Ex Parte Ohara et al

Patent Trial and Appeal Board

Dec 22, 2017

11919070 (P.T.A.B. Dec. 22, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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Alexandria, Virginia 22313-1450
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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
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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
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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
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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
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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
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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.
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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.
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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.
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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.
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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
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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.
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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