Ex Parte Dick et al

Patent Trial and Appeal BoardOct 24, 2017

12512074 (P.T.A.B. Oct. 24, 2017)

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.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/512,074 07/30/2009 Eberhard Dick 705150 5005 23548 7590 10/26/2017 LEYDIG VOIT & MAYER, LTD 700 THIRTEENTH ST. NW SUITE 300 WASHINGTON, DC 20005-3960 EXAMINER MUKHOPADHYAY, BHASKAR ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 10/26/2017 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): DCpatent@leydig.com Chgpatent @ ley dig. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte EBERHARD DICK and SIMONE WALTER Appeal 2017-002081 Application 12/512,074 Technology Center 1700 Before GEORGE C. BEST, WESLEY B. DERRICK, and MERRELL C. CASHION, JR., Administrative Patent Judges. CASHION, 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 1, 3, 4, 6, 9-15, 18, 19, and 21. We have jurisdiction under 35 U.S.C. §6. Claim 1 illustrates the subject matter on appeal and is reproduced below: 1. A free-flowing gelatin composition, comprising (i) an aqueous liquid, Appeal 2017-002081 Application 12/512,074 (ii) 20 to 40 wt .% gelatin gel particles (dry mass) dispersed therein having a mean particle size in the swollen state of about 0.01 to about 3 mm and, optionally, 20 to 60 wt.% of gelatin hydrolysate dissolved therein having a mean molecular weight of about 1,000 to about 20,000 Da, and (iii) one or more sugar components comprising 10 wt. % or more of saccharides, wherein the sum of the contents of gelatin, gelatin hydrolysate and sugar component(s) is selected such that the composition has a water activity (aw value) of from about 0.8 to 0. 97, and wherein the composition has a water content from about 25% to about 58%. Appellants (Appeal Br. 2) request review of the following rejections from the Examiner’s final office action: 1. Claims 1, 3, 4, 9-15, 18, 19, and 21 rejected under 35 U.S.C. § 103(a) as unpatentable over Kueper (US 4,224,353, issued September 23, 1980), Poppe (US 4,729,897, issued March 8, 1988), and a non-patent literature document—“Water activity vs moisture content”—retrieved by the Examiner on April 28, 2011 (hereinafter referred to as NPL reference). II. Claims 1 and 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Kueper, Poppe, the NPL reference, and Eppler (US 2005/0266137 Al, published December 1, 2005). For Rejection I, Appellants only present arguments with respect to independent claim 1. See generally App. Br. Appellants also rely on the arguments presented when discussing Rejection I to address the separate rejection of claims 1 and 6 (Rejection II). Accordingly, we select claim 1 as representative of the subject matter before us on appeal and limit our discussion to this claim. Claims 3, 4, 6, 9—15, 18, 19, and 21 stand or fall with claim 1. Id. at 9. 2 Appeal 2017-002081 Application 12/512,074 OPINION Prior Art Rejections After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner’s rejections of claims 1, 3, 4, 6, 9— 15, 18, 19, and 21 under 35 U.S.C. § 103(a) for the reasons presented by the Examiner and add the following. Claim 1 is directed to gel food precursor in the form of a free-flowing gelatin composition comprising gelatin gel particles and sugar components in an aqueous liquid. Spec. Tflf 1, 10. The Examiner finds Kueper teaches a gelatin dessert composition containing 5 40% gelatin and a sugar component (sweetener) dissolved in 20-90% water. Final Act. 3^4; Ans. 2—3; Kueper col. 3,11. 1—15. The Examiner also finds that Kueper does not disclose gelatin gel particles. Final Act. 4; Ans. 3. The Examiner finds Poppe discloses the use of gelatin particles as known to make a gelatin food precursor. Final Act. 4; Ans. 3; Poppe col. 2,11. 40—67, col. 3,11. 55—60. Poppe describes the gelatin gel particles as having all the useful applications of gelatin. Poppe col. 3,11. 60— 63. The Examiner determines it would have been obvious that one of ordinary skill in the art to modify Kueper’s composition by using Poppe’s gelatin particles to arrive to a gelatin product with improved wettability and dispersibility at any temperature, as disclosed by Poppe. Final Act. 4, 6; Ans. 3; Poppe Abstract, col. 1,11. 10-15. With respect to the claimed water activity, the Examiner determines that it is a result effective variable that can be modified, as desired , by one skilled in the art through routine experimentation by adjusting the amount of ingredients and water content. Final Act. 6; Ans. 5—6. 3 Appeal 2017-002081 Application 12/512,074 Appellants argue Kueper is directed to a gelatin food precursor comprising gelatin dissolved in an aqueous medium while the claimed invention is directed to a gelatin food precursor comprising gelatin particles dispersed, and not dissolved, in an aqueous medium. App. Br. 3. According to Appellants, changing Kueper’s gelatin food precursor to include gelatin particles as described by Poppe would render Kueper’s gelatin food precursor unsatisfactory for its intended purpose. Id. at 14. Appellants also argue such a modification is also contrary to common sense given that Kueper’s gelatin is already dissolved and Poppe also ultimately dissolves the gelatin in a hot state. Id. at 5. We find these arguments unpersuasive. The arguments do not adequately address the Examiner’s reasons for combining the teachings of the prior art. Ans. 9—10. Moreover, as explained by the Examiner, substituting Kueper’s gelatin material with Poppe’s gelatin particles results in a product where the substituted gelatin particles would be partially dissolved. Ans. 10. That is, the Examiner finds that the syrup of Kueper containing Poppe’s gelatin particles at the point of partial dissolution is a free-flowing gelatin composition comprising gelatin gel particles dispersed in an aqueous liquid as required by the subject matter of independent claim 1. Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1558 (Fed. Cir. 1995) (claims containing no temporal limitation are construed to cover products that at some time contained each of the specifically claimed components). The subject matter of independent claim 1 does not exclude such a product, and Appellants have not adequately argued otherwise. Reply Br. 8. 4 Appeal 2017-002081 Application 12/512,074 While Appellants argue that both Kueper and Poppe use the gelatin in a dissolved state (App. Br. 5; Poppe Abstract, col. 1,11. 9-16), this fact only shows that both Kueper and Poppe recognize that gelatin is best used in the dissolved state at the point of making the final product and does not detract one skilled in the art from using Poppe’s gelatin particles in Kueper’s food precursor. Appellants further argue the claimed water activity is not a result effective variable but, instead, is a characteristic that advantageously provides a gelatin composition which is free-flowing at room temperature and which is microbiologically stable, so that it can be stored and shipped without difficulty. App. Br. 6; Spec. Tflf 14, 16. According to Appellants, one of ordinary skill in the art would not have optimized, by routine experimentation, the water activity value of Kueper in view of Poppe to provide the claimed water activity value of from about 0.8 to 0.97 because it would not make sense to change the water activity value of a dissolved gelatin syrup of Kueper modified in view of Poppe to be that of a “free flowing” “‘dispersed’” gelatin gel particle composition, as claimed. App. Br. 6. We have considered these arguments but are unpersuaded for the reasons presented by the Examiner. Ans. 11. Further, these arguments do not address the syrup from the combined teachings of cited art containing Poppe’s gelatin particles at the point of partial dissolution, as discussed above. In addition, Appellants have directed us to no evidence showing criticality of the water activity. We have also considered Appellants’ argument that Poppe teaches substantially dry and solid gelatin grain and not the claimed gelatin gel 5 Appeal 2017-002081 Application 12/512,074 particles. App. Br. 7; Poppe col. 2,11. 35—60. We find this argument unpersuasive. Appellants’ Specification states “the gelatin gel particle content” is “expressed as dry mass with a water content of ca. 10 wt. %.” Spec. 136. This appears to be consistent with the gelatin of Poppe’s Example 1 having a humidity of 10.4%, as noted by Appellants. App. Br. 7; Poppe col. 4 (Table). Appellants, therefore, have not adequately distinguished the claimed gelatin gel particles from Poppe’s gelatin particles. Accordingly, we sustain the Examiner’s prior art rejections of claims 1, 3, 4, 6, 9-15, 18, 19, and 21 for the reasons given above and presented by the Examiner. ORDER The Examiner’s prior art rejections of claims 1, 3, 4, 6, 9-15, 18, 19, and 21 under 35 U.S.C. § 103(a) are 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 6