Ex Parte Katz et al

Patent Trial and Appeal Board

Aug 29, 2017

12314387 (P.T.A.B. Aug. 29, 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.
12/314,387 12/09/2008 Michael Katz 0100024.0622819 3152
26874 7590 08/31/2017
FROST RROWN TODD T T C EXAMINER
3300 Great American Tower SMITH, PRESTON
301 East Fourth Street
CINCINNATI, OH 45202 ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL KATZ, NAIYEE JAY, SARA LUI, and
DAN PREFONTAINE
Appeal 2016-003451
Application 12/314,387
Technology Center 1700
Before KAREN M. HASTINGS, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—21 under 35 U.S.C.
§ 103(a) over at least the combined prior art of Fannon (US 2005/0089623
Al, published Apr. 28, 2005) and Zohoungbogbo (US 2002/0122862 Al,
published Sept. 5, 2002).2
1 The real party in interest is stated to be Saskatchewan Egg Producers
(Appeal Br. 3).
2 Appellants rely upon the same arguments for all the claims (e.g., Appeal
Br. 7), even though various additional references (Ray (US 5,283,077 issued
Feb. 1, 1994), Mottur et al. (US 4,517,204 issued May 14, 1985), Wang et
al. (US 5,989,620 issued Nov. 23, 1999), Haucket al. (US 6,016,742 issued
Jan. 25, 2000), Van Lengerich et al. (US 5,435,714 issued July 25, 1995),
Roy et al. (US 2005/0202143 Al, published Sept. 15, 2005), Furcsik (US
Appeal 2016-003451
Application 12/314,387
We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We AFFIRM.
Independent claim 1 is illustrative of the subject matter on appeal
(emphasis added to highlight key limitation in dispute):
1. An expanded food product comprising an extrudate of
a composition comprising about 25—50% by dry weight of egg
white and about 50-75% by dry weight of an edible starch,
wherein the expanded food product has a moisture content of less
than 8%, a protein content of at least 25%, and a density of less
than 100 grams per liter.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence
supports the Examiner’s conclusion that the subject matter of Appellants’
claims is unpatentable over the applied prior art. We sustain the Examiner’s
§ 103(a) rejections essentially for the reasons set out by the Examiner in the
Answer.
We add the following primarily for emphasis.
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). The question to be
asked is “whether the improvement is more than the predictable use of prior
art elements according to their established functions.” Id. at 417.
In an obviousness analysis, it is appropriate to consider interrelated
teachings of multiple patents; the effects of demands known to the design
5,147,665 issued Sept. 15, 1992)) are applied to claims 5—19, and 21 (Final
Action 5—13).
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Application 12/314,387
community or present in the marketplace; and the background knowledge
possessed by a person having ordinary skill in the art, all in order to
determine whether there was an apparent reason to combine the known
elements in the fashion claimed.
Appellants’ principal argument regarding claim 1 is that there is no
reason to arrive at a food product as claimed based on using egg protein as
exemplified by Zohoungbogbo’s protein list in Fannon’s food product,
because a) Zohoungbogbo does not relate to expanded food products
(Appeal Br. 8), b) the Examiner used impermissible hindsight to select a
single protein amongst the list of proteins in Zohoungbogbo (Appeal Br. 9),
c) Zohoungbogbo teaches away from using egg protein (Appeal Br. 10), and
d) evidence exemplified by Wong et al. shows that the water holding
capacity (WHC) of egg whites is less than half of soy protein such that one
would not have used egg protein as a substitute for the preferred soy protein
of Fannon (Appeal Br. 11; emphasis added). These arguments are reiterated
in the Reply Brief.
Appellants’ arguments are not persuasive of reversible error. The
Examiner aptly points out that, contrary to the Appellants’ position,
Zohoungbogbo is analogous art drawn to healthy food products, including
the expanded food product of breadsticks (e.g., Ans. 15). Indeed,
Zohoungbogbo also teaches its food product for use as cereal flours (cereal
is a known expanded food product) (Zohoungbogbo 12). Appellants also
admit in the background section of their Specification that “[e]gg protein is
widely considered the highest nutritional quality protein of all food sources”
which is “a standard against which all other proteins are evaluated” (Spec.
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Application 12/314,387
5:7—10) and that it has indeed been used as a protein (albeit “as a small part
of total protein”) in an expanded food product (e.g., Spec. 4:10-11).3
We also agree with the Examiner that Zohoungbogbo’s statement, that
whole eggs, dried albumin, or dried egg yolk can be used once a stable
weight for an individual is reached, falls far short of teaching away from
using egg white protein powder (Ans. 16; Zohoungbogbo 1103). Cf. Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1379-80 (Fed. Cir. 2005) (“A
statement that a particular combination is not a preferred embodiment does
not teach away absent clear discouragement of that combination.”). Finally,
Appellants’ evidence that egg white protein has a lower WHC than soy
protein does not convincingly demonstrate that one of ordinary skill would
not have been able to formulate an appropriate food product using, e.g., 25%
egg white protein with 25% of another protein in Fallon’s food product,
which is generally inclusive of all protein sources (Fallon 115; see also Ans.
17). While Appellants state that a “high proportion of egg whites produces
an unsatisfactory product texture” (e.g., Spec. 8), this also falls short of
establishing nonobviousness. Cf. Winner Int'l Royalty Corp. v. Wang, 202
F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact that the motivating benefit
comes at the expense of another benefit, however, should not nullity its use
as a basis to modify the disclosure of one reference with the teachings of
3 An applicant cannot defeat an obviousness rejection by asserting that the
cited references fail to teach or suggest elements which the applicant has
acknowledged are taught by the prior art. Constant v. Advanced Micro-
Device, Inc., 848 F. 2d 1560, 1570 (Fed. Cir. 1988) and In re Nomiya, 509
F.2d 566, 571n.5 (CCPA 1975) (A statement by an applicant that certain
matter is prior art is an admission that the matter is prior art for all
purposes).
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Appeal 2016-003451
Application 12/314,387
another. Instead, the benefits, both lost and gained, should be weighed
against one another.”).
Appellants have not provided persuasive reasoning or persuasive
evidence why one of ordinary skill in the art would not have, using no more
than ordinary creativity, predictably used a known egg white protein powder
as exemplified in Zohoungbogbo in an amount of (at least) 25% of the food
product of the expanded puff protein snack food of Fannon for at least part
of the protein therein (e.g., Ans. 3). A person of ordinary skill in the art
would have had a reasonable expectation of success for using the alternative
egg protein powder disclosed in Zoboungbogbo for at least a part of the
protein sources in Fannon. “Obviousness does not require absolute
predictability of success ... all that is required is a reasonable expectation of
success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (citing In re
O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)).
As we “take account of the inferences and creative steps that a person
of ordinary skill in the art would employ,” we find a person of ordinary skill
in the art would have, within their level of skill, made the expanded protein
based snack food of Fannon using any available protein(s), including egg
white powder, based on the combined teachings of the applied prior art for
reasons articulated by the Examiner (see generally Ans.). KSR Int 7, 550
U.S. at 418; see also id. at 421 (“A person of ordinary skill is also a person
of ordinary creativity, not an automaton”); Ball Aerosol & Specialty
Container, Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009)
(under the flexible inquiry set forth by the Supreme Court, the PTO must
take account of “the inferences and creative steps,” as well as routine steps,
that an ordinary artisan would employ)); In re Fritch, 972 F.2d 1260, 1264—
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Application 12/314,387
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Accordingly, we affirm the Examiner’s prior art rejection of the
claims under 35 U.S.C. § 103(a) for the reasons given above and presented
by the Examiner.
DECISION
The Examiner’s § 103(a) rejections are affirmed.
TIME PERIOD FOR RESPONSE
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
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