Ex Parte Koenig et al

Patent Trial and Appeal BoardMar 22, 2019

14363799 (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/363,799 06/08/2014 74475 7590 Nestec S.A. Attn: Patent Department 1812 North Moore Street Arlington, VA 22209 03/26/2019 FIRST NAMED INVENTOR Elizabeth Ann-Clubbs Koenig 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. 12032-US-PCT 6633 EXAMINER SMITH, PRESTON ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 03/26/2019 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 docketing@dunlapcodding.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ELIZABETH ANN-CLUBBS KOENIG and ERIC EDWARD GRAF Appeal2018-005431 Application 14/363,799 Technology Center 1700 Before JEFFREY R. SNAY, LILAN REN, and MICHAEL G. MCMANUS, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-005431 Application 14/363,799 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection2 of claims 1---6, 8-11, 13, 14, 16, 19, and 21-29. 3 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. CLAIMED SUBJECT MATTER The claims are directed to "dairy compositions comprising particulates and having good color and flavor after thermal processing." Spec. ,r 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method of inhibiting browning of a thermally processed, shelf-stable composition, comprising: thermally processing a dairy-based protein composition at a temperature from about 190Â°F to about 250Â°F for an amount of time from about 10 minutes to about 40 minutes, wherein the dairy-based protein composition comprises milk protein concentrate and less than 1.5% reducing sugars, and wherein the dairy-based protein composition is not milk; wherein the presence of reducing sugars in an amount less than an amount that is naturally present in milk inhibits browning of the thermally-processed, shelf-stable composition; and wherein the thermally processed, shelf-stable composition is shelf-stable under non-refrigerated conditions. Claims Appendix (Br. 39). 1 The real party in interest is identified as "Nestec S.A." Appeal Brief of November 10, 2017 ("Appeal Br."), 5. 2 Non-Final Office Action of June 15, 2017 ("Non-Final Act."). In this opinion, we also refer to the Examiner's Answer of March 9, 2018 ("Ans.") and the Reply Brief of May 2, 2018 ("Reply Br."). 3 The record shows at least Non-Final Actions of July 30, 2015 and June 27, 2016 as well as Final Actions of February 25, 2016 and February 15, 2017. 2 Appeal2018-005431 Application 14/363,799 REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Streiff et al. Gutknecht et al. Nguyen et al. Cash et al. us 4,956,186 US 2005/0233049 Al US 2006/0057247 Al US 2006/0240159 Al Sep. 11, 1990 Oct. 20, 2005 Mar. 16, 2006 Oct. 26, 2006 Milk protein NPL,"Frequently Asked Questions: Formulating with IdoProÂ® Milk Protein in Yogurt Applications Idaho Milk Products," http://idahomilkproducts.com/faq/formulating-idapro%C2 %AE-milk- protein-yogurt-applications#t32n 184 (last accessed July 26, 2015) Lactose NPL, "The Really BIG List of Lactose Percentages," http://web,archil 1 e,or glweb/20100I2f:-i015808futtp://www.stevecarper .corn/11/llst_ofJaclose_percentages.htm (last accessed January 8, 2017) REJECTIONS Claims 1, 2, 5, 6, 16, and 27 stand rejected under pre-AIA 35 U.S.C. Â§ I03(a) as being unpatentable over Cash, in view of milk protein NPL (or alternatively, in view of Nguyen) and Lactose NPL. Non-Final Act. 3. 4 4 The remaining claims are rejected for obviousness over Cash, in view of milk protein NPL (or alternatively, in view of Nguyen), Lactose NPL and additional respective references including Streiff and Gutknecht. Non-Final Act. 5-8. Because Appellants do not argue the remaining claims separately (discussion supra), they stand or fall with claim 1. Appeal Br. 22-38; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 3 Appeal2018-005431 Application 14/363,799 OPINION Claim 15 Appellants argue that the Examiner reversibly erred in rejecting claim 1 because Cash does not teach or suggest a method such that "the thermally processed, shelf-stable composition is shelf-stable under non-refrigerated conditions" as recited in claim 1. Appeal Br. 16. Without disputing that the recited steps are performed in the prior art, Appellants argue that the prior art products are stored in refrigerated conditions. Id.; see also Reply Br. 3---6 ( arguing the same). "It is a general rule that merely discovering and claiming a new benefit of an old process cannot render the process again patentable." In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 517 F.2d 947, 950 (CCPA 1975). In this case, given that the recited steps are undisputedly taught or suggested in the prior art, it is reasonable to conclude that the prior product obtained from these identical method steps necessarily must also be identical. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). Whether the prior art contemplates certain properties of the product (i.e., whether the prior product may be shelf-stable under non-refrigerated conditions) does not patentably distinguish the recited method steps. Discovery of a property inherent to a prior art process does not render that process patentable, even if 5 Because Appellants do not argue claims 2, 5, 6, 16, and 27 separately, they stand or fall with claim 1. Br. 16-21; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 4 Appeal2018-005431 Application 14/363,799 the prior art did not appreciate the property. Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633 (Fed. Cir. 1987). We are therefore unpersuaded that reversible error has been identified in this aspect of the obviousness analysis. While not disputing the Examiner's finding that "Lactose NPL teaches that anything below 2% lactose can be tolerated well by the majority of those with lactose intolerance," compare Appeal Br. 18, with Non-Final Act. 4, Appellants disagree that a skilled artisan would have discovered "the dairy-based protein composition comprises ... less than 1.5% reducing sugars" through routine experimentation. Appeal Br. 18; see Non-Final Act. 4. Appellants assert that the product "of the prior art is clearly and unambiguously quite different and distinct from the product produced by the claimed method" but do not specify what these differences are - for example, in terms of chemical composition, structure, and the like. To the extent that Appellants' argument suggests that claim 1 (reciting "a method") should nonetheless be understood as a product-by-process claim resulting in a product that is "shelf-stable under non-refrigerated conditions" as recited, "[t]he discovery of a new property or use of a previously known composition, even when that property and use are unobvious from the prior art, can not impart patentability to claims to the known composition." In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). We are therefore not persuaded that the Examiner reversibly erred here. Appellants' citations to case law regarding inherency do not persuade us otherwise. See Appeal Br. 18-20. Unlike the prior art teachings in the cited cases, the prior art applied in this case undisputedly describes the recited steps of claim 1. Compare Appeal Br. 17-18, with Non-Final Act. 3 5 Appeal2018-005431 Application 14/363,799 (finding that Cash teaches heat processing yogurt which is not milk at an overlapping temperature range of 122Â°F to 212Â°F for an overlapping duration of 2 seconds to 30 minutes which would allow the skilled artisan to arrive at the recited temperature and processing duration through routine experimentation). It is therefore reasonable to conclude that the substantially similar prior art process would produce a product substantially similar to that recited. In a case like the one at bar where the Examiner has reasonably established that all the limitations are met or would have been obvious, "the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. ... [The] fairness [ of the burden-shifting] is evidenced by the PTO' s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d at 1255. Appellants have not shown that the prior art product would be patentably distinguished and thus have not rebutted the Examiner's findings. We are not persuaded by Appellants' argument regarding the Examiner's findings based on milk protein NPL and Nguyen. The Examiner cites these references to meet the claim limitation "dairy-based protein composition comprises milk protein concentrate." Non-Final Act. 3 ("Referring to dairy with a milk protein concentrate, milk protein concentrate NPL shows that was known in the art to add milk protein concentrate to yogurts" and "Nguyen teaches that its known in to add milk protein concentrate to produce yogurt like products."). Appellants' argument that claim 1 "does not add milk protein concentrate to a milk or milk-based product" but "[r]ather, the claimed method utilizes milk protein concentrate instead of milk" is not commensurate in scope with the claim 6 Appeal2018-005431 Application 14/363,799 which only requires that the "dairy-based protein composition comprises milk protein concentrate." See Appeal Br. 1 7 ( emphases and capitalization removed). We are therefore unpersuaded that the Examiner reversibly erred here. We are also not persuaded that Nguyen's discussion about refrigerated storage teaches away from the recited method. Appeal Br. 17. 6 A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). In this case, Appellants have not explained why Nguyen's silence with regard to non-refrigerated storage teaches away from the recited method. We are accordingly unpersuaded that there is a sufficient showing of teaching away here. Claims 3, 4, 7-14, 19, 21-26, 28, and 29 Although appearing under separate headings, Appellants' argument for claims 3, 4, 7-14, 19, 21-26, 28, and 29 states no more than that the combined teaching of Cash, in view of milk protein NPL ( or alternatively, in view of Nguyen) and Lactose NPL does not teach or suggest the limitations 6 We note that Appellants' reference to "refrigerated" as opposed to "non-refrigerated" is not based on a particular temperature requirement. See Appeal Br. 17; see also Spec. ,r,r 81, 115 ( cited in Br. 8 as written description support for claim 1) ("These products are dependent on refrigeration, however, and have a very short shelf-life" and "[d]uring the course of six months after the retort no browning was observed at 200Â°F."). 7 Appeal2018-005431 Application 14/363,799 in claim 1. Appeal Br. 22 (arguing that the Examiner's finding regarding claim 3 "does nothing to supply the many and varied deficiencies in the primary combination of Cash et al., Milk Protein NPL ( or alternatively in view of Nguyen et al.), and Lactose NPL"); id. at 23 (agreeing with the Examiner's finding based on Streiff for claims 4, 7-12, 21, and 28 and arguing that Streiff's "teachings do not supply the many and varied deficiencies in the primary combination of Cash et al., Milk Protein NPL ( or alternatively in view of Nguyen et al.), and Lactose NPL"); id. at 26 ( agreeing with the Examiner's finding based on Gutknecht for claims 13 and 19 and arguing that Gutknecht's teaching "does not supply the many and varied deficiencies in the primary combination of Cash et al., Milk Protein NPL (or alternatively in view ofNguyen et al.) and Lactose NPL"); id. at 27 ( agreeing with the Examiner's finding based on Daravingas for claim 14 and arguing that Daravingas' s "teachings do not supply the many and varied deficiencies in the primary combination of Cash et al., Milk Protein NPL ( or alternatively in view of Nguyen et al.) and Lactose NPL"); id. at 29 (arguing that the teachings of Streiff and Gutknecht cited for the rejection of claim 22 do not cure the deficiencies based on Cash, milk protein NPL ( alternatively Nguy en) and Lactose NPL ); id. at 31 ( arguing that the teachings of Streiff and Daravingas cited for the rejection of claim 23 do not cure the deficiencies based on Cash, milk protein NPL (alternatively Nguyen) and Lactose NPL); id. at 33 (agreeing with the Examiner's finding based on Quinoa NPL for claims 24 and 29 and arguing that Quinoa's "teachings do not supply the many and varied deficiencies in the primary combination of Cash et al., Milk Protein NPL (or alternatively in view of Nguyen et al.) and Lactose NPL"); id. at 35 (arguing that the teachings of Gutknecht cited for 8 Appeal2018-005431 Application 14/363,799 the rejection of claim 25 do not cure the deficiencies based on Cash, milk protein NPL (alternatively Nguyen) and Lactose NPL); id. at 36 (arguing that the teachings of Gutknecht cited for the rejection of claim 26 do not cure the deficiencies based on Cash, milk protein NPL ( alternatively Nguyen) and Lactose NPL). Appellants' argument that the discussion of refrigerated storage in Streiff, Gutknecht, and Daravingas constitutes a teaching away is unpersuasive for the same reason provided with regard to Nguyen supra. See Appeal Br. 24, 26, 28, 30, 32, 35, 37. Statements in a brief that "merely mention [a] claim ... and lack any type of separate, substantive argument concerning the claim" are not sufficient to constitute separate argument regarding that claim under 37 C.F.R. Â§ 4I.37(c)(l)(vii). In re Kao, 639 F.3d 1057, 1065 (Fed. Cir. 2011). Here, given that the arguments for claims 3, 4, 7-14, 19, 21-26, 28, and 29 do not identify reversible error other than those addressed with regard to claim 1, we accordingly affirm the rejections of these claims. DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 9