Ex Parte Cox

Patent Trial and Appeal BoardAug 27, 2014

11699602 (P.T.A.B. Aug. 27, 2014)

MOD PTOL-90A (Rev.06/08) APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. 11/699,602 01/30/2007 Andrew Richard Cox F3409US EXAMINER UNILEVER PATENT GROUP 800 SYLVAN AVENUE AG WEST S. WING ENGLEWOOD CLIFFS, NJ 07632-3100 DEGUIRE, KATHERINE E ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 08/29/2014 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW RICHARD COX ____________ Appeal 2013-003315 Application 11/699,602 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 5, 8 through 14 and 16 through 34. We have jurisdiction under 35 U.S.C. § 6. Appeal 2013-003315 Application 11/699,602 2 Appellant’s invention is directed to a frozen aerated food composition. App. Br. 3.1 Claim 34 illustrates the subject matter on appeal and is reproduced below: 34. A product comprising a container which contains a frozen aerated food composition which comprises: A. the frozen aerated food composition which is selected from the group of ice cream, sorbet, sherbet and frozen yoghurt; B. the container having a dispensing aperture through which the frozen aerated food composition can be dispensed by application of pressure; C. wherein the frozen aerated food composition further comprises: 1. at least 0.001 wt % class II hydrophobin added in isolated form to the frozen aerated food composition; 2. a sugar; 3. a polysaccharide containing thickener; and D. wherein the amount of overrun differential determined by subtracting the overrun measured after dispensing the pressurized frozen aerated food composition from the overrun measured before pressurizing the frozen aerated food composition is less than for the same frozen aerated food composition containing 10 wt. % skim milk 1 Appellant filed a principal Appeal Brief on June 8, 2012 and three supplemental briefs on July 13, 2012, April 9, 2013 and July 12, 2013. The supplemental briefs were filed solely for the purpose of updating the status of the Related Appeals and Interferences. For the purposes of this Decision, all of our references to Appellant’s Appeal Brief are to the principal Appeal Brief of June 8, 2012 which was addressed in the Examiner’s Answer of October 9, 2012. Appeal 2013-003315 Application 11/699,602 3 powder in place of the class II hydrophobin prepared the same way. The Examiner relied on the following references in rejecting the appealed subject matter: Schur US 4,066,794 Jan. 3, 1978 Malone et al., US 2004/0161503 A1 Aug. 19, 2004 Michael J. Kershaw and Nicholas J. Talbot, Review: Hydrophobins and Repellents: Proteins with Fundamental Roles in Fungal Morphogenesis, 23 Fungal Genetics and Biology 18-33 Article No. FG97l 022 (1998). Appellant (Appeal Br. 4) requests review of the following rejection from the Examiner’s final office action: Claims 5, 8-14 and 16-34 rejected under 35 U.S.C. § 103(a) as unpatentable over Malone, Kershaw and Schur. OPINION Prior Art Rejection 2, 3 After review of the respective positions provided by Appellant and the Examiner, we AFFIRM for the reasons presented by the Examiner and add the following. We refer to the Final Office Action for a complete statement of the rejection. Final Action 2-6. 2 We limit our discussion to independent claim 34. Appellant has not presented separate arguments for dependent claims 5, 8-14, and 16-33. See Appeal Brief, generally. Accordingly, these claims stand or fall together with independent claim 34. 3 A discussion of Schur is unnecessary for disposition of the present appeal. The Examiner relied upon this reference for features not related to the claimed overrun differential and the use of hydrophobins. Final Act. 3. Appeal 2013-003315 Application 11/699,602 4 Appellant argues that, absent undue experimentation or hindsight, one skilled in the art would not have arrived at the claimed invention from the combined teachings of the cited art because one skilled in the art understand that the properties responsible for the relative overrun are related to complex factors and, thus, cannot be predicted with reasonable accuracy. App. Br. 5. Appellant additionally argues that the Examiner’s assertion that one skilled in the art would expect the composition from the combined teachings of Malone and Kershaw to inherently have the claimed overrun differential is unsupported by fact and/or technical reasoning. App. Br. 6. We are unpersuaded by these arguments and agree with the Examiner’s determination of obviousness because Appellant’s arguments do not address the Examiner’s reasons for combining the references. The Examiner found Malone discloses a cartridge containing a frozen aerated composition dispensable from the cartridge through an aperture under pressure that did not comprise the claimed hydrophobin. Final Action 2-4; Malone ¶¶ 20, 37. 40, 63. The Examiner found Kershaw discloses class II hydrophobins as effective foam stabilizers for aerated food products that come out of pressurized containers. Final Action 3; Kershaw 30-31. Given Kershaw’s disclosure, a person of ordinary skill in the art would have reasonably expected that hydrophobins would have been suitable for addition to Malone’s aerated food composition to stabilize the foam of Malone’s pressurized aerated product. Kershaw 30. “For obviousness under § 103, all that is required is a reasonable expectation of success.” In re O’Farrell, 853 F.2d 894, 904 (Fed. Cir. 1988). Where the Examiner establishes a reasonable belief that the property or characteristic recited in the claims would have been inherent to the Appeal 2013-003315 Application 11/699,602 5 product or process, the burden of proof shifts to Appellant to show that this characteristic or property is not possessed by the prior art. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977); In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). We find that the Examiner has established a prima facie case of obviousness. Appellant has not adequately explained why the composition of the combined Malone and Kershaw references would not result in an overrun differential that is less than for the same frozen aerated food composition containing skim milk instead of hydrophobin as required by the subject matter of independent claim 34. Appellant further argues that they have discovered a specific aerated composition dispensed via pressure that unexpectedly provides increased overrun differential when compared with compositions having skim milk powder in place of hydrophobins. App. Br. 5-6; Spec. Examples, 15-21. We are also unpersuaded by this argument. The subject matter of independent claim 34 is not limited to “a specific composition.” Moreover, we note that the comparative compositions and the compositions of the invention in the Examples of the Specification are not distinguished only by the presence of hydrophobin. Spec. Tables 1 and 3. For example, Example 3 not only substitutes skim milk in favor of hydrophobin, but also significantly increases the amount of sucrose compared to Comparative Example B. Spec. Table 3. Appellant has not adequately explained the reasons for the difference in amount of sucrose and skim milk. Therefore, Appellant has not compared the aerated frozen compositions having hydrophobin with the same aerated frozen compositions containing skim milk, as required by the subject matter of claim 34. Spec. Tables 1 and 3. Appeal 2013-003315 Application 11/699,602 6 Thus, the showing in the Specification is not commensurate in scope with the claims. Accordingly, we sustain the Examiner’s prior art rejection of claims 5, 8-14 and 16-34 under 35 U.S.C. § 103(a) as unpatentable over Malone, Kershaw and Schur for the reasons given above and presented by the Examiner. ORDER The Examiner’s prior art rejection of claims 5, 8-14 and 16-34 under 35 U.S.C. § 103(a) is affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED dm