Ex Parte Frye

Patent Trial and Appeal Board

Oct 9, 2018

12976527 (P.T.A.B. Oct. 9, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/976,527 12/22/2010 Richard Keith Frye
201 7590 10/11/2018
UNILEVER PATENT GROUP
700 SYLVAN AVENUE
A4
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
F6270US 7622
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
10/11/2018 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):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD KEITH FRYE
Appeal2017-010100
Application 12/976,527
Technology Center 1700
Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, 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 the final rejection of
claims 12, 14, and 23-31. We have jurisdiction under 35 U.S.C. § 6.
We affirm.
Appellant's invention seeks to address the loss of consistency in
bound salads prepared for use in restaurants and other commercial food-
dispensing establishments. Spec. 1. According to Appellant, bound salads
lose consistency due to watering out (weeping) of the salad over time. Id.
Appellant's invention addresses this problem by adding a source of
glucomannan to the salad. The glucomannan absorbs substantial amounts of
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Application 12/976,527
water and, as such, prevents "watering out" of the salad. Id. at 3. Claim 12
illustrates the invention:
12. A bound salad product which would otherwise
experience water separation, comprising dressing and an
inclusion , the dressing comprising an emulsified oil and water
or being fat free, the inclusion being anything and everything
added to the dressing, and said bound salad product having
from 10 to 60 wt% salad dressing and having a water separation
level of 3 g or less after 2 days of storage at 4 °C and levels of
those of the inclusions that impart moisture, amylase or both in
the bound salad of from 5 to 90 wt% and a level of
glucomannan in the bound salad product in the range of from
0.1 wt% to 10 wt, said level being calculated by excluding
inclusions other than glucomannan, and wherein the inclusion
which imparts moisture, amylase or both is a source of amylase
and/or moisture and is selected from the group of tuna fish,
cabbage, fruits, vegetables, cheese, and meats.
Appellant1 (see generally App. Br.) requests review of the following
rejections from the Examiner's Final Action:
I. Claims 12, 14, 23-28, and 30 rejected under 35 U.S.C. § 103(a)
as unpatentable over Women's Health (Recipes, WOMEN'S HEALTH
(January/February 2008) 140 and Crowder (Don Crowder, Awesome Tuna
Salad (Nov. 2008), DON-GUITAR.COM, http://www.don-guitar.com/tuna.html
("Crowder")).
II. Claim 29 rejected under 35 U.S.C. § 103(a) as unpatentable
over Women's Health, Crowder, and Ford (US 4,582,714, issued Apr. 15,
1986).
III. Claim 31 rejected under 35 U.S.C. § 103(a) as unpatentable
over Women's Health, Crowder, and Waring (Sam Waring, Collection (4):
Tuna and Macaroni Salads, GOOGLE (Feb. 10, 1998),
https://groups.google.com/forum/?hl=en#!search/tuna$20cabbage$20salad/r
ec.food.recipes/ZJ cK8nseFU4/CeZDe4 7 eOsOJ) ("Waring").
1 The Unilever Group ( of companies) is identified as the real party in
interest. App. Br. 3.
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Application 12/976,527
IV. Claims 12, 14, and 23-31 rejected under 35 U.S.C. § I03(a) as
unpatentable over Ryan (US 6,733,769 Bl, issued May 11, 2004) and Elise
(Elise Bauer, Waldorf Salad, SIMPLY RECIPES (Oct. 2007-Aug. 2009),
https://www.simplyrecipes.com/recipes/waldorf _salad/ ("Elise")).
Appellant presents arguments only for independent claim 12
(Rejections I and IV) and dependent claim 14 (Rejection I) and does not
separately address the patentability of dependent claims 23-31. See
generally App. Br. Accordingly, we select independent claim 12 as
representative of the appealed claims. 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv). Claims
23-31 stand or fall with claim 12. Claim 14 is addressed separately.
OPINION
Prior Art Rejections based on Women's Health Article
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the rejections of claims 12, 14, and 23-31 for the
reasons presented by the Examiner. We add the following for emphasis.
Claim 12
We refer to the Examiner's Final Action for a complete statement of
the rejection of claim 12. Final Act. 2---6.
Appellant does not dispute that the cited art teaches a bound salad
product comprising glucomannan. See generally App. Br. However,
Appellant argues that the cited art does not teach the use of glucomannan to
solve the issue of watering out of bound salads. Id. at 5. According to
Appellant, absent impermissible hindsight, the use of glucomannan by the
Women's Health article is primarily for dietary purposes and its disclosure
of mixing glucomannan thoroughly so it can soak up whatever sauce,
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Application 12/976,527
dressing or other liquid is on your plate would not lead one of ordinary skill
to use glucomannan to prevent watering out of bound salads. Id. at 6.
We find these arguments unpersuasive. Where the Examiner
establishes a reasonable belief that the property or characteristic recited in
the claims would have been inherent to the 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).
The Examiner finds, and Appellant does not dispute, that Women's
Health discloses a bound salad comprising glucomannan, as claimed. Final
Act. 2-5. Further, absent a showing to the contrary, the Examiner finds one
of ordinary skill in the art would expect that the bound salad of Women's
Health, a prior art product comprising the same ingredients as the claimed
invention, to have the claimed water level property in view of the presence
of glucomannan. Id. at 5. Thus, there is a reasonable basis for one skilled in
the art to expect the prior art bound salad and the claimed bound salad to
have the same properties, such as a water separation level of 3 grams or less
after 2 days of storage at 4°C. Accordingly, the burden is shifted to
Appellant to demonstrate that the water separation level of the claimed
bound salad was not possessed by the prior art. Best, 562 F.2d at 1255.
Appellant has not adequately explained or directed us to evidence showing
why the prior art's bound salad does not necessarily or inherently possess
the disputed property.
Claim 14
Claim 14 requires a bound salad which would otherwise drain over
0.1 gram of liquid in 3 days. App. Br. 6.
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Application 12/976,527
Appellant argues that the Examiner did not address this claim
limitation. Id. However, the Examiner specifically addressed this claim in
the Final Action while addressing the water separation level of claim 12 in
the context addressed above. Final Act. 5; see also Ans. 15. Thus, we are
unpersuaded by this argument for the reasons given in our discussion above.
Accordingly, we affirm the Examiner's prior art rejections of claims
12, 14, and 23-31 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and given above.
Prior Art Rejection based on Ryan
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the rejection of claims 12, 14, and 23-31 for the
reasons presented by the Examiner. We add the following for emphasis.
Claim 122
We refer to the Examiner's Final Action for a complete statement of
the rejection of claim 12. Final Act. 8-11.
Appellant argues Ryan does not disclose bound salads. App. Br. 7.
We are unpersuaded by this argument because the Examiner is relying on
the combined disclosures of Ryan and Elise to teach the use of Ryan's
glucomannan containing salad dressing in bound salads. Final Act. 9-10.
Appellant's argument does not address the rejection presented by the
Examiner.
Appellant argues that, while Ryan mentions water retention among
other characteristics, the Examiner points to no teaching of bound salads or
2 We limit our discussion to claim 12.
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that glucomannan can be used to solve the problems with bound salads
mentioned above and in the Specification. App. Br. 7. Appellant further
asserts that the Examiner has not established that Ryan's compositions
would otherwise experience water separation. Id.
We are also unpersuaded by these arguments. These arguments are
similar to the line of arguments presented in addressing the rejection over
Women's Health. We again determine that the Examiner presented a
reasonable basis for one skilled in the art to expect the prior art bound salad
from the combined teachings of Ryan and Elise and the claimed bound salad
to have the same properties, such as a water separation level of 3 grams or
less after 2 days of storage at 4°C. Accordingly, the burden is shifted to
Appellant to demonstrate that the water separation level of the claimed
bound salad was not possessed by the prior art. Best, 562 F.2d at 1255.
Appellant has not adequately explained or directed us to evidence showing
why the prior art's bound salad does not necessarily or inherently possess
the disputed property.
Accordingly, we affirm the Examiner's prior art rejection of claims
12, 14, and 23-31 under 35 U.S.C. § 87(a) over Ryan and Elise for the
reasons presented by the Examiner and given above.
Unexpected Results
Appellant mentions examples as showing unexpected results from
using glucomannan to minimize watering out. App. Br. 6. The examples
are presented on pages 11-18 of the Specification.
When evidence of secondary considerations is submitted, we begin
anew and evaluate the rebuttal evidence along with the evidence upon which
the conclusion of obviousness was based. In re Rinehart, 531 F.2d 1048,
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1052 (CCPA 1976). The burden of establishing unexpected results rests on
Appellant. Appellant may meet this burden by establishing that the
difference between the claimed invention and the closest prior art was an
unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA
1972). The unexpected results must be established by factual evidence, and
attorney statements are insufficient to establish unexpected results. See In re
Geisler, 116 F.3d 1465, 1470-71 (Fed. Cir. 1997). Further, a showing of
unexpected results supported by factual evidence must be reasonably
commensurate in scope with the degree of protection sought by the claims
on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
After weighing Appellant's evidence in support of patentability,
including the examples in the Specification, we determine that a
preponderance of the evidence weighs in favor of obviousness.
We first note that it is not clear that the showing distinguishes the
claimed invention from the closest prior art (Women's Health or Ryan).
Moreover, the showing is not reasonably commensurate in scope with the
claim because Appellant's examples in the Specification are based on
amounts of Konjac flour used, which is a source of glucomannan. It is not
clear if the percent Konjac flour translates directly to the claimed range of
glucomannan.
Thus, on this record, Appellant has not adequately explained why the
evidence shows the improvement in water separation level would have been
unexpected by one of ordinary skill in the art and that the testing is
reasonably commensurate in scope with the claims.
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DECISION
The Examiner's prior art rejections under 35 U.S.C. § I03(a) are
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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