Ex Parte Smith et al

Patent Trial and Appeal BoardDec 19, 2018

13840020 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/840,020 03/15/2013 48940 7590 12/19/2018 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 2100 CHICAGO, IL 60603-3406 FIRST NAMED INVENTOR Gary Francis Smith 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. 1410-102727-US 1024 EXAMINER MORNHINWEG, JEFFREY P ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 12/19/2018 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 GARY FRANCIS SMITH, WIBUL CHARINTRANOND, PAUL V. GASS, BRIAN E. LEVINE, and ANDREW E. MCPHERSON 1 Appeal2018-000613 Application 13/840,020 Technology Center 1700 Before TERRY J. OWENS, N. WHITNEY WILSON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. Â§ 134(a) from the Examiner's decision rejecting claims 1-5 and 7-25. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to particulate natural cheese products and to methods of melting associated cheese products. E.g., 1 The Appellant is the Applicant, Kraft Foods Group Brands LLC, which is also identified as the real party in interest. See App. Br. 3. The Appellant states that Kraft Foods Group Brands LLC is "100% owned by KFG Management Services LLC," which is "l 00% owned by the Kraft Heinz Foods Company." Id. Appeal2018-000613 Application 13/840,020 Spec. ,r 1; Claims 1, 14. Claim 1 is reproduced below from page 27 (Claims Appendix) of the Appeal Brief: 1. A particulate natural cheese product comprising: a natural cheese including a plurality of particulate natural cheese pieces each having an outer surface thereof, the natural cheese has a protein aggregation temperature of about 120 to about 180Â°FÂ· and ' a non-crosslinked modified starch applied to the outer surface of the particulate natural cheese pieces, the modified starch derived from com, wheat, potato, tapioca, waxy maize, sago, rice, waxy rice, waxy sorghum, and mixtures thereof, and having a peak gelatinization temperature from about 140Â°F to about 150Â°F and a degree of substitution of less than about 0.2 D.S. providing intact starch granules including amylopectin and substantially no amylose on the natural cheese pieces effective as an anticaking agent; wherein there are substantially no intact starch granules and substantially no starch agglomerates of the amylopectin when the particulate natural cheese is melted to form a melted natural cheese. ANALYSIS Claims 1-5 and 7-25 stand rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Applicant's Admitted Prior Art ("AAPA") in view of Gronfor (US 4,552,774, issued Nov. 12, 1985), Reddy (US 5,626,893, issued May 6, 1997), and the Tate & Lyle High Performance Cook-Up Starches Product Application Grid, available at https://web.archive.org/web/20080621214957 /http://www.tateandlyle.com/T ateAndLyle/products_applications/product_application_grids/americas/high _performance_cookup_starches.htm (last accessed Dec. 19, 2018) (dated June 21, 2008). 2 Appeal2018-000613 Application 13/840,020 The Appellant argues the claims as a group. We select claim 1 as representative, and the remaining claims will stand or fall with claim 1. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). After review of the cited evidence in the appeal record and the positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner's rejection. Accordingly, we affirm the rejection for reasons set forth below, in the Final Action, and in the Examiner's Answer. See generally Final Act. 2-17; Ans. 2-20. The Examiner finds that the AAP A discloses a particulate natural cheese product, such as shredded cheese, with an outer surface onto which a natural starch is applied as an anti caking agent. Ans. 2 ( quoting Spec. ,r 14 ). The Examiner acknowledges that the AAP A does not specify a particular type of cheese or the use of a non-crosslinked modified starch as the anticaking agent. Id. at 3. However, the Examiner finds (1) that Gronfor teaches that cheddar cheese is suitable for producing a shredded cheese product that is subsequently melted, (2) that Gronfor teaches that a variety of modified starches are suitable for use with shredded cheese, (3) that Reddy discloses the use of modified starch as an anticaking agent for shredded cheese, and (4) that Tate & Lyle teaches that a modified starch product named Shur-Fil is a suitable starch for use with cheese sauce products, which are the same as or similar to melted cheese products. Id. at 3-5. The Examiner determines it would have been obvious to use cheddar and Shur- Fil as the cheese and starch, respectively, of the AAPA. Id. at 3-5, 12. The Examiner observes that the Specification indicates (1) that cheddar cheese has a protein aggregation temperature that falls within the scope of claim 1, and (2) that Shur-Fil exhibits all of the physical properties 3 Appeal2018-000613 Application 13/840,020 of the starch required by claim 1. Id. at 3. The Examiner determines that, because the prior art combination teaches or suggests a cheese product that is the same as the cheese product of claim 1, the melt properties recited by the "wherein" clause are "latent properties" that would flow naturally from the cheese product of the combined prior art. Id. at 5. In view of those and other findings less material to this appeal, the Examiner concludes that the subject matter of claim 1 would have been obvious to a person of ordinary skill in the art. Id. at 2-5. Relying on two declarations from named inventor Andrew E. McPherson, Ph.D., the Appellant first argues that Gronfor teaches away from using non-crosslinked starches, as required by claim 1, because Gronfor teaches "that its starches must be able to withstand high shear stresses." App. Br. 16-18. That argument is not persuasive of reversible error. Even were we to agree that a person of ordinary skill in the art would have viewed a non- crosslinked starch such as Shur-Fil as unsuitable for use in Gronfor because of structural and functional considerations described by Dr. McPherson, Gronfor is not the reference with which the Examiner proposes using Shur- Fil. As the Examiner explains in the Answer, Ans. 12, the effective primary reference in the rejection is the AAPA, and the Appellant identifies nothing in the AAP A that would have suggested that non-crosslinked starches such as Shur-Fil are unsuitable for use as cheese anticaking agents, see App. Br. 16-18. Moreover, Reddy expressly discloses the use of modified starches as shredded cheese anticaking agents, Reddy at 25:46-65, and the Appellant identifies nothing in Reddy that would have suggested that 4 Appeal2018-000613 Application 13/840,020 Reddy' s disclosure excludes non-crosslinked modified starches such as Shur-Fil, see App. Br. 16-18. The Examiner relies on Gronfor for the broad propositions that cheddar is a suitable cheese for melting and that a variety of starches were known to useful in melted cheese products. E.g., Ans. 3. The fact that Shur- Fil itself may not have been desirable in Gronfor' s specific high-shear-stress application, see Gronfor at 3: 18-23, does not establish, or even suggest, that Shur-Fil would also have been unsuitable for use as an anticaking agent in other applications, such as that of the AAP A or Reddy. The Appellant does not allege that those applications involve high shear stress. Accordingly, we are not persuaded that Gronfor generally teaches away from the use of non- crosslinked modified starches with cheese products merely because such a starch may not have been desirable for Gronfor's specific application involving high shear stress. In any event, and in view of Reddy's disclosure of using modified starch as an anti caking agent for shredded cheese ( and melted cheese applications, see Reddy at 2:25-28), even if we were to agree with the Appellant that Gronfor teaches away from the claimed invention, the Examiner's reliance on Gronfor does not appear to be necessary for the rejection. The fact that Reddy may express a preference for rice flour over modified starches, see App. Br. 14, 18, does not negate Reddy's unequivocal disclosures ( 1) that "modified starch" is an ingredient that has "been included as bases in the anticaking agent," and (2) that modified starch "can be used as [a base] for this anticaking agent even though [it] may not be as effective as rice flour." Reddy at cols. 25-26. "[J]ust because better alternatives exist in the prior art does not mean that an inferior combination 5 Appeal2018-000613 Application 13/840,020 is inapt for obviousness purposes." In re Mouttet, 686 F.3d 1322, 1334 (Fed. Cir. 2012); see also In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) ("A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use."). The Appellant also argues that the Examiner does not adequately explain why a person of ordinary skill would have selected Shur-Fil for coating a natural cheese product. See App. Br. 18-24. That argument is not persuasive of reversible error. As described above, the AAP A describes the use of native starches as anticaking agents for shredded cheese. See Spec. ,r 14. Reddy discloses the use of modified starch as an anticaking agent for shredded cheese. Reddy at 25:46-65. Reddy specifically identifies melt applications for its cheeses. Id. at 2:25- 28. Tate & Lyle lists approximately 30 known "high performance cook-up starches," one of which is Shur-Fil 677. Tate & Lyle specifically identifies "Sauces, Cheese" as an appropriate application for Shur-Fil 677. The Appellant's Specification also repeatedly refers to cheese "sauce[s]." E.g., Spec. passim. Given that modified starches were known anticaking agents for shredded cheese products, and that Shur-Fil was a known modified starch suitable for use with cheese products such as cheese sauces, the Examiner's proposal is the use of a known ingredient according to its established function. Alternatively, it is the substitution of one known modified starch (Shur-Fil) for the modified starch of Reddy or the native starch of the AAP A. Such combinations typically do not result in nonobvious subject matter. See KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007) 6 Appeal2018-000613 Application 13/840,020 ("The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results."); see also id. at 416 ("[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result."); In re Fout, 675 F.2d 297,301 (CCPA 1982) ("Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious."). The fact that numerous potentially suitable starches were known does not render any particular starch, such as Shur-Fil, less obvious. See Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious."). We recognize that Shur-Fil is not marked in the "Cultured Products" or "Cheese, Processed" rows of Tate & Lyle. See, e.g., App. Br. 14; McPherson Deel. dated Sept. 18, 2015, ,r 16. However, given that Tate & Lyle does mark the "Sauces, Cheese" row for Shur-Fil, and that the record indicates that a person of ordinary skill in the art would have understood cheese "sauces" to have at least some relevance to melted cheeses, even if they are not identical, see Ans. 16-17, we are not persuaded that Tate & Lyle's failure to mark "Cultured Products" or "Cheese, Processed" for Shur- Fil would have indicated to a person of ordinary skill in the art that Shur-Fil would be an unsuitable starch for use with the AAPA and/or Reddy. Similarly, the fact that Tate & Lyle discloses use of Shur-Fil in a cheese sauce, and thus the starch may not be "applied to the outer surface of the particulate natural cheese pieces," as required by claim 1, is not indicative of reversible error in the rejection. See App. Br. 22. As set forth 7 Appeal2018-000613 Application 13/840,020 above, Reddy expressly discloses applying anticaking agent "onto" shredded cheese, Reddy at 25:63---64, and Tate & Lyle's disclosure of the use of Shur- Fil with cheese sauces at least inferentially suggests its suitability for use in similar cheese applications, such as those of AAPA and Reddy. The Appellant's arguments that "[ t ]he use of modified starches in cheese sauces is ... completely irrelevant," App. Br. 22 ( emphasis in original), and that "cheese sauce products and spreads are categorically different from melted cheese," id. at 23 ( emphasis in original) ( citing McPherson Deel.), are unpersuasive in view of the Specification's repeated references to melted cheese products as cheese sauces. See Ans. 16-17; see also Spec., passim. Even assuming that a person of ordinary skill in the art would have understood there to be differences between cheese sauces and melted cheese products, the record supports the Examiner's finding that a person of ordinary skill nevertheless would have considered disclosures concerning the use of modified starches in cheese sauce as relevant to disclosures concerning the use of modified starches in other cheese products. Cf PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014) ("The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success."); KSR, 550 U.S. at 416-21 ("[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle."). The Appellant also argues that unexpected results support a conclusion of nonobviousness in this case. App. Br. 24--26 ( citing McPherson Decls.). The Appellant bears the burden of establishing that unexpected results support a conclusion of nonobviousness. In re Huang, 8 Appeal2018-000613 Application 13/840,020 100 F.3d 135, 139 (Fed. Cir. 1996). The Appellant has not carried that burden. "[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art." In re Baxter Travenol Labs., 952 F.2d 388,392 (Fed. Cir. 1991). "[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference." In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original). Even assuming that a person of ordinary skill in the art would have expected "highly modified crosslinked starches such as RezistaÂ®" to have poor organoleptic properties, the Appellant fails to persuasively explain why a person of ordinary skill in the art would have had the same expectation for "non-crosslinked, lightly substituted modified starches" such as Shur-Fil. See App. Br. 25. The mere fact that the Appellant's results may be "superior" is not enough to establish that a person of ordinary skill in the art would have considered them to be unexpected. See id. Use of the word "unexpected" or "surprisingly," of itself, is not persuasive. See Klosak, 455 F.2d at 1080. Additionally, the relied-upon results must be commensurate in scope with the claims. In re Peterson, 315 F.3d 1325, 1329--31 (Fed. Cir. 2003). "Establishing that one ( or a small number of) species gives unexpected results is inadequate proof, for 'it is the view of [the CCP A] that objective evidence of non-obviousness must be commensurate in scope with the claims which the evidence is offered to support."' In re Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448 F.2d 791,792 9 Appeal2018-000613 Application 13/840,020 ( CCP A 1971) ). Here, claim 1 encompasses any natural cheese having the recited protein aggregation temperature, and it encompasses any non- crosslinked modified starch having the recited characteristics. The relevant results identified by the Appellant are Examples 4 and 5. See App. Br. 25; see also Spec. ,r,r 61-82. It appears that cheddar cheese was the only cheese used, and that Shur-Fil was the only starch used that allegedly falls within the scope of claim 1. See ,r 51 (Table 2), ,r 63 (Table 3). The Appellant does not allege, must less persuasively show, that those limited results are representative of the full scope of claim 1. Accordingly, on this record, we are not persuaded that unexpected results support a conclusion of nonobviousness. In summary, we have carefully considered the Appellant's arguments, but we are not persuaded of reversible error in the Examiner's rejection. CONCLUSION We AFFIRM the Examiner's rejections of claims 1-5 and 7-25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 10