Ex Parte Peterson et al

Patent Trial and Appeal Board

Sep 18, 2018

12482252 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/482,252 06/10/2009 Scott Peterson
30589 7590 09/20/2018
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
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.
555910.019 6820
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/20/2018 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT PETERSON, 1
Frank Welch, Thomas Burkholder, Norman Jager, and
Giovanna Aleman
Appeal2017-008607
Application 12/482,252
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Scott Peterson, Frank Welch, Thomas Burkholder, Norman Jager, and
Giovanna Aleman ("Nestec") timely appeal under 35 U.S.C. § 134(a) from
the Final Rejection2 of all pending claims 1, 16, 17, 31, 39, 46, 47, and 73-
96. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Nestec S.A. (Appeal Brief,
filed 30 January 2017 ("Br."), 1.)
2 Office Action mailed 7 October 2016 ("Final Rejection"; cited as "FR").
Appeal2017-008607
Application 12/482,252
A. Introduction 3
Procedural background
OPINION
Nestec requested an oral hearing in this appeal, but subsequently
elected to waive hearing attendance. ( Communication of 12 July 2018.)
The present application is a member of a family of applications, 4 one
of which has already come before us:
2017-004151 (PTAB 17 November 2017, rev'd) in application
13/190,2195 (drawn to a method of preparing freeze-dried yogurt, now U.S.
Patent No. 10,010,091 (3 July 2018)).
Another member of the family, 15/067,4466 (drawn to a method of
preparing freeze-dried yogurt), is before us as appeal 2017-008712, and is
decided concurrently on a very similar basis.
3 Application 12/482,252, Freeze-dried, dairy or dairy-substitute
compositions and methods of making and using, filed 10 June 2009 as a
continuation-in-part of PCT/US08/63312, filed 9 May 2008, which claims
the benefit of 60/916,949, filed 09 May 2007. We refer to the
"'252 Specification," which we cite as "Spec."
4 We acknowledge with appreciation Nestec having provided notice of the
following appeals. (Br. 1, § II.)
5 Application 13/190,219 was filed 25 July 2011, as a continuation of
12/482,256, which was filed was filed 10 June 2009, as a continuation-in-
part of PCT/US2008/063312.
6 Application 15/067 ,446 was filed 11 March 2016, as a continuation of
12/599,321, which was filed 28 January 2010, as the national stage under
35 U.S.C. § 371 of PCT/US08/63312.
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Application 12/482,252
The subject matter of this application is also related, somewhat more
distantly, to another family of applications, several of which have already
come before the Board for decision, and one which, appeal 2017-009031, in
application 13/457,411,7 is decided concurrently.
Subject matter background
The subject matter on appeal relates to methods of making freeze-
dried, aerated, shelf stable yogurt products that are a convenient child-
friendly snack. (Spec. 10 [0054]-12 [0066].) The individual items are said
to be easily picked up, and easily dissolved in the mouth (id. at 11 [0064])
both for taste and to reduce the risk of choking (id. at 1-2 [0003]).
The '252 Specification teaches that it is known that "[a]eration can provide
desirable characteristics such as light, fluffy textures" (id. at 1 [0002], 1. 2),
but that "aerated products are subject to physical and chemical instability
and therefore can destabilize over time" (id. at 11. 3--4). Aeration is also said
to be known to improve dissolvability, but also to lead to reduced hardness
and decreased durability. (Id.)
The Specification discloses that it is known to add a hydrated
emulsifier to already cultured dairy products before aeration.
(Id. at 1 [0002], citing Engesser '157. 8) Subsequent freeze-drying of the
products, however, is said to result in a product that is too fragile to
withstand shipping and handling. (Id.)
7 Application 13/457,411 was filed 18 May 2012. Other appeals in this
patent family are identified in the 2017-009031 Opinion.
8 Eric R. Engesser et al., Food products and their method of preparation,
U.S. Patent No. 7,005,157 B2 (2006).
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Appeal2017-008607
Application 12/482,252
Nestec seeks patent protection for a method of preparing a freeze-
dried shelf stable yogurt snack food in which a dry emulsifier consisting of
lactylated monoglycerides or diglycerides is added to milk, mixed via high
shear blending, pasteurized, inoculated with a yogurt culture, fermented,
aerated, formed into pieces, and subsequently freeze-dried.
Claim 1 is representative and reads:
A method of providing a freeze-dried, shelf stable yogurt
product comprising the sequential steps of:
(a) adding a dry emulsifier directly to
one or more dairy or dairy substitute ingredients
and
mixing the dry emulsifier and the dairy or dairy
substitute ingredient(s) via high shear blending to
form an emulsifier-containing blend, wherein the
dry emulsifier consists of lactylated monoglycerides
and/ or lactylated diglycerides;
(b) pasteurizing the emulsifier-containing blend, thereby
forming a pasteurized blend;
( c) adding a yogurt culture to the pasteurized blend and
blending the pasteurized blend and the yogurt culture;
( d) fermenting the pasteurized blend containing the yogurt
culture, thereby forming a fermented blend;
( e) admixing a gas with the fermented blend to form an
aerated product;
(f) forming portions of the aerated product into a plurality
of pieces, wherein the pieces have a predetermined size
and shape;
(g) cooling the plurality of pieces; and
(h) freeze drying the plurality of pieces to form the freeze-
dried, shelf stable yogurt product, wherein the dairy or
dairy substitute ingredient( s) is present in an amount of
from about 60% to about 98% by weight of the freeze-
dried, shelf stable yogurt product, and wherein the freeze-
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Appeal2017-008607
Application 12/482,252
dried, shelf stable yogurt product has a hardness value of
from about 0.5 to about 8 pounds of force.
(Claims App., Br. 33; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following ground of rejection 9, 10 :
Claims 1, 16, 17, 31, 39, 46, 4 7, and 73-96 stand rejected under
35 U.S.C. § I03(a) in view of the combined 11 teachings of
Engesser '089 12 and Rudolph. 13
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
Nestec urges the Examiner erred harmfully, inter alia, because
Engesser '089 and Rudolph, 14 either individually or in combination, do not
9 Examiner's Answer mailed 28 March 2017 ("Ans.").
10 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
11 The Examiner has presented rejections based on Engesser '089 in view of
Rudolph (FR 3-9), and on Rudolph in view of Engesser '089 (id. at 9-15).
Peterson treated the rejections as essentially cumulative, as do we. In this
case, as in many others, the order of references does not make a substantive
difference. Cf In re Bush, 296 F.2d 491,496, 131 USPQ 263, 266-67
(CCPA 1961) and In re Cowles, 156 F.2d 551,554, 70 USPQ 419,422
(1946).
12 Eric R. Engesser et al., Whipped yogurt products and method of
preparation, U.S. Patent Application Publication 2003/0224089 Al (2003).
13 Martin J. Rudolph et al., Edible product with live and active probiotics,
WO 01/62099 Al (2001).
14 The Examiner relies on Rudolph for teachings of freeze-drying shaped
probiotic aerated food products (FR 4, 11. 13-16), and for dairy blends
meeting the "about 60% to about 98% by weight" requirement of claim 1
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Appeal2017-008607
Application 12/482,252
teach mixing a dry emulsifier as with a dairy ingredient at high shear prior to
pasteurization and subsequent fermentation. (Br. 13-15.) In particular,
Nestec points out (Br. 13, 11. 25-26) that Engesser '089 teaches that it is
essential that the emulsifier (which is a blend of lactylated mono- and di-
glycerides) be hydrated in water in the presence of an aqueous dispersion of
wetting agent (Engesser '089, 4 [0059]-[0061]) to "facilitate[] dispersion of
the lactylated emulsifiers in the water to form the hydrated emulsifier
composition" (id. at 4 [0063]).
The Examiner "takes the position that it does not matter whether the
emulsifier initially is dry or not" because "[ a ]11 the ingredients are mixed
together to achieve an initial hydration and then freeze dried." (FR 4, 11. 7-
9.) This unelaborated reasoning is not sufficient to explain why a person
having ordinary skill in the art would have disregarded the extensive and
repeated statements and discussions by Engesser '089 regarding the
criticality of mixing a hydrated emulsifier blend with the dairy mix.
Moreover, as Nestec points out (Br. 14, 11. 6-12), Engesser '089
teaches that the yogurt should not be subjected to high shear blending. In
the words of Engesser '089, "[c]are needs to be taken to minimize the shear
imparted to the yogurt in practicing such process steps to minimize the loss
of thickness or viscosity built up by the fermentation step."
(Engesser '089 1 [001 OJ, 11. 18-21.) Consistently, Engesser '089 teaches that
the hydrated emulsifier must have a low viscosity "for ease of handling and
mixing without imparting shear to the dairy blend mix." (Engesser '089
(id. at 5, 11. 5-12). The Examiner makes no findings regarding emulsifiers
based on teachings of Rudolph.
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Application 12/482,252
4 [0066], 11. 5, and 6.). The Examiner has not, however, come forward with
evidence of record or an explanation why the routineer would have
discounted these teachings of Engesser '089 and added a dry emulsifier to a
dairy blend via high shear blending, as required by claim 1.
Furthermore, Nestec argues (Br. 14, 11. 13-24), the Examiner has not
explained why the routineer, on the basis of teachings in Engesser '089 and
Rudolph, would have mixed a dry emulsifier to a dairy product prior to
pasteurization and fermentation steps, as required by claim 1. Engesser '089
emphasizes that the hydrated emulsifier blend must be pasteurized because it
is added to inoculated and fermented yogurt in order to "provide[]
bacteriological stability for a blended dairy/hydrated emulsifier product that
does not receive further bacteriological treatment such as heat processing."
(Engesser '089 4 [0071], 11. 4--7.)
The evidence and arguments presented by Nestec, that Engesser '089
does not support the Examiner's findings and conclusions regarding the
obviousness of adding dry emulsifier to dairy ingredients via high shear
blending before pasteurization, inoculation, and fermentation, far outweigh
the evidence and argument advanced by the Examiner. We conclude that
Nestec has shown harmful error in the Examiner's rejections, so we reverse.
C. Order
It is ORDERED that the rejection of claims 1, 16, 17, 31, 39, 46, 47,
and 73-96 is reversed.
REVERSED
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