Ex Parte Graf et alDownload PDFPatent Trials and Appeals BoardJun 25, 201914390488 - (D) (P.T.A.B. Jun. 25, 2019) Copy Citation 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. 2 Appeal 2018-006336 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. 3 Appeal 2018-006336 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/. 4 Appeal 2018-006336 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 5 Appeal 2018-006336 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. 6 Appeal 2018-006336 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, 7 Appeal 2018-006336 Application 14/390,488 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). 8 Appeal 2018-006336 Application 14/390,488 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 9 Appeal 2018-006336 Application 14/390,488 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 10 Appeal 2018-006336 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). 11 Appeal 2018-006336 Application 14/390,488 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 12 Copy with citationCopy as parenthetical citation