Ex Parte Patel et al

Patent Trial and Appeal Board

Mar 29, 2017

11756844 (P.T.A.B. Mar. 29, 2017)

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.
11/756,844 06/01/2007 Gaurav C. Patel 8246USO! (35226/04668) 1570
106587 7590 03/31/2017
Ahhntt T ahnratnries; EXAMINER
Department 108140, Bldg. RP3-2
3300 Stelzer Road
YOO, HONG THI
Columbus, OH 43219-3034 ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/31/2017 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):
ipdocket @ c alfee .com
AN_Patent_Docketing @ abbott. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GAURAV C. PATEL, PAUL W. JOHNS,
SUSAN M. FAWCETT, ROBERT L. JOSEPH, LOUIS I. NDIFE,
ROSALYN R. PHILLIPS, and ERIC M. HIMMELREICH
Appeal 2016-000111
Application 11/756,844
Technology Center 1700
Before KAREN M. HASTINGS, N. WHITNEY WILSON, and
AVELYN M. ROSS, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
October 23, 2014 decision finally rejecting claims 1-9, 13, 14, and 40^16
(“Final Act.”). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as Abbott Laboratories
(Appeal Br. 3).
Appeal 2016-000111
Application 11/756,844
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a food product containing a milk
protein with a concentration of off-note contaminant markers (OCM) of 1100 pg
or less per kg of milk protein, and no more than very small amounts of p-cresol
and indole (Abstract, Spec. ^ 10). Details of the claimed invention are set forth
in independent claim 1, which is reproduced below from the Claims Appendix
of the Appeal Brief:
1. A food product comprising:
milk protein, the milk protein comprising from 50 to 95%
by weight of total protein in the food product; and one or more
other food ingredients,
wherein the food product contains 1100 pg or less of off-
note contaminants including cresols, indoles, phenol, ethylphenols,
methoxyphenols, skatole, isoflavones, mixtures thereof, conjugates
thereof, and mixtures of conjugates thereof per kg of the milk
protein, and
wherein the food product contains less than 1000 pg of p-
cresol per kg of the milk protein and less than 100 pg of indole
per kg of the milk protein.
2
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Application 11/756,844
REJECTIONS
I. Claims 1-9, 13, 14, and 40^16 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor regards as the invention.
II. Claims 1-92, 13, 14, and 40^16 are rejected under 35 U.S.C
§ 103(a) as being unpatentable over Coleman3 in view of Wibert4 and Etzel5, as
evidenced by Kirschmann6 and Saxby.7
DISCUSSION
Appellants state that all of the claims stand or fall together (Appeal
Br. 10). Accordingly, we will focus our discussion on the rejections of
claim 1.
Rejection I. According to the Examiner, claim 1 is indefinite because
the second paragraph limits the presence of a number of classes of
contaminants, including cresols and indoles, to no more than 1100 pg per kg
of milk protein, while the second paragraph limits the amount of p-cresol to
2 The Examiner did not include claims 3 and 5 in the rejection as formulated
in the Final Action (Final Act. 5). The Examiner stated that this omission
was unintentional and, in the Answer, indicated that these claims were also
covered by Rejection I (Ans. 2), labeling their addition as a new grounds of
rejection.
3 Coleman et al., US 2004/0126477 Al, published July 1, 2004.
4 Wibert et al., US 5,776,887, issued July 7, 1998. We note that the
Examiner frequently cites to “Wilbert” instead of “Wibert,” but operate
under the assumption that this is merely an error, as the patent number cited
in the rejection lists “Gregory Wibert” as the first named inventor.
5 Etzel et al., US 2006/0003073 Al, published January 5, 2006.
6 Nutrition Almanac, John D. Kirschmann, Director, McGraw Hill (1979).
7 Saxby (Food Taints and Off-Flavors, 1996).
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Application 11/756,844
less than 1000 pg per kg of milk protein and the amount of indole to less
than 100 pg per kg of milk protein. The Examiner determines that these
recitations violate the general principle that a broad range or limitation with
a narrow range or limitation that falls within the broad range or limitation in
the same claim is considered indefinite (Final Act. 3).
During prosecution:
the PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant's specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Claims are definite if
they:
set out and circumscribe a particular area with a reasonable
degree of precision and particularity. It is here where 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.
In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
In this instance, we determine that the claim language at issue is not
indefinite within the meaning of § 112, second paragraph. In particular, the
two limitations at issue are not a broad and narrow recitation of the same
limitation. That is, the second paragraph limits the total amount of “off-note
contaminants,” which includes cresols, indoles, phenol, ethylphenols,
methoxyphenols, skatole, isoflavones, mixtures thereof, conjugates thereof,
and mixtures of conjugates thereof, to 1100 pg or less per kg of milk protein.
In addition, the claim sets specific limits of 1000 pg and 100 pg per kg of
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Application 11/756,844
milk protein for two specific contaminants: p-cresol and indole. Thus, there
would be no confusion, for example, whether a food product that contains
1050 jig per kg of milk protein of p-cresol would fall within the literal scope
of the claim. Although such a food product would meet the literal
limitations of the second paragraph of claim 1 (assuming no other off-note
contaminants), it would not fall within the scope of the third paragraph of
claim 1. Similarly, a food product containing 100 pg of p-cresol and 75 jig
of indole per kg of milk protein would (assuming no other off-note
contaminants) meet the requirements of both the second and third
paragraphs of claim 1. In other words, the language of the claim does not
preclude a person of skill in the art from determining whether a particular
product falls inside or outside the scope of the claims. That is what is
demanded by § 112, second paragraph.
Accordingly, we determine that Appellants have shown reversible
error in the indefiniteness rejection of the claims, and we reverse this
rejection.8
Rejection II. The Examiner determines that the language of both
paragraphs 2 and 3 of claim 1 would cover products which do not include
any off-note contaminants/p-cresol/indole (Final Act. 5-6). That is, the
claims are understood to include food products where the amounts of those
materials is zero.
8 The Examiner does not base the § 112, second paragraph, rejection on the
use of the phrase “including cresols, indoles, phenol, ethylphenols,
methoxyphenols, skatole, isoflavones, mixtures thereof, conjugates thereof,
and mixtures of conjugates.” Accordingly, we do not address whether the
use of the word “including” raises indefiniteness issues. Should prosecution
continue, the Examiner and Appellants may wish to consider this issue.
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Application 11/756,844
The Examiner also states that “the phrase ‘including cresols, indoles,
phenol, ethylphenols, methoxyphenols, skatole, isoflavones, mixtures
thereof, conjugates thereof, and mixtures of conjugates thereof is
interpreted as an alternative language” (Final Act. 5). The Examiner does
not provide a more detailed explanation of what is meant by “alternative
language,” but Appellants suggest that it means that each individual off-note
contaminant can be present in an amount of up to 1100 pg per kg of milk
protein. For the reasons outlined below, we disagree with this aspect of the
Examiner’s construction of the claim. To the extent that the Examiner
means that “cresols, indoles, phenol, ethylphenols, methoxyphenols, skatole,
isoflavones, mixtures thereof, conjugates thereof, and mixtures of conjugates
thereof’ are examples of off-note contaminants, we agree.
Our construction is consistent with the Specification, which states that
undesirable odors in food products containing milk proteins are associated
with “cowy” contaminants and that these odors are “caused by just a few
types of compounds: cresols, indoles, phenol, ethylphenols,
methoxyphenols, skatole, isoflavones, and conjugates thereof’ (Spec. ^ 30).
Thus, it is reasonable to construe the language in claim 1 that off-note
contaminants “include” the recited classes of compounds as meaning that
those compounds are examples of such off-note contaminants.
Appellants dispute the Examiner’s interpretation of “including”
(Appeal Br. 13), arguing that the Examiner has not provided a rationale for
this construction and asserting that this construction “would render
superfluous the claim element requiring 1100 pg or less of off-note
contaminants” (id.). In the Reply Brief, Appellants state:
A careful reading of claim 1 shows that it recites: “1100 pg or less
of off-note contaminants including ... and mixtures of conjugates
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Application 11/756,844
thereof’ (emphasis added). Appellant submits that the use of the
plural form of the word “contaminant” coupled with the word
“and” at the end of the listing demonstrates that the 1100 pg per
kg limitation is not referring to any one of the list of contaminants
in the alternative, as alleged by the Examiner. Rather, claim 1
clearly contemplates that mixtures (i.e., combinations) of the off-
note contaminants must be “1100 pg or less.”
(Reply Br. 3)
It is well established that “the PTO must give claims their broadest
reasonable construction consistent with the specification. . . . Therefore, we
look to the specification to see if it provides a definition for claim terms, but
otherwise apply a broad interpretation.” In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (emphasis added) (citation omitted).
We agree with Appellants that the claim language should be construed as
meaning that the total amount of the off-note contaminants is 1100 pg or less
per kg of milk protein, because the “including” clause which follows this
limitation is reasonably read as simply providing examples of off-note
contaminants, and the Specification is clear in stating that it is the total
amount of off-note contaminants that is critical (Spec. If 30). However, we
also agree with the Examiner that the proper construction of the claim
includes food products which contain no off-note contaminants (i.e. they are
present in an amount of 0 pg per kg of milk protein.).
We now turn to the specifics of the obviousness rejection. The
Examiner finds that Coleman discloses a cereal bar which includes milk and
non-milk proteins, but is silent as to the milk protein comprising 50-95% by
weight of the total protein in the product (Final Act. 6, citing Coleman,
inf 43, 55). The Examiner finds that Wibert discloses a nutritional bar
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Application 11/756,844
composition which includes a milk protein which makes up 73.65% of the
total protein in the bar (Final Act. 6-7, citing Wibert, Example 2).
According to the Examiner, a person skilled in the art would have had
reason to use Wibert’s milk protein amount in Coleman’s product because
Wibert teaches that elevated amounts of milk protein (i.e. relative amounts
of milk protein falling within the claimed range of 50-95%) would produce
a “successful” nutritional bar (Final Act. 7, citing Wibert 5:66-6:2).
With regards to the limitation on the amounts off-note contaminants,
the Examiner finds that Coleman does not explicitly disclose amounts of
these components in its bars, which therefore includes amounts of zero off-
note contaminants (Final Act. 8). The Examiner also finds that Etzel teaches
the use of milk proteins in protein bars that are free of contaminants and off-
flavors9 and thus encompasses milk proteins which have zero amounts of
contaminants (Final Act. 8, citing Etzel 9, 139, 144).
The Examiner concludes that it would have been obvious to use
EtzeFs milk proteins in Coleman’s bars because they are very bland and
neutral in flavor to provide a desired taste profile to consumers (Final Act.
8-9).
Appellants argue that the Examiner has not established an adequate
reason to combine Coleman and Etzel, and doing so would have been
contrary to Coleman’s intended purpose (Appeal Br. 14). According to
Appellants, Coleman’s purpose was to incorporate milk protein into a food
product which retained the flavors of the milk protein {id.). In this regard,
Appellants cite to Coleman’s statement that its goal is “to provide nutritional
9 The Examiner also finds that Saxby evidences that it is well known that p-
cresol and indole are off-flavors (Final Act. 8, citing Saxby, p. 280).
8
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Application 11/756,844
value without sacrificing taste and flavor” (Appeal Br. 15, citing Coleman,
Abstract). This argument is not persuasive because, as found by the
Examiner, Coleman specifically teaches that its milk protein product may be
selected based on flavor or other organoleptic attributes (Ans. 10-11, citing
Coleman 27), which include no added flavors (i.e. from the off-note
contaminants) from the milk protein. Moreover, Appellants have not
explained why the flavors Coleman seeks to preserve would necessarily
derive from the off-note contaminants in the milk protein, rather than other
ingredients in the food product.
Appellants also argue that the Examiner has not adequately
established that the proposed combination would produce a food product
with off-note contaminants at the claimed concentration levels (Appeal Br.
15-17). However, as explained by the Examiner, Etzel explicitly discloses a
milk protein product which is free from contaminants (Etzel 9, 25). Even
if, as contended by Appellants (Appeal Br. 17), Etzel discloses some milk
protein products with some amount of off-note contaminants, Etzel provides
a method and an incentive to produce a milk protein composition with a very
small amount (or zero amount) of off-note contaminants, which would fall
within the claimed range, i.e., 1100 pg or less, of off-note contaminants.
To the extent that Appellants assert that the art does not disclose
limiting the concentration of cresol conjugates {id.), as noted above the
claims merely require limiting the amount of off-note contaminants. The
cited art, as discussed in the Office Action, discloses eliminating/limiting the
presence of these materials. Appellants have not established that the art
would not sufficiently limit the presence of the off-note contaminant cresol-
conjugates.
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Application 11/756,844
Finally, Appellants argue that secondary indicia, namely that no one
knew previous to Appellants’ work that cresol-conjugates were off-note
contaminants, overcomes a prima facie case of obviousness (Appeal Br. 18-
19). However, as found by the Examiner and evidenced by Saxby, the
evidence of record does not support Appellants’ contention that it was
previously unknown that cresol conjugates were off-note contaminants.
CONCLUSION
We REVERSE the rejection of claims 1-9, 13, 14, and 40^16 under
35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor regards as the invention.
We AFFIRM the rejection of claims 1-9, 13, 14, and 40 46 under
35 U.S.C § 103(a) as being unpatentable over Coleman in view of Wibert and
Etzel, as evidenced by Kirschmann and Saxby.
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
10