Ex Parte Makadia et al

Patent Trial and Appeal BoardFeb 24, 2016

13295501 (P.T.A.B. Feb. 24, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/295,501 11/14/2011 45738 7590 02/26/2016 SENNIGER POWERS LLP (MTC) 100 NORTH BROADWAY 17THFLOOR ST LOUIS, MO 63102 FIRST NAMED INVENTOR Vallabh Makadia 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. MTC 6921.4011 1059 EXAMINER TARAZANO, DONALD LAWRENCE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 02/26/2016 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): uspatents@senniger.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VALLABH MAKADIA, WAN P. ARHANCET, and JERALD D. HEISE 1 Appeal2014-009278 Application 13/295,501 Technology Center 1700 Before CHUNG K. PAK, JEFFREY T. SMITH, and WESLEY B. DERRICK, Administrative Patent Judges. DERRICK, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's maintained final rejection of claims 1-3, 5, and 8-28.2 We have jurisdiction pursuant to 35 U.S.C. Â§ 6(b ). We AFFIRM-IN-PART and enter a NEW GROUND OF REJECTION pursuant to 37 C.F.R. Â§ 41.50(b). 1 According to Appellants, the Real Party in Interest is Monsanto Technology LLC. App. Br. 2. 2 Although the Examiner's Answer indicates that claim 4 stands rejected under 35 U.S.C. Â§ 103(a), claim 4 was cancelled in a Response to a Final Office Action filed January 3, 2014. Appeal2014-009278 Application 13/295,501 CLAIMED SUBJECT MATTER Appellants' claimed invention is generally directed to a method of making a food composition that comprises frying a food in a refined, bleached, deodorized soy oil composition having an anisidine value of less than 2, and comprising linoleic acid or a derivative thereof, and less than about 3 % by weight of a-linolenic acid or a derivative thereof, based upon the total weight of fatty acids or derivatives thereof in the composition. Spec. Claim 1. Claim 1 is illustrative: 1. A method of making a food composition, said method comprising frying a food product or food analog in a refined, bleached, deodorized soy oil composition comprising linoleic acid or a derivative thereof, and either: (a) less than about 2.6 wt.% a-linolenic acid or a derivative thereof, based upon the total weight of fatty acids or derivatives thereof in the composition, the composition having an anisidine value of less than 2, the composition being unhydrogenated; (b) less than about 3 wt.% a-linolenic acid or a derivative thereof, based upon the total weight of fatty acids or derivatives thereof in the composition, the composition having an anisidine value of less than 0.4; or ( c) less than about 3 wt.% a-linolenic acid or a derivative thereof, based upon the total weight of fatty acids or derivatives thereof in the composition, the composition having an anisidine value of less than 2. 2 Appeal2014-009278 Application 13/295,501 REJECTIONS The Examiner maintains the following grounds of rejection: Claims 1-3, 5, 8-11, and 13-283 stand rejected under 35 U.S.C. Â§ 103(a) as obvious over Warner, K., et al., Frying Quality and Stability of Low- and Ultra-Low Linolenic Acid Soybean Oils, 80(3) J. AM. OIL CHEM. Soc. 275-280 (2003) ("Warner") in view of Neff, W.E., et al., Oxidative Stability of Natural and Randomized High-Palmitic- and High-Stearic-Acid Oils from Genetically Modified Soybean Varieties, 76(7) J. AM. OIL CHEM. Soc. 825-831 (1999) ("Neff'); Chu, Y., et al., Factors Affecting the Content of Tocopherol in Soybean Oil, 70(12) J. AM. OIL CHEM. Soc. 1263-1268 (1993) ("Chu"); and List, G.R., et al., Oxidation and Quality of Soybean Oil: A Preliminary Study of the Anisidine Test, 51 J. AM. OIL CHEM. Soc. 17-21 ( 197 4) ("List"). Claim 12 stands rejected under 35 U.S.C. Â§ 103(a) as obvious over Warner in view ofNeff~ Chu, List, and Knowlton (US 5,981,781, issued November 9, 1999) ("Knowlton"). Claims 10 and 11 stand rejected under 35 U.S.C. Â§ 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention. DISCUSSION Having reviewed the Examiner's decision in light of arguments advanced by Appellants in the Appeal and Reply Briefs, 4 we are persuaded 3 See Footnote 2. 4 Rather than reiterate all arguments of Appellants and the Examiner, we refer to the Final Office Action (mailed October 3, 2013), the Appeal Brief 3 Appeal2014-009278 Application 13/295,501 that the Examiner has failed to establish a prima facie case of unpatentability for obviousness and will, therefore, not sustain the appealed rejections under 35 U.S.C. Â§ 103(a). In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) ("[T]he examiner bears the initial burden ... of presenting a prima facie case ofunpatentability."). However, we summarily affirm the Examiner's rejection of claims 10 and 11 under 35 U.S.C. Â§ 112, second paragraph as being indefinite because Appellants do not contest this rejection. Generally App. Br. and Reply Br. In addition, we enter a new ground of rejection under 35 U.S.C. Â§ 112, second paragraph of claims 14--17 and 23-27 as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention, pursuant to our authority under 37 C.F.R. Â§ 41.50(b), as discussed more fully below. Rejection of Claims 1-3, 5, and 8-28 as Obvious \Ve need only address the rejection of claim 1, the sole independent claim, which requires frying a food product in a soybean oil composition having an anisidine value of less than 2, and comprising less than about 3 weight% a-linolenic acid or a derivative thereof. The critical issue is whether the Examiner has set forth a sufficient basis of the recited anisidine value Here, the Examiner determines Warner discloses frying potato chips in fresh soybean oils having a peroxide value of zero, which oils have weight percentages of linolenic acid that fall within the range recited in claim 1. Final Act. 3, 5. The Examiner acknowledges that Warner fails to (filed April 7, 2014), the Examiner's Answer (mailed May 21, 2014), and the Reply Brief (filed July 21, 2014 ). 4 Appeal2014-009278 Application 13/295,501 disclose the anisidine value of the soybean oils. Final Act. 3. The Examiner finds that List discloses that the anisidine value is a measure of the oxidative state of oils. Final Act. 3. The Examiner determines that it would have been obvious to one of ordinary skill in the art at the time of the invention that the fresh soybean oils disclosed in Warner as having a peroxide value of zero would have an anisidine value of less than 2. Final Act. 3, 5---6. The Examiner does not, however, identify any disclosure in the cited prior art, or provide any other evidence, that establishes that the soybean oils disclosed in Warner comprising either 2 % linolenic acid or 0.8 % linolenic acid would have an anisidine value of less than 2. Although the Examiner asserts that the soybean oils disclosed in Warner would be expected to have an anisidine value of less than 2 because they are freshly prepared, the Examiner fails to provide any evidence in support of this assertion. Final Act. 3. Further, the Examiner fails to provide any evidence to support the assertion that soybean oils having a peroxide value of zero would have an anisidine value of less than 2, as Appellants correctly argue. App. Br. 5---6. Accordingly, the Examiner's assertion that "[e]ven though anisidine values and peroxide values measure different things over time [], when the oils are freshly prepared, the peroxide values and anisidine values would both be expected to be low" (Ans. 3) is treated as mere speculation in the absence of any supporting evidence, and such speculation or conjecture is not a sufficient basis for a prima facie case of obviousness. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967); In re Sporck, 301F.2d686, 690 (CCPA 1962). Therefore, we do not sustain either ground of rejection under 35 U.S.C. Â§ 103(a) of claims 1-3, 5, and 8-28. 5 Appeal2014-009278 Application 13/295,501 Rejection of Claims 10 and 11 as Being Indefinite We affirm the Examiner's rejection of claims 10 and 11 under 35 U.S.C. Â§ 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention without comment because Appellants do not contest this rejection. App. Br. 3-9; 37 C.F.R. Â§ 41.37(c)(l)(iv) (requiring that "arguments shall explain why the examiner erred as to each ground of rejection ... [and that] any arguments or authorities not included in the appeal brief will be refused consideration by the Board"); see also Manual of Patent Examining Procedure (MPEP) Â§ 1205.02 (9th ed. Mar. 2014) ("If a ground of rejection stated by the examiner is not addressed in the appellant's brief, appellant has waived any challenge to that ground of rejection and the Board may summarily sustain it, unless the examiner subsequently withdrew the rejection in the examiner's answer."). New Ground of Rejection of Claims 14--17 and 23-27 as Being Indefinite We enter a new ground of rejection against claims 14--17 and 23-27 under 35 U.S.C. Â§ 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention. 5 Claim 14 recites that the oil composition utilized in the method of claim 1 has a "significantly better flavor quality as compared to that of a reference oil," and recites that the "flavor quality is determined by a 5 In the event of further prosecution of this application, the Examiner and Appellants may wish to consider whether claim 5 further limits claim 1. 6 Appeal2014-009278 Application 13/295,501 standardized sensory evaluation." Claim 16 recites that the food product or food analog prepared by the method of claim 1 has a "significantly better flavor quality as compared to that of the same food product or food analog fried in a reference oil," and recites that the "flavor quality is determined by a standardized sensory evaluation." Claims 15 and 176 recite that the oil composition utilized in the method of claim 1 has a "significantly decreased overall room-odor intensity as compared to that of a reference oil" and recites that "a significant difference in overall room-odor intensity [is] indicated by a difference of greater than 1.0 obtained in a standardized sensory evaluation." Claims 23 and 25 recite that the food product or food analog prepared by the method of claim 1 has a "significantly better oil odor intensity" or a "significantly better oil flavor intensity," respectively, "as compared to that of the same food product or food analog fried in a reference oil," and recite that "oil odor intensity" and "oil flavor intensity" are "determined by a standardized sensory evaluation on a 60 point linear scale and a significantly better [] intensity is indicated by a difference of at least 10 points." Claim 24 recites that the food product or food analog prepared by the method of claim 1 has a "significantly better off flavor intensity ... as compared to that of the same food product or food analog fried in a reference oil" and recite that "off flavor intensity" is "determined by a standardized sensory evaluation on a 60 point linear scale and a significantly better off flavor intensity is indicated by a difference of at least 10 points." Claims 26 and 27 recite that the food product or food analog 6 In the event of further prosecution of this application, the Examiner and Appellants may wish to consider whether claims 15 and 17 differ. 7 Appeal2014-009278 Application 13/295,501 prepared by the method of claim 1, and the oil composition used in the method of claim 1, respectively, have a "significantly better overall acceptability" as compared to the same food product or food analog fried in a reference oil, or as compared to that of a reference oil, respectively, and recite that "overall acceptability" is "determined by a standardized sensory evaluation on a 60 point linear scale and a significantly better overall acceptability is indicated by a difference of at least 10 points." When claims recite a relative or subjective expression, such as, for example, recitation of a "significantly better flavor" in claim 14, to define an unknown degree of improvement, such claims are deemed indefinite unless the Specification provides some standard or definition for determining the degree of improvement, or unless the evidence of record shows that one of ordinary skill in the art would have understood the meaning or scope of the relative expression. Seattle Box Co. v. Indust. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984). Although claims 14--17 and 23-27 recite that the flavor quality, overall room-odor intensity, oil odor intensity, off flavor intensity, oil flavor intensity, and overall acceptability are determined by a "standardized sensory evaluation," on this record, we do not find that the Specification adequately defines or delineates the recited "standardized sensory evaluation" that should be utilized in determine the various characteristics set forth in these claims. In re Moore, 439 F.2d 1232, 1235(CCPA1971) (The definiteness of the language employed must be analyzed, not in a vacuum, but always in light of the teachings of the prior art and of the particular application disclosure as it would be interpreted by one possessing the ordinary level of skill in the pertinent art.). 8 Appeal2014-009278 Application 13/295,501 Looking to the Specification, we find paragraph 38 indicates the following: Generally, the standardized sensory evaluation assesses the smell, taste, tactile attributes and flavor of the oil and also, the characteristics of a food product containing the oil by deep- frying the food in the oil or otherwise incorporating the oil in the food. For example, many characteristics of the oil and foods prepared using the oils or having the oil as an ingredient can be evaluated. In addition, the trained panelists can select from a variety of numeric scales to rate the acceptability of the oils tested in the sensory evaluation. A person skilled in the art would be able to design an appropriate sensory evaluation. We find no other relevant disclosure describing the "standard sensory evaluation" within the Specification. The Specification does not, therefore, provide any meaningful standard by which improvements in oil and food product qualities can be measured to determine whether the recited claim limitations are met. Accordingly, one of ordinary skill in the art would be unable to determine whether an improvement in the flavor quality, overall room-odor intensity, oil odor intensity, off flavor intensity, oil flavor intensity, and overall acceptability is encompassed by these claims. We find, therefore, that the claims are indefinite. See, e.g., Amgen, Inc. v Chugai Pharm. Co., Ltd., 927 F.2d 1200, 1217 (Fed. Cir. 1991) (A claim is considered indefinite under 35 U.S.C. Â§ 112, second paragraph, if it does not reasonably apprise those skilled in the art of its scope.) We therefore enter a new ground of rejection against claims 14--17 and 23-27 under 35 U.S.C. Â§ 112, second paragraph as being indefinite for failing to particularly point out and distinctly claim the subject matter that Applicants regard as the invention. 9 Appeal2014-009278 Application 13/295,501 CONCLUSION In view of the reasons set forth above, we reverse the Examiner's Â§ 103(a) rejections of claims 1-3, 5, and 8-28, affirm the Examiner'sÂ§ 112, second paragraph rejection of claims 10 and 11, and enter a new ground of rejection against claims 14--17 and 23-27 under 35 U.S.C. Â§ 112, second paragraph as being indefinite. This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b), which provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." Section 41. 50(b) also provides that Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. ... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... Should Appellants elect to prosecute further before the Examiner pursuant to 37 C.F.R. Â§ 41.50(b)(l), to preserve the right to seek review under 35 U.S.C. Â§Â§ 141 or 145 with respect to the affirmed rejection(s), the effective date of the affirmance is deferred until conclusion of the 10 Appeal2014-009278 Application 13/295,501 prosecution before the Examiner unless, as a mere incident to the limited prosecution, the affirmed rejection is overcome. If Appellants elect prosecution before the Examiner and this does not result in allowance of the application, abandonment, or a second appeal, this case should be returned to the Patent Trial and Appeal Board for final action on the affirmed rejection, including any timely request for rehearing thereof. 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). AFFIRMED-IN-PART; NEW GROUND OF REJECTION PURSUANT TO 37 C.F.R. Â§ 41.50(b) 11