Ex Parte Cox et al

Patent Trial and Appeal BoardAug 27, 2014

11699601 (P.T.A.B. Aug. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ANDREW RICHARD COX, ANDREW BAXTER RUSSELL and KAREN MARGARET WATTS ____________ Appeal 2013-006996 Application 11/699,601 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 6 through 8, 10 through 14, 19, 20, 37, and 40 through 51. We have jurisdiction under 35 U.S.C. § 6. Appeal 2013-006996 Application 11/699,601 2 Appellants’ invention is directed to an aerated composition. App. Br. 3-4.1 Claim 40 illustrates the subject matter on appeal and is reproduced below: 40. An aerated composition comprising: a. at least 0.001 % wt class II hydrophobin added in isolated form; b. 1 to 50% of an emulsified fat phase wherein the fat phase is liquid at 5 oC; c. a milk protein emulsifier; d. a sugar; e. wherein the aerated composition comprises an air phase with an overrun of at least 10%; f. wherein the air phase remains substantially the same in terms of bubble size under thermal abuse conditions of storage for 10 days at -10 oC; g. wherein the change in foam volume after 4 days at 5 oC is not more than 49%; and h, wherein the composition has a smaller average bubble size both immediately after preparation and after aging under thermal abuse conditions of storage for 10 days at -10oC compared to the same composition prepared with the same 1 Appellants filed a principal Appeal Brief on July 12, 2012 and three supplemental briefs on August 8, 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 Appellants’ Appeal Brief are to the principal Appeal Brief of July 12, 2012 which was addressed in the Examiner’s Answer of October 10, 2012. Appeal 2013-006996 Application 11/699,601 3 concentration of milk protein emulsifier but without HFB II under the same conditions. The Examiner relied on the following references in rejecting the appealed subject matter: Jones US 5,336,514 Aug. 9, 1994 Michael J. Kershaw and Nicholas J. Talbot, REVIEW: Hydrophohins and Repellents: Proteins with Fundamental Roles in Fungal Morphogenesis, 23 FUNGAL GENETICS AND BIOLOGY , 18-33 (1998) ARTICLE NO. FG97L 022. Appellants (Appeal Br. 5) request review of the following rejection from the Examiner’s Final Office Action: Claims 6-8, 10-14, 19, 20, 37, and 40-51 rejected under 35 U.S.C. § 103(a) as unpatentable over Jones and Kershaw. OPINION Prior Art Rejection 2 After review of the respective positions provided by Appellants 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 2-5. Appellants argue that Jones does not disclose or suggest the properties of hydrophobin as a foam stabilizer and Kershaw relates to a generic 2 Appellants argue independent claims 40 and 41 together. App. Br. 5. We limit our discussion to independent claim 40. Appellants have not presented separate arguments for dependent claims 6-8, 10-14, 19, 20, 37, and 42-51. See Appeal Brief, generally. Accordingly, these claims stand or fall together with their respective independent claim. Appeal 2013-006996 Application 11/699,601 4 description of hydrophobins and their possible effect on foam stability. App. Br. 5. Thus, Appellants argue that the cited art does not disclose or suggest an aerated composition comprising the claimed overrun stability and bubble size and stability. Id. at 5-6. According to Appellants, absent undue experimentation or hindsight, there is no reasonable expectation of success that one skilled in the art would not have arrived to the claimed invention from the combined teachings of the cited art because foam stability and bubble size depend on other factors that make the stability and size unpredictable. Id. at 6. We are unpersuaded by these arguments and agree with the Examiner’s determination of obviousness. As our reviewing court has held [o]ften, it will be necessary for a court to look to interrelated teachings of multiple patents . . . ; and the background knowledge possessed by a person having ordinary skill in the art, all in order to determine whether there was an apparent reason to combine the known elements in the fashion claimed by the patent at issue. To facilitate review, this analysis should be made explicit. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Further, for the purposes of an obviousness inquiry, there is no requirement that an artisan’s reasons for making modifications of the prior art be the same as that of Appellants. In re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996) (citing In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc) (“Although the motivation to combine here differs from that of the applicant, the motivation in the prior art to combine the references does not have to be identical to that of the applicant to establish obviousness.”)); see also In re Linter, 458 F.2d 1013, 1016 (CCPA 1972) (“The fact that [A]ppellant uses [a claimed Appeal 2013-006996 Application 11/699,601 5 feature] 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.”). Appellants have not disputed that Jones is directed to an aerated composition that differs from the claimed invention in that it does not include hydrophobin. Final Action 2-4; App. Br. 5; Jones col. 2, ll. 4-16, col. 3, ll. 17-27, Table 3. The Examiner relies on Kershaw as teaching class II hydrophobins as effective foam stabilizers for aerated compositions. Final Action 2; Kershaw 30-31. The Examiner concluded that it would have been reasonable to add Kershaw’s hydrophobin to Jones’s aerated composition to stabilize it. Final Action 3. Appellants have not specifically challenged the Examiner’s reasons for combining the teachings of Jones and Kershaw. Instead, Appellants rely on the properties of the composition (the claimed overrun stability and bubble size and stability) to distinguish the claimed invention. App. Br. 5. However, one skilled in the art would have expected these properties to be present in the aerated composition from the combined teachings of Jones and Kershaw due to its similarity with the claimed composition. Appellants have not shown otherwise. Appellants also argue that they have discovered compositions that have unexpectedly specific superior foam and bubble size stability compared to comparative compositions not comprising the claimed hydrophobins. App. Br. at 6. Appellants rely on the Declaration of Andrew Richard Scott in further support of this assertion. App. Br. 6; Decl. 3-4. We are also unpersuaded by these arguments and agree with the Examiner’s determination that the results are not unexpected in that Appeal 2013-006996 Application 11/699,601 6 Kershaw teaches that addition of hydrophobins to aerated compositions forms stable foams. Ans. 10-12; Kesrshaw 30. Moreover, Appellants rely on a single Example with a hydrophobin content of 0.1 weight % (Spec. Table 1; Decl. 2) while independent claim 40 requires a hydrophobin content of at least 0.001 weight %. Appellants have not explained why this Example is representative of the entire range of hydrophobin claimed by the subject matter of independent claim 40. Accordingly, we sustain the Examiner’s prior art rejection of claims 6-8, 10-14, 19, 20, 37, and 40-51 under 35 U.S.C. § 103(a) as unpatentable over Jones and Kershaw for the reasons given above and presented by the Examiner. ORDER The Examiner’s prior art rejection of claims 6-8, 10-14, 19, 20, 37 and 40-51 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 lp