Ex Parte Schmidt et al

Patent Trial and Appeal BoardSep 2, 2015

12203051 (P.T.A.B. Sep. 2, 2015)

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. 12/203,051 09/02/2008 Gavin Matthew Schmidt 9610-77689-US 2464 109813 7590 09/02/2015 Fitch, Even, Tabin & Flannery, LLP 120 South LaSalle Street Suite 1600 Chicago, IL 60603-3406 EXAMINER WATTS, JENNA A ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 09/02/2015 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte GAVIN MATTHEW SCHMIDT, JENNIFER LOUISE KIMMEL, AARON S. HANDRICK, LISA ANN DIERBACH, KENNETH ALLEN MIKESKA, BRUCE EDWARD CAMPBELL, and KAREN ROBINSON1 ____________ Appeal 2013-008667 Application 12/203,051 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, TERRY J. OWENS, and MICHELLE N. ANKENBRAND, Administrative Patent Judges. GARRIS, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejections under 35 U.S.C. § 103(a) of independent claims 1 and 17 as unpatentable over Cale (US 2007/0172548 A1 published July 26, 2007) in view of Reaves (US 2003/0054079 A1 published Mar. 20, 2003) and 1 Mondelēz International is identified as the real party in interest. App. Br. 3. Appeal 2013-008667 Application 12/203,051 2 dependent claims 2–16 as well as 18–27 over these references alone or in combination with an additional reference. We have jurisdiction under 35 U.S.C. § 6. We REVERSE. Appellants claim a method of making a stable concentrated dairy liquid which comprises, inter alia, blending cream into a concentrated dairy liquid retentate and ultimately obtaining a stable concentrated dairy liquid having a protein to fat ratio of about 0.4 to about 0.7 (independent claim 1). Appellants also claim a stable concentrated dairy liquid having the aforementioned ratio (independent claim 17). A copy of representative claims 1 and 17, taken from the Claims Appendix of the Appeal Brief, appears below. 1. A method of making a stable concentrated dairy liquid, the method comprising: forewarming a liquid dairy base for a time and temperature sufficient to effect a reduction in pH 4.6 soluble proteins; concentrating the forewarmed liquid dairy base using ultrafiltration techniques to form a concentrated dairy liquid retentate; blending an amount of cream into the concentrated dairy liquid retentate to form a cream enriched dairy liquid; homogenizing the cream enriched dairy liquid to form a homogenized cream enriched dairy liquid; adding a stabilizer to the homogenized cream enriched dairy liquid to form a stabilized cream enriched dairy liquid; sterilizing the stabilized cream enriched dairy liquid at a temperature and for a time sufficient to obtain the stable concentrated dairy liquid having a Fo of at least about 5, the Appeal 2013-008667 Application 12/203,051 3 stabilized cream enriched dairy liquid being substantially resistant to gelation during sterilization; the stable concentrated dairy liquid has a protein to fat ratio of about 0.4 to about 0.7 and about 1 percent or less lactose; and the stable concentrated dairy liquid is resistant to gelation and remains a visually stable fluid emulsion for at least about 9 months under ambient storage conditions and when reconstituted provides a fresh dairy flavor. 17. A stable concentrated dairy liquid comprising a blend of ultrafiltered dairy liquid and cream; a total solids of about 25 to about 36 percent, a protein to fat ratio of about 0.4 to about 0.7 where the fat is supplied from both the ultrafiltered dairy liquid and the cream, and less than about 1 percent lactose; an amount of stabilizer salt in a ratio of protein to stabilizer salt between about 10:1 to about 38:1; about 20 to about 45 percent reduction in volatile compounds containing one of sulfur, nitrogen, or mixtures thereof as compared to a concentrated dairy liquid without cream enrichment; and a brew recovery of at least about 90 percent after about 9 months ambient storage. The Examiner concludes that it would have been obvious to modify the method and concentrated dairy liquid of Cale by adding cream as taught by Reaves (Final Action 5) and “to optimize the protein to fat ratio depending on the fat content and resulting taste characteristics desired in the final concentrated product and any reconstituted products” (id. at 6). In support of this obviousness conclusion regarding optimization, the Examiner Appeal 2013-008667 Application 12/203,051 4 (i) selects certain values for the amount of added cream taught by Reaves as well as for the amounts of protein and fat in this added cream and in the concentrated liquid of Cale, (ii) calculates the concentrations of protein and fat in the liquid resulting from the proposed combination of Cale and Reaves, and (iii) determines “one could arrive at a final concentrated dairy liquid having a protein to fat ratio of 0.5, which is within the range claimed” (Ans. 15). The Examiner has failed to establish a prima facie case of obviousness with respect to the protein to fat ratio required by independent claims 1 and 17. As an initial matter, the Examiner’s optimization position is deficient because, as argued by Appellants, the Examiner “has not established that the cited prior art recognizes ratios of protein-to-fat to have any effect on anything, much less the stability and enhanced dairy flavors in the context of a concentrated product” (App. Br. 25). Appellants correctly point out that, in order to conclude that it would have been obvious to optimize a parameter, the parameter must be recognized in the prior art as result- effective (id.). In re Antonie, 559 F.2d 618, 620 (CCPA 1977). Furthermore, Appellants provide the Criezis Declaration of record to evince that the amounts of protein and fat disclosed by Reaves would yield protein to fat ratios of 0.9 to 23 which is above the claimed range (App. Br. 22–23 (citing Decl. ¶ 17)).2 In this regard, we find convincing merit in Appellants’ further argument that Reaves teaches away from decreasing protein below the disclosed amounts (id. at 23) and thus below a protein to 2 The Examiner does not dispute this evidence in the appeal record. Appeal 2013-008667 Application 12/203,051 5 fat ratio of 0.9 (id.). These circumstances undermine the Examiner’s conclusion that it would have been obvious to optimize the amounts of protein and fat in the proposed Cale and Reaves combination so as to obtain the claimed protein to fat ratio of about 0.4 to about 0.7. See In re Sebek, 465 F.2d 904, 907 (CCPA 1972) (reversing obvious-to-optimize conclusion where claimed range was outside the prior art range). Finally, we emphasize that the Examiner’s above discussed calculation merely reveals that “one could arrive at . . . a protein to fat ratio . . . within the range claimed (Ans. 15 (emphasis added)). However, the mere possibility that the claimed ratio could have been achieved is inadequate to establish that it would have been obvious. The Examiner has not provided this record with articulated reasoning having rational underpinning to support a conclusion that an artisan would have found it obvious to achieve such a ratio. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (“[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness”) quoted with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). For the above-stated reasons, we do not sustain the Examiner’s § 103 rejections of the appealed claims. The decision of the Examiner is reversed. REVERSED bar