Ex Parte Van Haesendonck et al

Patent Trial and Appeal Board

Mar 15, 2017

12305627 (P.T.A.B. Mar. 15, 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.
12/305,627 03/03/2009 Ingrid Van Haesendonck DECLE228.002APC 6254
20995 7590 03/17/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
03/17/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INGRID VAN HAESENDONCK and
BEATE ANDREA KORNBRUST
Appeal 2016-000119
Application 12/305,6271
Technology Center 1700
Before WESLEY B. DERRICK, CHRISTOPHER L. OGDEN, and
BRIAN D. RANGE, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL2
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision maintaining the rejection under 35 U.S.C. § 103 of claims 2—4, 6-
12, 14-17, 21, 22, and 24-26. Claims 1, 5, 13, 18-20, and 23 have been
canceled. An oral hearing was held on March 6, 2017. We have jurisdiction
under 35 U.S.C. § 6. We REVERSE.
1 Appellants identify Puratos N.V. as the real party in interest. Appeal Br. 3.
2 We refer to the Specification filed December 18, 2008 (“Spec.”), the Final
Office Action mailed November 12, 2014 (“Final Act.”), the Appeal Brief
filed March 6, 2015 (“Appeal Br.”), the Examiner’s Answer mailed July 22,
2015 (“Ans.”), and the Reply Brief filed September 16, 2015 (“Reply Br.”).
Appeal 2016-000119
Application 12/305,627
STATEMENT OF THE CASE
The subject matter of the claims on appeal relates to a method of
preparing a cake using phospholipase that includes the steps of preparing a
cake batter by mixing cake batter ingredients, which ingredients include egg
lecithin and phospholipase, and baking the cake batter. Spec. Abstract.
Independent claims 2, 24, and 25 are each directed to a method for
preparing a cake.
Claim 2 is representative.
2. A method for preparing a cake, comprising
preparing a cake batter by mixing cake batter ingredients, and
baking the cake batter to make the cake, wherein said cake
batter ingredients comprise a phospholipase and eggs wherein
the said eggs comprise egg yolk lecithin in an amount to
provide between 0.2% and 0.4% of the said egg yolk lecithin in
the said batter.
Appeal Br. (Claims Appendix) 30.
Independent claim 24 recites that the batter ingredients include whole
liquid eggs, and recites amounts of further specified batter ingredients.
Independent claim 25 recites that “the cake thus obtained has a reduced
amount of egg but has comparable volume, and/or comparable cohesiveness
and/or comparable springiness than a cake obtained by baking a [typical]
batter” and sets forth the composition of a “typical cake recipe” batter.
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Application 12/305,627
REJECTIONS
The Examiner maintains the following obviousness rejections under
35 U.S.C. § 103(a):
I. Claims 2^1, 6-8, 10-12, 15, 16, 17, 21, 22, 25, and 26 over Spendler3
in view of Dicks4 as evidenced by Weihrauch5;
II. Claim 9 over Spendler in view of Dicks as evidenced by Weihrauch,
in further view of Vidal6;
III. Claims 14 and 15 over Spendler in view of Dicks as evidenced by
Weihrauch, in further view of Grazela7;
IV. Claim 24 over Spendler in view of Dicks;
V. Claims 2—4, 6-8, 10-12, 15, 16, 17, 21, 25, and 26 over Spendler and
Cillario8 as evidenced by Weihrauch;
VI. Claim 9 over Spendler and Cillario as evidenced by Weihrauch, in
further view of Vidal;
VII. Claims 14 and 15 over Spendler and Cillario as evidenced by
Weihrauch, in further view of Grazela; and
VIII. Claim 24 over Spendler in view of Cillario.
3 Spendler et al., US 6,365,204 Bl, issued April 2, 2002.
4 Dicks, US 6,524,631 Bl, issued February 25, 2003.
5 Weihrauch et al., The Phospholipid Content of Foods, JAOCS 60 (12)
(December 1983), pp. 1971-78.
6 Vidal, US 3,655,403, issued April 11, 1972.
7 Grazela et al., US 2002/0119232 Al, published August 29, 2002.
8 Cillario, US 4,293,577, issued October 6, 1981.
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Appeal 2016-000119
Application 12/305,627
DISCUSSION
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the Examiner has failed to meet the
burden of establishing the unpatentability of claims 2—4, 6-12, 14-17, 21,
22, and 24-26. We add the following.
“[T]he Examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
As set forth in Rejections I and V, the Examiner relies in the main on
Spendler, and then on either Dicks or Cillario for the amount of eggs.
Rejection I (and Rejections II—IV)
Spendler discloses, inter alia, a method of preparing a baked product
which can be a cake that includes preparing a dough with whole eggs and
added phospholipase and baking the dough product. Ans. 3 (citing Spendler
Abstract, col. 1,11. 56-60, col. 3,11. 13-20, 37-39, col. 4,11. 45-52). “The
bread made by the combined use of an anti-staling amylase and a
phospholipase has improved softness.” Spendler Abstract.
Dicks discloses fresh eggs in a batter mix in an amount of about 9.4%.
Ans. 4 (Dicks col. 4,11. 10-24).
The Examiner relies on Weihrauch as evidence of the amount of
lecithin in fresh eggs to support calculations showing that the disclosed
amount of fresh eggs in Dicks provides lecithin in an amount of about
0.25%. Ans. 4 (citing Weihrauch 1973, Table III).
The Examiner finds the ingredients used to formulate cake and muffin
batters are substantially similar (Ans. 22) and “maintains that the
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Appeal 2016-000119
Application 12/305,627
incorporation of phospholipase into ‘dough’ for the specific effect of
improving the texture and keeping qualities of the finished bakery products
can be applied to foods that are typically in a ‘batter’ form before being
baked such as cakes and pancakes” (Ans. 20-21). The Examiner further
maintains that “it was known in the art that the uncooked forms of pancakes
and cakes were generally referred to as batter” and, thus, “Spendler was not
limited to dough . . . because it included pancakes and cakes.” Ans. 21.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to have modifed Spendler
by adding fresh eggs in the amount taught by Dicks (about 9.4%) “in order
to supply the desired structure, stability, flavor, richness, and color to the
finished product.” Ans. 4.
Appellants contend that dough and batter differ and are distinct from
one another and that Spendler’s disclosure of a dough that can be used to
produce, inter alia, cakes and pancakes does not constitute the disclosure of
cake batter.
On this record, we are of the opinion that the Examiner has failed to
meet the requisite burden to establish a prima facie case of obviousness
because there is an insufficient basis for the disclosed dough in Spendler
(col. 4,11. 45-52) to be understood to include, or to suggest, baked goods
formed of batter where there is no factual finding that cakes (or pancakes)
formed of dough, rather than batter, are not known (see generally Final Act.;
Ans.). In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“The Patent
Office has the initial duty of supplying the factual basis for its rejection. It
may not. . . resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.”).
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Appeal 2016-000119
Application 12/305,627
Having relied wholly on Spendler in this manner to meet the batter
limitation for Rejections I-IV, we are unable to sustain these grounds of
rejection. We decline to scour the record the record in the first instance for
facts that might support the rejection, as our primary role is review, not
examination de novo.
Rejection V (and Rejections VI—VIII)
The Examiner relies again on Spendler for its disclosure of a method
of preparing a baked product which can be a cake that includes preparing a
dough with whole eggs and added phospholipase and baking the dough
product. Ans. 12.
The Examiner also finds, inter alia, that Cillario discloses a cake
batter. Ans. 12 (citing Cillario col. 4,11. 1-11, col. 5,11. 25-32). The
Examiner maintains that Cillario is not “limited to dough because Cillario
explicitly disclosed the formation of cakes, like pocket size cakes and family
cakes and discloses layers of cake and cake with chocolates.” Ans. 28
(citing Cillario col. 5,11. 24-32).
Appellants rely on the arguments as to Spendler discussed above with
regard to Rejection I and further contend that Cillario’s disclosure of a
dough and baked product that can be in the form of a cake does not
constitute the disclosure of cake batter. Appeal Br. 2426 (citing Cillario
col. 4,11. 43^15).
On this record, we are of the opinion that the Examiner has failed to
meet the requisite burden to establish a prima facie case of obviousness
because there is an insufficient basis for the disclosed dough in Spendler or
Cillario to be understood to include, or to suggest, baked goods formed of
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Application 12/305,627
batter where there is no factual finding that cakes formed of dough, rather
than batter, are not known. Warner, 379 F.2d at 1017.
Having relied on Spendler and Cillario in this manner to meet the
batter limitation for Rejections V-VIII, we are unable to sustain these
grounds of rejection. We decline to scour the record in the first instance for
facts that might support the rejection, as our primary role is review, not
examination de novo.
DECISION
In view of the reasons set forth above, we affirm the Examiner’s
rejections of claims 2—4, 6-12, 14-17, 21, 22, and 24-26.
REVERSED
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