Ex Parte Kishimoto et al

Patent Trial and Appeal Board

Feb 9, 2016

11783350 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111783,350 0410912007
23373 7590 02/11/2016
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Yuka Kishimoto
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.
Ql00943 6114
EXAMINER
BERRIOS, JENNIFER A
ART UNIT PAPER NUMBER
1613
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YUKA KISHIMOTO and HIROSHI OGA
Appeal2013-007062
Application 11/783,350
Technology Center 1600
Before DEMETRA J. MILLS, ERIC B. GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a food
for inhibiting a postprandial increase in blood neutral fat level. The
Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b ). We affirm.
1 Appellants identify the Real Party in Interest as Matsutani
Chemical Industry Co., Ltd. (see App. Br. 2).
Appeal2013-007062
Application 11/783,350
Statement of the Case
Background
"According to the recent researches, factors such as the level of the
neutral fat value increased after the intake of a meal and the time required
for the reduction thereof to a normal level have attracted special interest
lately as risk factors for arteriosclerosis"(Spec. 2, 11. 10-14 ).
The Claims
Claims 7 and 13-1 7 are on appeal. Independent claim 7 is
representative and reads as follows:
7. A food for inhibiting a postprandial increase in blood
neutral fat level, comprising, a high fat-content meal and as an
effective component, a water-soluble and hardly digestible
starch decomposed product containing hardly digestible
components in an amount of at least 35% by mass as a solid
content, wherein said high fat-content meal has a fat content of
20-30% by mass, and wherein the ratio, by mass, of the content
of fats in said high fat-content meal to that of said hardly
digestible components falls within the range of from 1 :0.05 to
1:0.18.
The Issue
The Examiner rejected claims 7 and 13-17 under 35 U.S.C. § 103(a)
as obvious over Wakabayashi, 2 Wolkstein, 3 and Carey4 (Ans. 3--4).
The Examiner that "Wakabayashi teaches a method for preventing
obesity and impaired glucose tolerance by incorporating indigestible dextrin
containing at least 30% by weight of digestible components into a food"
2 Wakabayashi et al., US 5,505,981, issued Apr. 9, 1996.
3 Wolkstein, M., US 4,626,441, issued Dec. 2, 1986.
4 Carey, D., US 5,370,893, issued Dec. 6, 1994.
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Application 11/783,350
(Ans. 3). The Examiner finds that Wakabayashi teaches "the use of
indigestible dextrin in amounts ranging from 5-25%, in products such as
chocolate, jam, ice cream, etc. Example 15 demonstrates ice cream having
5% of Pinefiber C" (Ans. 3).
The Examiner finds that the "teachings of W olkstein and Carey
demonstrate that ice cream is well known in the art to have a fat content
ranging from 16-38%" (Ans. 4). The Examiner finds that "the art teaches
ratios that overlap with those instantly claimed" (Ans. 4).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner's conclusion that Wakabayashi, Wolkstein, and Carey
render claim 7 obvious?
Findings of Fact
1. Wakabayashi teaches "a method for imparting an ability of
preventing obesity and impaired glucose tolerance to foods which comprises
incorporating indigestible dextrin containing at least 30% by weight of
indigestible components into a food in an amount ranging from 1 g to 30 g
per meal of the food" (Wakabayashi, col. 3, 11. 3 7--41 ).
2. Wakabayashi teaches that "indigestible dextrin used in the
invention shows various physiological effects such as an effect of
controlling the intestinal function, an effect of improving serum lipids and
an effect of inhibiting the insulin-secretion in response to sugar-intake"
(Wakabayashi, col. 9, 11. 25-29).
3. Wakabayashi teaches that the "inhibitory effect of the
indigestible dextrin was significant when it was used in an amount ranging
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Appeal2013-007062
Application 11/783,350
from 0.065 to 1.3 gas expressed in terms of the amount of the indigestible
components per 1.5 g of sugar" (Wakabayashi, col. 10, 11. 57---61 ).
4. Wakabayashi teaches that "Pinefiber C (trade name of a
powdery indigestible dextrin available from Matsutani Chemical Industries,
Ltd. and prepared from potato starch as a starting material by the method (3)
discussed above) having a content of indigestible components of 87. 7% by
weight was used" (Wakabayashi, col. 13, 11. 62---66).
5. Example 15 of Wakabayashi teaches an ice cream mixture as
reproduced below:
Component
Raw cream
Butter
Condensed milk (sugnr content: 44.2%)
Skim milk
Sugar
Indigestible dextrin of Example l
Emulsion stabilizer
Vanilla flavor
Water
Amount
(parts by weight)
8.4
42
19.2
2.3
2.5
5
0.7
0.1
57.6
Wakabayashi teaches that these components were "mixed, heated to 80Q C.
to be dissolved and homogenized. Then, the mixture was aged for 24 hours
and rapidly cooled to -40 QC. to obtain ice cream" (Wakabayashi, col. 18, 11.
28--44).
6. In addition to ice cream, Wakabayashi teaches that dextrin may
be added to pudding in Example 14, to strawberry jam in Example 16, to
chocolate in Example 12, and to sponge cake in Example 11 (see
Wakabayashi, col. 17, 1. 2 8 to col. 18, 1. 59).
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Appeal2013-007062
Application 11/783,350
7. W o lkstein teaches that "ice cream normally contains about 15-
17% sucrose and com syrup sweetener, about 10% or more butterfat and
about 35% total milk solids .... Other frozen desserts normally contain
from about 10 to 25% sucrose and other caloric sugar sweeteners and about
2 to 20% butterfat and milk solids" (Wolkstein, col. 2, 11. 55---63).
8. Wolkstein teaches that "[h]igh fat content ice creams such as
Haagen-Dazs, Frusen Gladje or Alpen Zauber which have about 16% fats
and about 20% air and Godiva which has about 20% fat and 20% air are
considered quality products characterized as rich desserts" (Wolkstein, col.
2, 1. 67 to col. 3, 1. 4).
9. Carey teaches a powdered ice cream product comprising "a
ratio by weight of approximately 8-18% butterfat, 15% non-fat milk solids,
12% sugar[,] 0.3-1 % stabilizer" (Carey, col. 4, 11. 5-7; claim 1).
Principles of Law
"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'! Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). "As noted by the
Court in KSR, "[a] person of ordinary skill is also a person of ordinary
creativity, not an automaton." 550 U.S. at 421.
Analysis
We adopt the Examiner's findings of fact and reasoning regarding the
scope and content of the prior art (Ans. 3--4; FF 1-9) and agree that claim 7
is rendered obvious by Wakabayashi, Wolkstein, and Carey. We address
Appellants' arguments below.
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Appeal2013-007062
Application 11/783,350
Appellants contend that "Wakabayashi et al do not disclose or suggest
a high fat-content meal that has a fat content of 20-30% by mass, do not
disclose or suggest that the ratio of fat to hardly digestible components in
such a meal should be controlled" (Br. 5). Appellants contend that "one
seeking to control obesity as in Wakabayashi et al would not have been led
to increasing the fat content in Example 15, since the fat in a food is known
to contribute to obesity" (Br. 5).
We do not find these arguments persuasive because Wakabayashi
broadly teaches the addition of dextrin to any food (FF 1 ), and in particular
to high calorie foods including ice cream, pudding, sponge cake, chocolate
andjam (FF 6). While Wakabayashi does not indicate foods with 20% fat,
W olkstein evidences that frozen treats such as ice cream may normally
contain high levels of sugar and fat (FF 7) including brands such as Godiva
with 20% fat (FF 8). We agree with the Examiner that it is the combination
of Wakabayashi and Wolkstein that renders the claims obvious (see Ans. 6).
We also agree that the ordinary artisan would have been motivated by
Wakabayashi to add dextrin to high fat ice creams such as Godiva (FF 8) in
order to obtain the benefits identified by Wakabayashi including "controlling
the intestinal function, an effect of improving serum lipids and an effect of
inhibiting the insulin-secretion in response to sugar-intake" (FF 2).
Obviousness is not based on increasing the fat content of Example 15,
but rather in obtaining Wakabayashi's benefits of added dextrin in known
ice cream compositions such as the 20% fat Godiva brand taught by
Wolkstein (FF 2, 8). While Wakabayashi is clearly interested in obesity,
Wakabayashi is also interested in impaired glucose tolerance and the
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Application 11/783,350
incorporation of dextrin into Godiva ice cream products would reasonably
be expected to prevent impaired glucose tolerance (FF 2).
We recognize, but find unpersuasive, Appellants' argument that the
"ratio of fat to indigestible components in Example 15 of Wakabayashi et al
thus is about 1 :0.434 (10/4.34), which does not overlap and does not suggest
the presently claimed range" (Br. 7). We also recognize, but find
unpersuasive, Appellants' argument that the "Examiner has provided no
reason why one would be motivated to change the ratio of sugar and
indigestible component in Example 15" (Br. 10).
As explained by the Examiner, if an ice cream, as per Example 15 of
Wakabayashi, contains 5 grams of dextrin (FF 5) where 30% of the dextrin
is indigestible fiber (FF 1 ), then the total indigestible fiber content will be
1.5% (see Ans. 4). If the same 5 grams of dextrin is added to Godiva brand
ice cream with 20% fat as taught by Wolkstein (FF 8), "the ratio of fats to
indigestible dextrin is 1:.075 [i.e., 20%:1.5%], thus demonstrating that the
art teaches ratios that overlap with those instantly claimed" (Ans. 4).
Moreover, Wakabayashi teaches that the amount of indigestible
dextrin may vary from 1 to 30 g in the food product (FF 1) with a varying
range of indigestible dextrin (FF 3) while Wolkstein teaches that the amount
of fat in ice cream and frozen desserts may vary from 2 to 20% (FF 7).
Thus, the evidence suggests that the dextrin and fat amounts in frozen
desserts are routinely optimizable variables. "[W]here the general conditions
of a claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation." In re Aller, 220
F.2d 454, 456 (CCPA 1955). Appellants do not identify any secondary
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Application 11/783,350
considerations or unexpected results regarding the amount of dextrin used in
the food product.
Conclusion of Law
The evidence of record supports the Examiner's conclusion that
Wakabayashi, Wolkstein, and Carey render claim 7 obvious.
SUMMARY
In summary, we affirm the rejection of claim 7 and under 35 U.S.C.
§ 103(a) as obvious over Wakabayashi, Wolkstein, and Carey. Claims 13-
17 fall with claim 7. 37 C.F.R. § 41.37(c)(l)(iv).
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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