Ex Parte Ohara et alDownload PDFPatent Trial and Appeal BoardDec 22, 201711919070 (P.T.A.B. Dec. 22, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/919,070 10/23/2007 Yoshio Ohara VX072817 PCT 9492 23400 7590 12/27/2017 POSZ LAW GROUP, PLC 12040 SOUTH LAKES DRIVE SUITE 101 RESTON, VA 20191 EXAMINER WILLIAMS, LELA ART UNIT PAPER NUMBER 1792 NOTIFICATION DATE DELIVERY MODE 12/27/2017 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): mailbox@poszlaw.com dposz@poszlaw.com tvarndell @ poszlaw. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOSHIO OHARA, AKIO TANAKA, and TETSUYA MAGARIKAJI Appeal 2016-003368 Application 11/919,070 Technology Center 1700 Before ADRIENE LEPIANE HANLON, N. WHITNEY WILSON, and SHELDON M. McGEE, Administrative Patent Judges. HANLON, Administrative Patent Judge. DECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. § 134 from an Examiner’s decision rejecting claims 7—9, 19-24, and 26—28. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. The claimed subject matter is directed to soluble mixed granules and method for producing the soluble mixed granules. The soluble mixed granules comprise, inter alia, a mixture of first granules having poor sedimentation property in water and second granules having good Appeal 2016-003368 Application 11/919,070 sedimentation property in water. The Appellants disclose that a binder solution can be used for granulation of a powdery raw material to form the first and second granules. Examples of a granulation method are said to include fluidized bed granulation and tumbling granulation. Spec. 4. Representative claim 7 is reproduced below from the Claims Appendix of the Appeal Brief dated July 28, 2015 (“App. Br.”). The limitations at issue are italicized. 7. Soluble mixed granules, comprising a mixture of: (i) first granules having poor sedimentation property in water, the first granules being prepared prior to mixing with second granules having good sedimentation property in water, the first granules including powder particles bound to one another by granulation thereof, the powder particles of the first granules originating from powdery raw material having poor sedimentation property in water, (ii) the second granules having good sedimentation property in water being prepared prior to mixing with the first granules having poor sedimentation property in water, the second granules including powder particles bound to one another by granulation thereof, the powder particles of the second granules originating from powdery raw material having good sedimentation property in water, and (iii) the first and second granules being mixed together while adding an emulsifier thereto to thereby obtain the soluble mixed granules having surfaces coated with the emulsifier, wherein the granules having poor sedimentation property in water contain at least one main ingredient that is selected from the group consisting of cocoa, whey, casein, soybean, and collagen, and wherein the granules having good sedimentation property in water contain at least one main ingredient that is selected from the group consisting of carbohydrates and organic acids. 2 Appeal 2016-003368 Application 11/919,070 App. Br. 37. The claims on appeal stand rejected as follows: (1) claims 7—9 under 35 U.S.C. § 103(a) as unpatentable over Pettibone1 in view of Moraly et al.2 and Nijhuis et al.;3 (2) claim 19 under 35 U.S.C. § 103(a) as unpatentable over Pettibone in view of Moraly and Nijhuis, and further in view of Kimura et al.;4 and (3) claims 20-24 and 26—28 under 35 U.S.C. § 103(a) as unpatentable over Kimura in view of Moraly and Nijhuis. B. DISCUSSION 1. Rejection (1) The Examiner finds Pettibone discloses soluble mixed granules comprising a mixture of soybean granules and sugar granules.5 Non-Final Act. 3^4. The Examiner finds the soybean granules (corresponding to the claimed first granules) include powder particles bound to one another by granulation thereof. Non-Final Act. 3. More specifically, the Examiner finds, “[gjiven that Pettibone discloses milling or grinding to obtain a desired size and Pettibone states water was present during the milling or grinding and produced a mix, the soybean granules would have also been 1 US 2,590,647, issued March 25, 1952 (“Pettibone”). 2 US 2003/0005923 Al, published January 9, 2003 (“Moraly”). 3 US 7,201,934 B2, issued April 10, 2007 (“Nijhuis”). 4 US 6,007,857, issued December 28, 1999 (“Kimura”). 5 The Examiner finds Pettibone does not expressly recite that the sugar granules comprise powder particles bound to one another and relies on Moraly to show dextrose granules corresponding to the second granules recited in claim 7. Non-Final Action dated March 3, 2015 (“Non-Final Act.”), at 4. 3 Appeal 2016-003368 Application 11/919,070 expected to include powder particles bound to one another by granulations.'1'’ Non-Final Act. 4 (emphasis added). The Appellants argue that “[a] person of ordinary skill in the art would not have any reasonable expectation that the milling and grinding of a powder [from larger sizes to smaller sizes] would produce powder particles bound to one another by granulation.” App. Br. 11 (original emphasis omitted). More specifically, the Appellants argue: Pettibone is concerned with changing the inherently disagreeable or bitter flavor of the soybeans. Pettibone achieves this change in taste by reducing the size of the soybean . . . powders by grinding or milling a mixture of the soybeans and hydrolyzed vegetable protein into the form of a flour . . . and where the hydrolyzed vegetable protein is adhered to the surfaces of the soybean powders after milling or grinding. A person of ordinary skill in the art would have realized that the soybean preparation proposed by Pettibone was a dispersion of finely milled powders of soybeans dispersed within the hydrolysates of vegetable proteins where the hydrolyzed vegetable protein is adhered to the surfaces of the soybean powders after milling or grinding .... App. Br. 11 (emphasis omitted). In response, the Examiner finds: Pettibone teaches there is a percentage of moisture during the milling and grinding (aqueous solution of hydrolyzed vegetable protein) (col. 2, lines 1-15) and as Appellants] state[], Pettibone discloses “hydrolyzed vegetable protein adhered to the surfaces of the soybean powders”. Given the disclosure of moisture and “adhered to the surfaces of the soybean powders”, it would have been obvious to one of ordinary skill in the art that the milling and grinding would produce powder particles bound to one another since moist particles would adhere to one another. 4 Appeal 2016-003368 Application 11/919,070 Ans. 56 (emphasis added); see also Ans. 5 (finding Pettibone states that water was present during milling and grinding, therefore Pettibone’s soybean particles would have been expected to include ‘“powder particles bound to one another by granulations’” as recited in claim 7). In the Reply Brief, the Appellants do not direct us to any error in the Examiner’s finding that Pettibone’s moist soybean particles would adhere to one another. Rather, the Appellants argue that the claimed “first granules” are “an aggregation of smaller powder particles having poor sedimentation property in water that are coalesced and/or bound to one another by bonds created during a granulation process used to form the first granules.”7 Reply Br. 28 (original emphasis omitted); see also Reply Br. 4. Contrary to the Appellants’ argument, claim 7 does not recite that the powder particles are bound to one another by bonds. See App. Br. 37. Moreover, the Appellants do not direct us to any evidence showing that the broadest reasonable interpretation of the term “bound” requires the powder particles to be joined together by bonds. See Definition of “bound,” Merriam-Webster, https://www.merriam-webster.com/dictionary/bound (last visited Nov. 21, 2017) (defining “bound” as the past tense and past participle of bind); Definition of “bind,” Merriam-Webster, https://www.merriam- 6 Examiner’s Answer dated December 17, 2015. 7 The Appellants argue that “the Examiner has accepted Appellants’ claim interpretation or meaning for the terms ‘first granules’ and ‘second granules’ in the claims on appeal.” App. Br. 4 (emphasis omitted). Claim construction, however, is a question of law and is an issue for a judge, including this Board. See Markman v. Westview Instruments, Inc., 517 U.S. 370, 391 (1996). 8 Reply Brief dated February 16, 2016. 5 Appeal 2016-003368 Application 11/919,070 webster.com/dictionary/bind (last visited Nov. 21, 2017) (defining “bind” as “to cause to stick together”). Thus, the Examiner’s silence as to whether Pettibone’s soybean particles are joined to one another by bonds does not demonstrate reversible error in the § 103(a) rejection of claim 7. Claim 7 also recites, “(iii) the first and second granules being mixed together while adding an emulsifier thereto to thereby obtain the soluble mixed granules having surfaces coated with the emulsifier.”9 App. Br. 37. The Examiner finds, and the Appellants do not dispute, that Nijhuis teaches that lecithin was a known dispersing agent at the time of the Appellants’ invention and was used “‘to reduce surface tension between the powder and the water-based liquid.’” Non-Final Act. 6 (citing Nijhuis, col. 1,11. 28—34). The Examiner concludes that it would have been obvious to one of ordinary skill in the art use a dispersing agent and/or emulsifier as disclosed in Nijhuis to improve the wettability and dispersibility of Pettibone’s soybean granules.10 Non-Final Act. 6. The Appellants argue that the Examiner has “fail[ed] to establish any reason or motivation for one of ordinary skill in the art to add an emulsifier to the alleged mixture of first and second aggregated granules.” App. Br. 23 (emphasis added). In response, the Examiner finds that one of ordinary skill in the art would have been motivated to coat the first and second granules in 9 The Examiner correctly concludes that claim limitation (iii) is a product- by-process limitation. Non-Final Act. 5—6. As explained in In re Thorpe, 111 F.2d 695, 697 (Fed. Cir. 1985), “[t]he patentability of a product does not depend on its method of production.” 10 Pettibone discloses that cocoa granules may be mixed with the soybean granules. See Pettibone, col. 6,11. 45—55. 6 Appeal 2016-003368 Application 11/919,070 Pettibone’s modified mixture with a dispersing agent or emulsifier as disclosed in Nijhuis because all of the granules “would be required to dissolve to make a beverage.” Ans. 12; see also Ans. 13 (referring to “aforementioned reasoning”). The Appellants do not direct us to any error in the Examiner’s finding. In an attempt to rebut the prima facie case of obviousness, the Appellants argue that a comparison of Examples 1—4 and Comparative Examples 1—511 shows that the claimed soluble mixed granules exhibit unexpected results (i.e., rapid sedimentation in water and dispersion or dissolution with slow agitation alone). App. Br. 27—28. As explained in In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973), In order for a showing of “unexpected results” to be probative evidence of non-obviousness, it falls upon the applicant to at least establish: (1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art... ; and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention. [Emphasis added.] To the extent that Examples 1—4 show an improvement compared to Comparative Examples 1—5, the Appellants do not direct us to any evidence demonstrating that the improvement would not have been expected by one of ordinary skill in the art at the time of the Appellants’ invention. See Ans. 13—14 (finding that Appellants have not provided any evidence demonstrating unexpected advantages over the applied prior art). 11 See Table on page 24 of the Appeal Brief. 7 Appeal 2016-003368 Application 11/919,070 On balance, the evidence of record weighs in favor of the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of claims 7—9 is sustained.12 2. Rejection (2) Claim 19 depends from claim 7 and recites that “the first granules having poor sedimentation property are prepared by granulating the powder particles of the powdery raw material thereof with an aqueous binder solution.'''’ App. Br. 38 (emphasis added). The Examiner relies on Kimura to show that it would have been obvious to one of ordinary skill in the art to apply a liquid binder to Pettibone’s particles to ensure proper granulation. Non-Final Act. 8. The Appellants argue that the aqueous binder disclosed in Kimura increases particle size by binding smaller particles together whereas Pettibone “requires the reduction in the size of the soybean.” App. Br. 16. Therefore, the Appellants argue that the modification proposed by the Examiner would destroy Pettibone’s soybean preparation, and as such, one of ordinary skill in the art would have been led away from the proposed modification. App. Br. 16—17. As discussed above, the Examiner finds that Pettibone’s moist, ground soybean particles are adhered to one another.13 Thus, contrary to the Appellants’ arguments, modifying Pettibone’s soybean particles with the binder disclosed in Kimura would not destroy Pettibone’s soybean 12 The Appellants do not present arguments in support of the separate patentability of claims 8 or 9. 13 As pointed out above, the Appellants do not direct us to any error in the Examiner’s finding. 8 Appeal 2016-003368 Application 11/919,070 preparation by increasing, rather than decreasing, the size of the soybean particles. See App. Br. 17. The § 103(a) rejection of claim 19 is sustained. 3. Rejection (3) The Examiner finds Kimura teaches preparing cocoa granules (corresponding to the first granules recited in claim 20) by granulating cocoa powder. Non-Final Act. 8. The Examiner finds Kimura discloses that cocoa powder must be sprayed with a liquid binder or emulsifier (e.g., pullulan, guar gum, and xanthan gum) when granulated ‘“because cocoa powder has no binding properties of itself.’” Non-Final Act. 8. The Examiner also finds Kimura discloses that combining cocoa powder and sugar was known in the art. The Examiner, however, finds Kimura does not disclose preparing sugar granules as claimed and relies on Moraly to show that the claimed sugar granules (i.e., the claimed second granules) were known in the art. Non-Final Act. 8—9. As for adding an emulsifier to a mixture of Kimura’s first granules (i.e., cocoa powder) and Moraly’s second granules (i.e., sugar), the Examiner finds Nijhuis evinces that it was known in the art to add an emulsifier when preparing powdery material. In particular, the Examiner finds “Nijhuis taught lecithin was a known dispersing agent used ‘to reduce surface tension between the powder and the water-based liquid’ and also disclosed applying the dispersing agent to a cocoa composition.” Non-Final Act. 10 (citations omitted); see also Ans. 11. Based on those findings, the Examiner concludes that “it would have been obvious to one of ordinary skill in the art to incorporate the use of a dispersing agent and/or emulsifier [as disclosed in Nijhuis] onto the mixture of Kimura and Moraly while 9 Appeal 2016-003368 Application 11/919,070 mixing to improve the wettability and dispersibility of the powders.” Non- Final Act. 10. The Appellants argue that “Nijuis [sic] does not disclose or suggest that two types of granules (i.e. first and second aggregated granules having significantly different dispersibility in water) are mixed together while adding an emulsifier thereto.” App. Br. 19 (emphasis added). The Examiner appears to recognize as much. Nonetheless, the Examiner finds that one of ordinary skill in the art would have been motivated to coat the mixture of Kimura’s first granules and Moraly’s second granules with a dispersing agent or emulsifier as disclosed in Nijhuis because all of the granules “would be required to dissolve to make a beverage.” Ans. 12. The Appellants do not direct us to any error in the Examiner’s finding. In an attempt to rebut the prima facie case of obviousness, the Appellants argue that a comparison of Examples 1—4 and Comparative Examples 1—514 shows that the claimed soluble mixed granules exhibit unexpected results (i.e., rapid sedimentation in water and dispersion or dissolution with slow agitation alone). App. Br. 27—28. As discussed above, to the extent that Examples 1—4 show an improvement compared to Comparative Examples 1—5, the Appellants do not direct us to any evidence demonstrating that the improvement would not have been expected by one of ordinary skill in the art at the time of the Appellants’ invention. Freeman, 474 F.2d at 1324. 14 See Table on page 24 of the Appeal Brief. 10 Appeal 2016-003368 Application 11/919,070 On balance, the evidence of record weighs in favor of the Examiner’s conclusion of obviousness. Therefore, the § 103(a) rejection of claims 20— 24 and 26—28 is sustained.15 C. 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)(1). AFFIRMED 15 The Appellants do not present arguments in support of the separate patentability of any of claims 21—24 and 26—28. 11 Copy with citationCopy as parenthetical citation