Ex Parte Mitchell et al

Patent Trial and Appeal Board

Apr 26, 2016

13498157 (P.T.A.B. Apr. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/498, 157 03/26/2012 John Turner Mitchell
201 7590 04/28/2016
UNILEVER PATENT GROUP
800 SYLVAN A VENUE
AG West S. Wing
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
G3020USw 9250
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/28/2016 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):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN TURNER MITCHELL and LOYD WIX
Appeal2014-008252
Application 13/498,157
Technology Center 1700
Before JEFFREY T. SMITH, KAREN M. HASTINGS, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-7 and 9-11. We have jurisdiction under 35 U.S.C. § 6.
We AFFIRM.
Appellants' invention is directed to a food product comprising
hydrophobin. App. Br. 4. Claim 1 is illustrative of the subject matter on
appeal and is reproduced below:
Appeal2014-008252
Application 13/498,157
1. A food product comprising hydrophobin wherein the
minimum mass ratio of hydrophobin to the product is 0.000584,
and at least 0-5 wt% of bicarbonate, wherein the water activity
of the product is at most 0.5 and wherein the food product is
aerated through the use of the bicarbonate producing a foam
whose % overrun loss is 45% or less than the case where
hydrophobin is substituted for Hygel in the ratio range of 0.067
to 0.135 hydrophobin Hygel for the same food composition and
method of preparation and wherein the initial overrun is
measured at 70 °C at the point of maximum foam production
and the final overrun is measured after 15 to 20 minutes while
the temperature is held at 70 °C.
Appellants (App. Br. 5) request review of the following rejections
from the Examiner's Final Action:
I. Claims 1-7 and 9-11 rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
II. Claims 1-7 and 9-11 rejected under 35 U.S.C. § 103(a) as
unpatentable over Agbo (US 5, 780,092, issued July 14, 1998) in view of
Berry (WO 2006/010425 Al, published February 2, 2006).
OPINION1
Rejection under 35 U.S. C. § 112, first paragraph (written description)
We REVERSE the Examiner's rejection of claims 1-7 and 9-11
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement for the reasons presented by Appellants. We add
the following for emphasis.
1 Appellants present arguments only for independent claim 1 in addressing
both rejections before the Board. Accordingly, we limit our discussion to
this claim throughout the opinion. Claims 2-7 and 9-11 stand or fall with
independent claim 1.
2
Appeal2014-008252
Application 13/498,157
We refer to the Examiner's Final Action for a complete statement of
the rejection. Final Act. 2-3.
The Examiner found the hydrophobin to Hygel ratio range of 0.067 to
0.135 not supported by the original disclosure. Final Act. 2. According to
the Examiner, Appellants' reliance on Example 6 of the Specification to
establish support for this claimed feature is insufficient to provide
descriptive support because the data is limited to four products and would
not be applicable to any food product. Final Act. 2; Ans. 6-7.
Appellants argue that Example 6 provides comparative data from
which one skilled in the art would understand how to arrive to the claimed
hydrophobin to Hygel ratio. App. Br. 7-9. In support of this assertion,
Appellants point to a Table on page 10 of the Appeal Brief demonstrating
how the claimed ratio can be calculated from the data presented in Example
6.
We agree with Appellants. Appellants have established a newly
discovered property based on the hydrophobin compared to a well-known
stabilizer (Hygel), as represented by the claimed hydrophobin to Hygel ratio.
Appellants have provided evidence that this claimed hydrophobin to Hygel
ratio is implicitly supported by Example 6 of the Specification, as
demonstrated by the Table on page 10 of the Appeal Brief. In addition,
Appellants have established that Example 6 of the Specification provides
adequate written support for the other limitations objected by the Examiner
Final Act. 2), namely the mass ratio of hydrophobin to total mass of the
product (App. Br. 6-9; Spec. i-fi-1 46-55), the method by which the initial and
final overruns are measured (App. Br. 6; Spec. i1 45) and the overrun loss of
45% or less for the food product containing hydrophobin (App. Br. 10).
3
Appeal2014-008252
Application 13/498,157
Given this evidence, the Examiner has not adequately explained why the
Specification does not convey with reasonable clarity to those skilled in the
art that, as of the filing date sought, Appellants were in possession of the
invention as now claimed.
Accordingly we reverse the Examiner's rejection of claims 1-7 and 9-
11 under 35 U.S.C. § 112, first.
Prior Art Re} ection
After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner's prior art rejections of claims 1-7
and 9-11 under 35 U.S.C. § 103(a) for the reasons presented by the
Examiner and add the following for emphasis.
The Examiner found Agbo discloses a food product comprising from
0.01-1 sodium or potassium bicarbonate and 0.1-5% of a foam stabilizer to
reduce foam loss as a function of time. Final Act. 4; Agbo col. 2-3, col. 4,
lines 16-25. The Examiner found Agbo does not disclose the use of
hydrophobin and the mass ratio of hydrophobin to product. Final Act. 4.
The Examiner found Berry discloses aerated food products comprising at
least 0.001 % hydrophobin that provide both excellent foam volume stability
and inhibition of coarsening to improve shape retention and/or rigidity in an
aerated food product. Final Act. 4; Berry 1-3, 8, 19. The Examiner found it
would have been obvious to one skilled in the art to vary the amount of
hydrophobin with respect to the product it is used in depending on the
degree of stabilization desired. Final Act. 5. The Examiner also found it
would have been obvious to one skilled in the art to substitute the foam
stabilizer in Agbo with Berry's hydrophobin for the benefits disclosed by
4
Appeal2014-008252
Application 13/498,157
Berry. Id. With respect to the% overrun loss resulting from the use of
hydrophobin as compared to the use of Hygel, the Examiner found the use of
hydrophobin in Agbo would inherently result in the claimed % overrun loss
because Berry uses the same amount of hydrophobin as disclosed by
Appellants. Id. at 5---6.
Appellants argue the prior art does not disclose the claimed overrun
loss resulting from the claimed hydrophobin:hygel substitution ratio range.
App. Br. 9, 11. According to Appellants, one skilled in the art would not
have expected the combination of the prior art to result in the claimed
overrun enhancement factor ratio range. App. Br. 11.
We are unpersuaded by these arguments for the reasons presented by
the Examiner. Ans. 7-9. Moreover, as discussed above, Appellants have
established a newly discovered property defined by the ratio of hydrophobin
to a well-known stabilizer (Hygel). The mere recitation of a newly
discovered property, inherently possessed by a prior art composition, does
not necessarily cause a claim drawn to that composition to distinguish over
the prior art. In re Best, 562 F.2d 1252, 1254 (CCPA 1977). The Examiner
must provide enough evidence or scientific reasoning to establish that the
belief that the property is inherent is a reasonable belief. Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex parte Skinner, 2
USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). In the present case, the
Examiner found Berry discloses hydrophobin to improve properties in an
aerated food product. Final Act. 4; Berry 1-3, 8, 19. The Examiner also
found the use of hydrophobin in Agbo would inherently result in the claimed
% overrun loss because Berry uses the same amount of hydrophobin as
disclosed by Appellants. Final Act. 5---6. Thus, the Examiner provided a
5
Appeal2014-008252
Application 13/498,157
reasonable basis for one skilled in the art to use hydrophobin in the food
product of Agbo. Being their own lexicographer, it is incumbent on
Appellants to establish that the prior art does not have the newly discovered
property. Appellants have not directed us to any evidence to establish a
patentable distinction between the claimed invention and the prior art based
on this new property.
Accordingly, we affirm the Examiner's prior art rejection of claims
1- 7 and 9-11 for the reasons presented by the Examiner and given above.
ORDER
The Examiner's rejection of claims 1-7 and 9-11 under 35 U.S.C.
§ 112, first paragraph (written description) is reversed.
The Examiner's prior art rejection of claims 1-7 and 9-11 is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
6