Ex Parte Koenig et al

Patent Trials and Appeals Board

Mar 22, 2019

14363799 - (D) (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. § 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.
§ 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 190°F to about 250°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
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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
IdoPro® 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. §
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. § 4I.37(c)(1)(iv)(2013).
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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.
§ 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 122°F to 212°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
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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 200°F.").
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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
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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. § 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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
9