Ex Parte Graf et al

Patent Trials and Appeals Board

Jun 25, 2019

14390488 - (D) (P.T.A.B. Jun. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/390,488 10/03/2014 Eric Edward Graf
74475 7590 06/27/2019
Societe des Produits Nestle S.A.
Attn: Patent Department
One Checkerboard Square
St. Louis, MO 63164
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.
12305-US-PCT 1055
EXAMINER
GEORGE,PATRICIAANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/27/2019 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):
patentdepartment@rd.nestle.com
gary.lobel@us.nestle.com
Lori.Bowen@purina.nestle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIC EDWARD GRAF
and VIVEK DILIP SAVANT
Appeal 2018-006336
Application 14/390,488
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1, 2, and 5-14 of Application
14/390,488 under 35 U.S.C. § 112, ,-J 2, as indefinite, and 35 U.S.C. § 103(a)
as obvious. Final Act. 2, 3, 9 (Sept. 9, 2016). Appellants1 seek reversal of
1 Nestec S.A. is identified as the applicant and real party in interest. Appeal
Br. 1.
Appeal 2018-006336
Application 14/390,488
these rejections pursuant to 35 U.S.C. § 134(a).2 We have jurisdiction under
35 U.S.C. § 6(b ).
For the reasons set forth below, we affirm.
BACKGROUND
The '488 Application describes a shelf-stable acidified dairy and/or
dairy-like products having a five-component stabilizer system. Spec ,-J 1.
Claim 1 is representative of the '488 Application's claims and is
reproduced below from the claims listing in the Corrected Claims Appendix
to the Appeal Brief:
1. A shelf stable, acidified, dairy and/or non-dairy milk
composition comprising:
a dairy and/or non-dairy milk component; and
a stabilizer system comprising a combination of
carrageenan, pectin, maltodextrin, native tapioca,
and modified com starches;
wherein:
the pectin comprises from about 0.2% to about
1.5% w/w of the composition;
the carrageenan comprises from about 0.2% to
about 2.0% w/w of the composition;
the native tapioca comprises from about 1.0% to
about 4.0% w/w of the composition;
2 The Examiner lists claims 14-22 as withdrawn from consideration. Final
Act. 2. Appellants repeat the same list of withdrawn claims in the Appeal
Brief. Appeal Br. 1. The Examiner, however, rejected claim 14 under
§ 112, ,-J 2, and§ 103(a); and Appellants appeal these rejections of claim 14.
See, e.g., Final Act. 2, 3; Appeal Br. 1. Accordingly, we view the
Examiner's and Appellants' identification of claim 14 as withdrawn from
consideration as a clerical error.
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Application 14/390,488
the modified com starch comprises from about
1.0% to about 4% w/w of the composition;
and
the maltodextrin comprises from about 1.0% to
about 5.0% w/w of the composition; and
wherein the stabilizer increases a thickness of the shelf
stable, acidified, dairy and/or non-dairy milk
composition.
Corrected Claims App. 2.
REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 1, 2, and 5-14 are rejected under 35 U.S.C. § 112, ,i 2,
as indefinite. Final Act. 2; Answer 3.
2. Claims 1, 2, 5-9, 11, and 14 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Banavara,3
Natural Products Insider,4 DeWille,5 Jacobson,6 Ryan,7
Banken,8 and Vega. 9 Final Act. 3; Answer 4.
3 US 2010/0104696 Al, published April 29, 2010
4 Getting to the Root of Tapioca Starch, available at
http://www.naturalproductsinsider.com/articles/2006/l l/getting-to-the-root-
of-tapioca-starch (2006).
5 WO 99/056563 A2, published Nov. 11, 1999.
6 WO 99/051114 Al, published Oct. 14, 1999.
7 WO 00/067592 Al, published Nov. 16, 2000.
8 US 2009/0098272 Al, published April 16, 2009.
9 US 2011/0217443 Al, published Sept. 8, 2011.
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Application 14/390,488
3. Claims 10, 12, and 13 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Banavara, Natural
Products Insider, De Wille, Jacobson, Ryan, Banken, Vega, and
Girdwain. 10 Final Act. 8; Answer 10.
DISCUSSION
Rejection 1. The Examiner rejected claims 1, 2, and 5-14 as
indefinite. Final Act. 2; Answer 3.
Claim 1 recites "the stabilizer." The Examiner determined that this
claim is indefinite because the phrase lacks proper antecedent basis. Final
Act. 3. Claim 5 recites "improves," which the Examiner determines is
"indefinite because no point of relativity is provided that make[ s] clear the
scope of the improvement which is required" to meet the claim. Id. at 2.
In response, Appellants have amended claim 1 to provide proper
antecedent basis to the term "the stabilizer" by replacing it with the term
"the stabilizer system." Reply Br. 2. Additionally, Appellants have
canceled claim 5. Id. Appellants assert that these amendments overcome
the indefiniteness rejection, but the Examiner has refused to enter the
amendments. Id. Appellants thus request that the Board provide them "the
opportunity to amend the claims to overcome this rejection" on appeal. Id.
It appears that Appellants have not filed a petition to resolve the
Examiner's refusal to enter the amendments prior to the matter reaching the
Board. The Examiner's refusal to enter an amendment after final is a
10 Jessica Girdwain, A Better Blend, Runner's World (2010) available at
https://www.runnersworld.com/nutrition-weight-loss/a20850583/nutritious-
smoothies-for-runners/.
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Application 14/390,488
petitionable matter under 3 7 C.F .R. § 1.181 and is, therefore, not within the
jurisdiction of the Board. 37 C.F.R. § 1.127; In re Berger, 279 F.3d 975,
984 (Fed. Cir. 2002); see also In reMindick, 371 F.2d 892,894 (CCPA
1967) (holding that the refusal of an examiner to enter an amendment after
final rejection of claims is a matter of discretion, and any abuse of discretion
is remedied by a Rule 181 petition to the Commissioner of Patents, and not
by appeal to the Board of Appeals).
We, therefore, affirm Rejection 1 of claims 1, 2, and 5-14.
Rejection 2. The Examiner rejected claims 1, 2, 5-9, 11, and 14 as
obvious over the combination of Banavara, Natural Products Insider,
DeWille, Jacobson, Ryan, Banken, and Vega. Final Act. 3; Answer 3.
Appellants argue for the reversal of this rejection on the basis of
limitations present in independent claim 1. See Appeal Br. 4-12; Reply Br.
2-14. We, therefore, limit our analysis for this rejection to claim 1.
In rejecting claim 1, the Examiner found that Banavara describes or
suggests every component and limitation of the claimed composition except
for: (i) the use of native tapioca and (ii) the quantities of each of the recited
stabilizers. Answer 4-6 ( citing Banavara ,-J,-J 35, 46, 85, 86, 88).
With respect to (i) the use of native tapioca, the Examiner found, inter
alia, Natural Products Insider teaches that native tapioca "provides the
benefit[s] of being non-GMO and non-allergenic, and from a processing
standpoint[,] it gives a more-stable end product with a uniform consistency
and a better flavor profile." Answer 5 (citing Natural Products Insider
8th ,-J). The Examiner determined that it would have been obvious to the
ordinarily skilled artisan to modify Banavara' s "method of making
beverages comprising tapioca ... to include a step wherein the tapioca is the
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Application 14/390,488
specifically claimed type, [i.e.,] native, because [Natural Products Insider]
teaches that there are benefits to its use," such as those set forth above.
Answer 5.
Regarding (ii) the quantities of each of the recited stabilizers, the
Examiner found that DeWille, Jacobson, Ryan, Banken, and Vega each
disclose the making of acidified beverages comprising pectin, carrageenan,
maltodextrin, native tapioca, and modified com starches, respectively, in
amounts which encompass and overlap the claimed ranges. Id. at 6-7 ( citing
De Wille 8:29-9:9; Jacobson Abstract, 4:4; Ryan claim 6, 6:23-25; Banken
claim 9, claim 1, ,-J 48; Vega Title, ,-J 44).
The Examiner determined that
[i]t would have been obvious to one of skill in the art, at the
time of the invention, to modify [Banavara' s] method of
making acidified nutritional compositions comprising pectin
carrageenan, maltodextrin, tapioca, and modified com starches
... to include a step wherein the composition comprises the
following amounts:
about 0.2 to 2.0 wt[.]% carrageenan;
about 0.2 to 1.5 wt[.]% pectin,
about 1.0 to 5.0 wt[.]% maltodextrin;
about 1.0 to 4.0 wt[.]% tapioca; and
about 1.0 to 4 wt[.]% modified com starches, as claimed,
because the combination of [De Wille], [Jacobson], Ryan,
Banken, and Vega illustrate that encompassing and overlapping
ranges are suitable for [a] similar intended use, including
methods of making acidified nutritional compositions
comprising pectin, carrageenan, maltodextrin, tapioca, and
modified com starches.
Answer 7.
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Application 14/390,488
Appellants argue that the rejection of claim 1 should be reversed
because: (1) Banavara lists 19 suitable stabilizers, but this list only includes
the claimed pectin and carrageenan stabilizers, Appeal Br. 6 ( citing
Banavara ,i 85); (2) of the remaining claimed stabilizers, "Banavara[] lists
maltodextrins, modified com starch, and modified tapioca starch as ... three
of 14 different examples of carbohydrate sources," Appeal Br. 6 ( citing
Banavara ,i 46); (3) the combination of seven prior art references to render
the presently claimed composition obvious provides no indication of which
parameters were critical to a stabilizer system, Appeal Br. 9; (4) "Banavara[]
do[ es] not even mention the thickness or viscosity of the nutritional
composition disclosed therein, and thus cannot possibly provide any
motivation or reasonable expectation of success in modifying the thickness
of the composition," id. at 6; and (5) Appellants have "surprisingly found
that the specific combination of five stabilizers in the claimed stabilizer
system ... advantageously increases the thickness and enhances body,
texture, and mouth-feel of the composition without requiring the use of
excessive amounts of protein." Id. at 4-5.
Appellants' arguments are not persuasive.
First, Appellants assert in connection with arguments (1) and (2), that
Banavara' s teachings regarding 19 stabilizers and 14 carbohydrates fails to
provide any "guidance on how to select and combine only five ... of these
33 varied ingredients to arrive at the claimed stabilizer system." Id. at 6.
Regarding Banavara's disclosure of suitable carbohydrates, it is not
dispositive that Banavara lists maltodextrins, modified com starch, and
modified tapioca starch as carbohydrates, not stabilizers. As the Examiner
found, the applied prior art teaches that pectin, carrageenan, maltodextrin,
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tapioca, and modified com starches are effective, in combination, for a
similar intended use in an acidified nutritional compositions. Answer 13,
15; see also In re Fritch, 972 F.2d 1260, 1264 (Fed. Cir. 1992) ("It is well
settled that a prior art reference is relevant for all that it teaches to those of
ordinary skill in the art.").
We, furthermore, are not persuaded by Appellants' assertion that
Banavara' s "33 varied ingredients" detracts from the obviousness of claim 1.
Appeal Br. 6. On these facts, we agree with the Examiner that selection of
the 5 claimed ingredients out of Banavara's 33 possible options would have
provided one of ordinary skill in the art at the time of the invention with a
reasonable expectation of success. Answer 14; see Merck & Co., Inc. v.
Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a
reference "discloses a multitude of effective combinations does not render
any particular formulation less obvious."); In re Corkill, 771 F.2d 1496,
1500 (Fed. Cir. 1985) (obviousness rejection of claims affirmed in light of
prior art teaching that "hydrated zeolites will work" in detergent
formulations, even though "the inventors selected the zeolites of the claims
from among 'thousands' of compounds"); In re Susi, 440 F.2d 442, 445
(CCPA 1971) (obviousness rejection affirmed where the disclosure of the
prior art was "huge, but it undeniably include[ d] at least some of the
compounds recited in appellant's generic claims and [was] of a class of
chemicals to be used for the same purpose as appellant's additives").
Second, contrary to Appellants' argument (3), the obviousness
criterion is not based on the number of references, but what the references
would have described or suggested to a person of ordinary skill in the art in
the field of invention. In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991).
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We find nothing about the Examiner's combination of numerous references
that detracts from the obviousness of claim 1-the prior art uses the various
elements for the same purposes as they are used by Appellants, making the
claimed invention as a whole obvious.
Third, Appellants' arguments (3) and (4) unpersuasively place the
burden on the Examiner to show Banavara teaches that the combined five
specific ingredients would have functioned to stabilize the composition and
increase the thickness thereof.
As explained by the Examiner, because the applied prior art "provides
a composition with all of the specifically claimed stabilizer ingredients, it
would logically follow that the same combination of components would
inherently have the same properties, including stabilizing with increased
thickness of the shelf stable, acidified, dairy and/or non-dairy milk
composition, as in claim l ." Answer 6.
On this record, the Examiner's findings that the combined known
components of the proposed composition would have had the claimed
properties are reasonable. Therefore, the burden is on Appellants to provide
evidence or reasoning sufficient to rebut the findings. In re Best, 562 F.2d
1252, 1255 (CCPA 1977) ("Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of [the] claimed product."). We find, however, that
Appellants have not provided any evidence or reasoning that would support
a conclusion that the ingredients of Banavara's modified nutritional
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composition would not have possessed the functional effects recited in
claim 1.
Fourth, in connection with argument (5), Appellants state that the
Examiner has failed to establish a ''prima facie case of obviousness for the
claimed stabilizer system of five specific ingredients present at the
concentrations claimed." Appeal Br. 7.
The Examiner, however, has made findings that the applied prior art
discloses overlapping ranges for each of the five claimed components.
Answer 6-7. This is sufficient to create a prima facie case of obviousness.
See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case
of obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art).
This prima facie case of obviousness can be overcome if Appellants
show either (i) that the prior art teaches away from the claimed invention or
(ii) that there are new and unexpected results relative to the closest prior art.
Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir.
2004) (citing In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997); In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990)).
Here, Appellants do not argue that any of the references relied upon
by the Examiner teaches away from the claimed subject matter. Rather,
Appellants assert in argument ( 5) that the specific combination of
ingredients in the claimed amounts unexpectedly "increases the thickness
and enhances body, texture, and mouth-feel of the composition without
requiring the use of excessive amounts of protein." Appeal Br. 4-5.
Appellants' argument, however, is not persuasive because
for a showing of "unexpected results" to be probative evidence
of non-obviousness, it falls upon the applicant to at least
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Application 14/390,488
establish: (1) that there actually is a difference between the
results obtained through the claimed invention and those of the
prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972);
and (2) that the difference actually obtained would not have
been expected by one skilled in the art at the time of invention,
Id.; In re D'Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971)[.]
In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973) (italics added). In this
instance, Appellants have not compared the claimed composition with the
closest prior art composition of Banavara. Appellants, furthermore, do not
point to any disclosure in the Specification that supports the assertion that
these properties were unexpected. We, therefore, agree with the Examiner
that Appellants have not made a persuasive showing of unexpected results.
Answer 9.
Appellants raise new arguments against the Examiner's findings
regarding the applied prior arts teachings for the first time in the Reply
Brief. Reply Br. 9-13. These arguments are untimely. We, therefore, will
not consider them. Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010)
(informative) ( explaining that arguments and evidence not timely presented
in the principal Brief will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
14 77 (BP AI 2010) (informative) ("Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.").
In view of the foregoing, we affirm the Examiner's Rejection 2 of
claim 1. Thus, we also affirm Rejection 2 and Rejection 3 of claims 2 and
5-14, which ultimately depend from claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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DECISION
For the reasons set forth above, we affirm the indefiniteness rejection
of claims 1, 2, and 5-14 and the obviousness rejections of claims 1, 2, and
5-14 of the '488 Application.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
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