Ex Parte Gramza et al

Patent Trial and Appeal BoardJul 31, 2014

11276422 (P.T.A.B. Jul. 31, 2014)

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. 11/276,422 02/28/2006 Erin Marie Gramza 1410-77222-US 3103 48940 7590 07/31/2014 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 07/31/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ERIN MARIE GRAMZA, OSCAR LOZA, RASHAD A. BAHRANI, BRIAN MICHAEL REINHART, GRANT IAN GALLOWAY, RONALD L. MEIBACH and VIRGIL METZGER ____________ Appeal 2012-010609 Application 11/276,4221 Technology Center 1700 ____________ Before CHUNG K. PAK, LINDA M. GAUDETTE, and KAREN M. HASTINGS, Administrative Patent Judges. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s final decision rejecting claims 11–19 and 22 under 35 U.S.C. § 103(a) over the combined prior art of Moran (EP 0 997073 A2, published Oct. 27, 1999), Schapiro (US 3,100,909, issued Aug. 20, 1963), and Robert S. Igoe et 1 The Real Party in Interest is Kraft Foods Global Brands LLC (App. Br. 3). Appeal 2012-010609 Application 11/276,422 2 al., (Dictionary of Food Ingredients 3rd ed., Chapman and Hall, pp. 122 and 152 (1996)). We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM. Claim 11 is illustrative of the claimed subject matter: 11. A method for preparing a non-dusting and friable dairy mixture, the method comprising: (1) combining about 5 to about 86 percent of a protein powder having greater than about 40 percent protein, about 5 to about 86 percent of dairy powder having dairy protein and at least about 70 percent lactose, about 5 to about 35 percent added water, and about 4 to about 20 percent salt at ambient temperatures of about 60 to about 75°F to form a mixture; and (2) blending the mixture at ambient temperatures of about 60 to about 75°F to form a non-dusting and friable dairy mixture; and wherein a ratio of protein powder to dairy powder in the dairy mixture is in the range of about 17:1 to about 1:17, wherein a ratio of added water to salt in the dairy mixture is less than about 6.2, wherein the dairy mixture has a water activity less than about 0.87, wherein the dairy mixture is stable from microbiological growth at room temperature for greater than about 5 days, and wherein the dairy mixture is non-dusting and friable. Independent claim 22 is directed to a method of preparing a cheese product that includes forming a non-dusting and friable dairy base mixture as recited in claim 11 (App. Br. Claims App’x). Appellants argue the claims as a group, and focus on independent claim 11 (App. Br. generally). Appellants rely upon the arguments for claim 11 for independent claim 22 (App. Br.). Accordingly, all the claims stand or fall together. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appeal 2012-010609 Application 11/276,422 3 ANALYSIS We have thoroughly reviewed each of Appellants’ arguments for patentability. However, we are in agreement with the Examiner that the claimed subject matter of representative claim 11 is unpatentable under § 103 in view of the applied prior art. Accordingly, we sustain the Examiner’s prior art rejections, and we add the following primarily for emphasis. In assessing whether a claim to a combination of prior art elements would have been obvious, the question to be asked is whether the improvement of the claim is more than the predictable use of prior art elements or steps according to their established functions. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “[T]he analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” Id. at 418. We are not persuaded by Appellants’ argument that it would not have been obvious to use all the ingredients claimed to form an intermediate product in Moran, since, for example, whey powder was added to the “final processing step” of Moran (App. Br. 18 ). It is well established that in evaluating references it is proper to take into account not only the specific teachings of the references but also the inferences which one skilled in the art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826 (CCPA 1968). Contrary to Appellants’ argument, a preponderance of the evidence supports the Examiner’s position that the whey material of Moran may be added before the final processing/emulsification step, and thus one of ordinary skill would have envisioned adding it to form an Appeal 2012-010609 Application 11/276,422 4 intermediate product as also suggested by the teachings of Shapiro (see e.g., App. Br. 22; Ans. 7, 8). As pointed out by the Examiner, Shapiro exemplifies a method of combining two or more solids, including milk solids and whey, with salt and water to form a friable non dusting intermediate product (Ans. 6). Appellants have not adequately addressed the Examiner’s position that it would have been prima facie obvious to use Shapiro’s method to make a friable powder mixture of known ingredients for cheese as the intermediate product of Moran (Ans. 7 (“It would have been obvious to one of ordinary skill in the art for the powdered ingredient of Moran which is hydrated to form a cheese product to be formed by the method of Schapiro.”)). Appellants have not provided persuasive reasoning or credible evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably used known ingredients in the amounts and ratios claimed, in a known process to make a friable and non-dusting product as exemplified in Shapiro, for the intermediate cheese product exemplified in Moran (e.g., Ans. 7, 8; App. Br. and Reply Br. generally). See KSR, 550 U.S. at 421 (“A person of ordinary skill is also a person of ordinary creativity, not an automaton.”). Indeed, the law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. These cases have consistently held that Appellants must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Appeal 2012-010609 Application 11/276,422 5 Appellants rely upon the Second Galloway Declaration2 to show that combinations of MPC powder and whey powder “do not necessarily lead to non-dusting and friable mixtures” (App. Br. 29; emphasis in original). The evidence relied on by Appellants is unpersuasive of patentability. As pointed out by the Examiner, this Declaration was in comparison to a reference no longer relied upon (Ans. 15). Shapiro is now relied upon to exemplify that a friable and non-dusting combination can be made using these types of ingredients with water, such that it is not unexpected to be able to form such a powder mixture (Ans. 16; see also Ans. 7). The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991); 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 result 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). Contrary to Appellants’ position, as pointed out by the Examiner, the evidence falls short of establishing criticality of the claimed ranges and ratios (Ans. 16). One of ordinary skill readily appreciates that the amounts of each ingredient as well as the resultant ratios are result effective variables 2 Grant Galloway Declaration “Second Declaration of Grant Galloway”, dated Sept. 7, 2010. Appeal 2012-010609 Application 11/276,422 6 in making a food product, and the claimed ranges, as well as the claimed ratios, are “extremely broad” (Ans. 16). See In re Peterson, 315 F.3d at 1330-31 (in order to successfully rebut a prima facie case of obviousness, a showing of unexpected results must be commensurate in scope with the claims); see also, In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (“Establishing that one (or a small number of) species gives unexpected results is inadequate proof, for ‘it is the view of this court that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” In re Tiffin, 448 F.2d 791, 792 (CCPA 1971)” (parallel citation omitted)); see also, In re Dunn, 349 F.2d 433, 439 (CCPA 1965) (“[W]e do not feel it an unreasonable burden on appellants to require comparative examples relied on for non-obviousness to be truly comparative. The cause and effect sought to be proven is lost here in the welter of unfixed variables.”). On this record, Appellants have not adequately shown, much less explained, why the evidence relied upon is reasonably commensurate in scope with the claims, or would have been unexpected by one of ordinary skill in the art in view of the applied prior art. Thus, Appellants have not overcome the rejections by rebutting the prima facie case with sufficient evidence of unexpected results. The Examiner’s position that the Declarations and Specification relied upon fail to evince unexpected results from the recited combination of components is supported by a preponderance of the evidence.3 3 In addition, we emphasize that, although secondary considerations such as unexpected results must be taken into account, they do not necessarily control the obviousness conclusion. See, e.g.,Sud-Chemie, Inc. v. Multisorb Appeal 2012-010609 Application 11/276,422 7 Therefore, we affirm the Examiner’s § 103 rejection of claims 11–19 and 22 on appeal. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. ORDER AFFIRMED lp Technologies, Inc., 554 F.3d 1001, 1009 (Fed. Cir. 2009) (“[E]vidence of unexpected results and other secondary considerations will not necessarily overcome a strong prima facie showing of obviousness”).