermentation time and baking temperature of pizza dough, and (ii) enzymatic activity of malted barley flour within the claimed range of Lintner units (Ans. 2-3). With respect to (i), the Examiner relies on Rettey for disclosing the "pizza dough proof time and baking temperature" missing from Tangel (id. at 13). With regard to (ii), the Examiner finds that Tangel "clearly shows that malt is used in pizza dough formulation and [Singh] discloses that a five day malt supplies enzymatic activity in the 93-107 Â°L range" (id. at 3; see also Tangel 2:47-51; Singh 343). The Examiner concludes that "it would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the process of [Tangel] by using a barley malt of specific strength, as disclosed by [Singh], for a certain dough formulation" (Ans. 3). Appellant argues that Tangel does not disclose or suggest the claimed "step of 'mixing a pizza dough having malted barley flour"' (Appeal Br. 7). The Examiner responds by asserting that "[t]he word 'malt' ... is understood by those of ordinary skill in the art as sprouted cereal grain, mostly barley grain (being [a] conventional ingredient in baking and brewing industries)" (Ans. 4). In particular, the Examiner contends that "[t]he malt as disclosed by Tangel is strongly believed to be 'malted barley flour"' (id. at 6). In reply, Appellant contends that "there is no logical underpinning to support that [Tangel's] mere mention of malt is malted barley flour" (Reply Br. 3). 3 Appeal2018-002255 Application 14/367,648 It is well understood that to reject a claim in a patent application as obvious under 35 U.S.C. Â§ 103(a), the Examiner must establish a prima facie case of obviousness, which includes a showing that each of the claimed limitations are either shown or suggested by the prior art. "In the absence of a proper prima facie case of obviousness, an applicant who complies with the other statutory requirements is entitled to a patent." In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998). In this instance, we agree with Appellant that "the generalized allegation that the Examiner strongly believes 'malt' to mean 'malted barley flour' is not based on any evidence in the record and lacks the substantial evidence support necessary to draw such a conclusion" (Reply Br. 4 ). The preponderance of the evidence of record does not support the Examiner's finding that Tangel teaches malted barley flour, as required by the claims. Furthermore, even assuming that Tangel' s reference to "malt" is understood by those of ordinary skill in the art in the baking and brewing industries as comprising mostly barley grain, the Examiner's finding is unsupported by any evidence (see Ans. 4; see also Tangel 2:50-51). While the common knowledge of those of ordinary skill in the art must be consulted when considering whether a claimed invention would have been obvious, there must be an adequate factual foundation indicating that the method claimed by Appellant would have been obvious. Randall Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013). That factual foundation is lacking in the present case. Therefore, Appellant has persuasively argued that the facts and reasons relied on by the Examiner are insufficient to establish a prima facie case of obviousness as to independent claim 12. The rejection of dependent 4 Appeal2018-002255 Application 14/367,648 claims 13, 15, and 16 are reversed for the same reason as independent claim 12. Accordingly, we reverse the rejection of claims 12, 13, 15, and 16 for the reasons set forth above. Claims 20 and 21 Appellant's separate arguments urging reversal of the Examiner's rejection of these claims are substantially similar to Appellant's persuasive arguments set forth above (see, e.g., Reply Br. 10-11). Accordingly, we reverse the rejection of claims 20 and 21 for the reasons set forth above. CONCLUSION We REVERSE the rejection of claims 12, 13, 15, 16, 20, and 21 under 35 U.S.C. Â§ 103(a) as unpatentable over Tangel and Rettey, in view of Singh. REVERSED 5