General Mills, Inc.Download PDFPatent Trials and Appeals BoardMay 26, 20212020002788 (P.T.A.B. May. 26, 2021) Copy Citation 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. 15/419,474 01/30/2017 Carina Claudia Cammarota 8306US01 1783 106306 7590 05/26/2021 DIEDERIKS &WHITELAW, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 EXAMINER LEBLANC, KATHERINE DEGUIRE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/26/2021 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): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte CARINA CLAUDIA CAMMAROTA, CHRISTINE S.T. NG, and JONAS PLAZA GARCIA Appeal 2020-002788 Application 15/419,474 Technology Center 1700 Before KAREN M. HASTINGS, JEFFREY B. ROBERTSON, and DEBRA L. DENNETT, Administrative Patent Judges. DENNETT, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the Examiner’s decision to reject claims 1–13 and 15–21. See Non-Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 In our Decision, we refer to the Specification (“Spec.”) of Application 15/419,474 filed Jan. 30, 2017; the Non-Final Office Action dated May 31, 2019 (“Non-Final Act.”); the Appeal Brief filed Aug. 12, 2019 (“Appeal Br.”); the Examiner’s Answer dated Dec. 31, 2019 (“Ans.”); and the Reply Brief filed Feb. 28, 2020 (“Reply Br.”). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as General Mills, Inc. Appeal Br. 4. Appeal 2020-002788 Application 15/419,474 2 CLAIMED SUBJECT MATTER The invention relates to gluten-free tortillas and method for making them. Spec. ¶ 7. Claims 1 and 12, reproduced below, illustrate the claimed subject matter: 1. A gluten-free tortilla composition comprising: gluten-free flour mixture from 50-60% of weight of the composition, said gluten-free flour mixture being a combination of only three flours consisting of: rice or tapioca flour, oat flour and quinoa flour; and water in an amount of at least 30% by weight of the composition. 12. A method of preparing gluten free tortillas, comprising the steps of: A. providing and mixing, at a low speed, a dry composition including gluten-free flour mixture from 50– 60% by weight of the composition, said gluten-free flour mixture being a combination of only three flours consisting of: rice or tapioca flour, oat flour and quinoa flour, along with an enzyme to induce annealing; B. adding liquid ingredients to the dry composition to form a dough mixture and mixing at a low speed, said liquid ingredients including water in an amount of at least 30% by weight and the gluten-free flour mixture being from 50-60% by weight of the dough; C. mixing the dough mixture at a high speed; D. forming the dough into quantities of individual tortilla pieces having a thickness of about 1-5 mm; and E. baking the tortilla pieces to form finished gluten free-tortillas. Appeal Br. 27, 28 (Claims Appx.). Appeal 2020-002788 Application 15/419,474 3 REFERENCES The Examiner relies on the following prior art in rejecting the claims: Name Reference Date Zhang et al. (“Zhang”) US 2010/0015279 A1 Jan. 21, 2010 Griebel et al. (“Griebel”) US 2014/0377424 A1 Dec. 25, 2014 Schober et al. (“Schober”) WO 2015/169778 A1 Nov. 12, 2015 The 36th Avenue, Gluten Free Quinoa Tortillas, available at https://www. the36thavenue.com/gluten-free-quinoa-tortillas/ (hereinafter “The 36th Ave.”) Hillson, How to Build a Gluten Free Flour Blend from Scratch, available at https://theheritagecook.com/gluten-free-3/flour-power-building-a-flour- blend/ (hereinafter “Hillson”) King Arthur Flour Ingredient Weight Chart, https://kingarthurflour.com /learn/ingredient-weight-chart.html (accessed by Examiner 12/15/2017) (hereinafter “King Arthur Flour”) Inga Dorfman, Density of Cooking Oil – The Physics Factbook, available at https://hypertextbook.com/facts/2000/IngaDorfman.shtml (hereinafter “Physics Factbook”) Feasting On Fruit, Fat-Free Gluten-Free Tortillas, available at https:// feastingonfruit.com/fat-free-gluten-free-tortillas/ (hereinafter “Feasting on Fruit”) Aqua-calc Online Food Calculator, Food Volume to Weight conversions, available at https://www.aqua-calc.com/calculate/food-volume-to-weight (hereinafter “Aqua-calc”) Appeal 2020-002788 Application 15/419,474 4 REJECTIONS The Examiner maintains the following rejections under 35 U.S.C. § 103:3 A. Claims 1–7, 12, 13, 15–17, and 21 over The 36th Ave. in view of Hillson and Zhang, as evidenced by King Arthur Flour, Aqua-calc, and The Physics Factbook; B. Claims 8 and 18 over The 36th Ave. in view of Hillson and Zhang, and further in view of Schober; C. Claim 9 over The 36th Ave. in view of Hillson and Zhang, and further in view of Feasting on Fruit; and D. Claims 10, 11, 19, and 20 over The 36th Ave. in view of Hillson and Zhang, and further in view of Griebel. Ans. 3–11. OPINION We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”). After considering the evidence presented in this Appeal and each of Appellant’s arguments, we are not persuaded that Appellant identifies reversible error with respect to 3 We note that Appellant properly appeals from the Examiner’s non-final rejection of May 31, 2019, because at least one of the claims on appeal has been twice rejected. See 35 U.S.C. § 134(a) (“[a]n applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.”). Appeal 2020-002788 Application 15/419,474 5 claims 1–8, 10–13, and 15–21. Thus, we affirm the Examiner’s rejections of these claims for the reasons expressed in the Final Office Action and the Answer. We reverse the rejection of claim 9 for reasons discussed below. We add the following primarily for emphasis. A. Obviousness of claims 1–7, 12, 13, 15–17, and 21 Claim 1 The Examiner relies on the combination of The 36th Ave., Hillson, and Zhang for disclosing the limitations of claim 1. Non-Final Act. 4–6. More specifically, the Examiner relies on The 36th Ave. to teach a gluten- free tortilla comprising quinoa flour and brown rice flour, Hillson to teach exchanging part of The 36th Ave.’s quinoa flour for oat flour, and Zhang to teach gluten-free tortillas comprising 45–55 wt% gluten-free flour. Id. Appellant argues: “it has been found, unexpectedly, that tortillas formed from a blend of oat flour, rice or tapioca flour, and quinoa flour have a texture much more similar to wheat flour tortillas than other gluten-free tortillas, such as corn masa tortillas.” Appeal Br. 7; see also id. at 12, 14, 18, 23 and Reply Br. 3, 4, 5, 6. To the extent that Appellant relies on “unexpected results” to overcome the obviousness rejection of claim 1, such reliance is misplaced. (“[T]he burden of showing unexpected results rests on he who asserts them.” In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Here, Appellant must at least establish: “(1) that there actually is a difference between the results obtained through the claimed invention and those of the prior art, In re Klosak, 455 F.2d 1077, 59 CCPA 862 (1972); and (2) that the difference actually obtained would not have been expected by one skilled in the art at the time of invention, id.; In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 Appeal 2020-002788 Application 15/419,474 6 (1971).” In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973). Appellant establishes neither requirement. As to the first requirement, Appellant compares the toughness and extensibility of a single gluten-free tortilla composition (Formula 1) to those results with a single corn masa dough (ingredients undisclosed) and a single wheat flour dough (ingredients undisclosed). See Spec. ¶¶ 31–33. This evidence is insufficient to establish that the claimed composition provides tortillas “more similar to wheat flour tortillas” as compared to “other gluten- free tortillas” or even to corn masa tortillas in general. See Appeal Br. 7. Moreover, the results disclosed in the Specification do not demonstrate that they would have been unexpected by one skilled in the art. The only statement in the entire Specification that even suggests any unexpectedness is as follows: It has been surprisingly found that tortillas formed from a blend of oat flour, rice or tapioca flour and quinoa flour have a texture much more similar to wheat flour tortillas than other gluten-free tortillas, such as corn masa tortillas. Prior art gluten free tortillas tend to not have enough hydration, not be thoroughly mixed, and the starch and protein are more separated. Thus, the texture is not cohesive and the tortillas seem crumbly. In comparison, with the gluten-free tortillas of the present invention, the dough is thoroughly mixed, the starch holds the matrix together, and the available protein is well distributed. Spec. ¶ 9 (emphasis added). Thus, any alleged unexpected results could be due to the claimed three-flour blend, the amount of hydration of the mixture, the thoroughness of mixing, and/or the presence of starch. The statement provides no evidence to support that the claimed invention provides unexpected results. Appeal 2020-002788 Application 15/419,474 7 In addition, unexpected results must be “commensurate in scope with the degree of protection sought by the claims on appeal.” In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005); see also In re Graselli, 713 F.2d 731, 743 (Fed. Cir. 1983) (“It is well settled ‘that objective evidence of non- obviousness must be commensurate in scope with the claims which the evidence is offered to support.’” (quoting In re Tiffin, 448 F.2d 791 (CCPA 1971)). “A nexus is required between the merits of the claimed invention and the evidence offered, if that evidence is to be given substantial weight enroute to conclusion on the obviousness issue.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1539 (Fed. Cir. 1983). Claim 1 encompasses all compositions comprising “gluten-free flour mixture from 50-60% of weight of the composition, said gluten-free flour mixture being a combination of only three flours consisting of: rice or tapioca flour, oat flour and quinoa flour; and water in an amount of at least 30% by weight of the composition.” “Commensurate in scope” means that the evidence provides a reasonable basis for concluding that the untested embodiments encompassed by the claims would behave in the same manner as the tested embodiment(s). See In re Lindner, 457 F.2d 506, 508 (CCPA 1972) (“Here, only one mixture of ingredients was tested. . . . The claims, however, are much broader in scope, . . . and we have to agree with the Patent Office that there is no ‘adequate basis for reasonably concluding that the great number and variety of compositions included by the claims would behave in the same manner as the [single] tested composition.’”) (bracketed material in original)). In contrast to claim 1, the Specification provides a comparison of only a single composition (Formula 1) comprising not only three gluten-free flours but also mono-diglycerides, glycerol, xanthan gum, and α-amylase, to a single Appeal 2020-002788 Application 15/419,474 8 “wheat flour dough” of undisclosed composition and a single “corn masa dough of undisclosed composition. See Spec. ¶¶ 31–33. These results are not commensurate in scope with the protection sought by claim 1. Appellant also points to claim 1’s requirement that a gluten-free flour combination consists of only three flours: (1) rice flour or tapioca flour; (2) oat flour; and (3) quinoa flour. Appeal Br. 7. Appellant argues that The 36th Ave. discloses use of only two flours: brown rice flour and quinoa flour. Id. Appellant contends that one of ordinary skill in the art would not have exchanged any of the quinoa flour in The 36th Ave. for oat flour because there is no evidentiary support that the tortilla in The 36th Ave. would need additional taste, texture, and structure, because the tortillas taught in The 36th Ave. are “flexible and strong enough to hold your filling.” Id. at 8. Appellant’s argument ignores that “a person of ordinary skill is also a person of ordinary creativity, not an automaton.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). He or she can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See id. at 418 (“a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ”). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill.” See id. at 417. The alleged improvement in gluten-free tortillas claimed is no more than “the predictable use of prior art elements according to their established functions.” Abbott Labs. v. Sandoz, Inc., 544 F.3d 1341, Appeal 2020-002788 Application 15/419,474 9 1351 (Fed. Cir. 2008) (quoting KSR, 550 U.S. at 417). Our reviewing court has repeatedly held that: an implicit motivation to combine exists not only when a suggestion may be gleaned from the prior art as a whole, but when the ‘improvement’ is technology-independent and the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. Because the desire to enhance commercial opportunities by improving a product or process is universal – and even common-sensical – we have held that there exists in these situations a motivation to combine prior art references even absent any hint of suggestion in the references themselves. In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006). We are aware of nothing that suggests a food scientist—or even a home baker—would be incapable of making the combination proposed by the Examiner based on the prior art references. Appellant finally argues that Zhang’s composition differs significantly from that of The 36th Ave., and includes extra ingredients not used in The 36th Ave. composition. Appeal Br. 9. Appellant argues that using only 45– 55% by weight of gluten-free flour as disclosed in Zhang in The 36th Ave. composition would result in a dough that is too moist. Id. at 9–10. As the Examiner explains in the Answer, Zhang teaches an acceptable range of flour as 35–65 % by weight, which completely overlaps the claimed range of 50–60% by weight. See Ans. 16–17. Adjusting flour and water content of dough compositions is well known in the art. Indeed, Zhang states that “fine tuning” of the amount of salt and water in the dough would Appeal 2020-002788 Application 15/419,474 10 be within the ability of one of ordinary skill in the art. Zhang ¶ 25. “Evidence of a motivation to combine prior art references ‘may flow from the prior art references themselves, the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.’” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1164 (Fed. Cir. 2006) (quoting Brown & Williamson Tobacco Corp. v. Philip Morris Inc., 229 F.3d 1120, 1125 (Fed.Cir.2000)). “[A] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine. Id. at 1164 (citing Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 at n. 8 (Fed. Cir. 2000) (‘The fact that the motivating benefit comes at the expense of another benefit, however, should not nullify its use as a basis to modify the disclosure of one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”)). In addition, Appellant’s own calculations indicate that substituting most of The 36th Ave.’s quinoa flour with oat flour would result in a composition having very slightly more than 60% by weight of gluten-free flour, therefore minimal increase in water. See Appeal Br. 8–9. “[W]hen the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties,” a prima facie case of obviousness exists. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (citing Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985)). For the reasons above, we sustain the rejection of claim 1 as obvious over the combination of The 36th Ave., Hillson, and Zhang. Appeal 2020-002788 Application 15/419,474 11 Claims 2 and 3 Claim 2 depends from claim 1 and recites “further comprising from 1% to 2% of at least one hydrocolloid by weight of the composition.” Appeal Br. 27 (Claims App.). Claim 3 depends from claim 2 and recites “wherein the hydrocolloid includes xanthan gum.” Id. Appellant argues claims 2 and 3 as a group. Id. at 13. Claim 3 will stand or fall with claim 2. Id.; 37 C.F.R. § 41.37(c)(1)(iv). The Examiner relies on Zhang for teaching a gluten-free dough comprising 0.05 to 1.5% xanthan gum, which is said to be important to dough strength given that gluten-free compositions lack cohesiveness normally provided by gluten. Non-Final Act. 6 (citing Zhang ¶ 22). Appellant argues that the tortilla of The 36th Ave. is taught as being “strong enough to hold your filling,” thus one of ordinary skill in the art would not have been motivated to modify the reference to include xanthan gum. Appeal Br. 13. As explained, supra, “an implicit motivation to combine exists when the combination of references results in a product or process that is more desirable, for example because it is stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient. . . . the desire to enhance commercial opportunities by improving a product or process is universal – and even common-sensical. , , , In such situations, the proper question is whether the ordinary artisan possesses knowledge and skills rendering him capable of combining the prior art references.” Dystar, 464 F.3d at 1368. “[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual Appeal 2020-002788 Application 15/419,474 12 application is beyond his or her skill.” KSR, 550 U.S. at 417. Although the tortilla disclosed in The 36th Ave. is described as strong enough to hold filling, it could benefit from additional dough strength. We sustain the rejection of claim 2, as well as claim 3, as obvious over The 36th Ave., Hillson, and Zhang. Claim 4 Claim 4 depends from claim 1 and recites “further comprising from 1% to 2% of at least one salt by weight of the composition.” Appeal Br. 27 (Claims App.). The Examiner finds that The 36th Ave. teaches 0.7% by weight of salt, and that it would have been obvious to modify the amount of salt depending on the taste preferences of consumers since salt is a common ingredient with a well-known taste profile. Non-Final Act. 7. Appellant contends that the Examiner improperly takes official notice, suggesting that the facts asserted to be well known are not capable of instant and unquestionable demonstration. Appeal Br. 13. We disagree. The Examiner finds that salt is a common ingredient with a well-known taste profile—a fact that is capable of instant and unquestionable demonstration. Appellant mischaracterizes the Examiner’s finding as “tortillas with 1% to 2% by weight of at least one salt are well known.” We sustain the rejection of claim 4 as obvious over The 36th Ave., Hillson, and Zhang. Claims 5 and 6 Claim 5 depends from claim 1 and recites “wherein the quinoa flour is present in an amount from 17% to 20% by weight of the composition.” Appeal 2020-002788 Application 15/419,474 13 Appeal Br. 27 (Claims App.). Claim 6 depends from claim 5 and recites “wherein the oat flour is present in an amount from 17% to 20% by weight of the composition. Id. Appellant argues claims 5 and 6 together, thus claim 6 stands or falls with claim 5. Id. at 14. The Examiner finds that The 36th Ave. teaches a tortilla composition comprising 11% rice flour and 52% quinoa flour, and that Hillson teaches quinoa flour and oat flour are equivalents. Non-Final Act. 7. The Examiner finds that Hillson teaches rice flour is a neutral (light) flour and both quinoa flour and oat flour are high protein flours, thus the flavor or protein content could be adjusted by adjusting the amounts of different flours. Id. The Examiner finds that Hillson teaches specific properties and advantages of different flours, and it would have been obvious to adjust the amount of each flour based on the desired properties. Id. The Examiner finds that the amounts of different flours used in a tortilla composition are result effective variables, as different amounts result in different properties, e.g., protein content and taste. Ans. 21. Appellant argues that the three claimed flours were not known to affect the similarity of gluten-free tortillas to wheat flour tortillas in terms of extensibility and toughness, they are not result effective variables. Appeal Br. 14; Reply Br. 6–7. “A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.” In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012). Hillson provides evidence that the amounts of different flours in gluten-free compositions are variables that affect, inter alia, the resulting protein content and taste. Such Appeal 2020-002788 Application 15/419,474 14 evidence supports a conclusion of obviousness. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Appellant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. See, e.g., In re Peterson, 315 F.3d at 1329; In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). As discussed supra in relation to claim 1, Appellant proffers insufficient evidence to demonstrate that the claimed range is critical. We sustain the rejection of claims 5 and 6 as obvious over The 36th Ave., Hillson, and Zhang. Claim 7 Claim 7 depends from claim 6 and recites “wherein rice flour is employed, with the rice flour being present in an amount from 17% to 20% by weight of the composition.” Appeal Br. 27 (Claims App.). The Examiner’s findings regarding obviousness of claim 7 are the same as those regarding claims 5 and 6. See Non-Final Act. 7. Appellant argues that The 36th Ave. teaches 11% by weight of rice flour, and Hillson teaches replacement of flours in a blend, not addition of flours. Appeal Br. 14. As explained by the Examiner, Hillson teaches custom flour blends comprising three or more flours. Ans. 22 (citing Hillson 6–7). In addition, the amount of rice flour in a composition, like the amounts of oat flour and Appeal 2020-002788 Application 15/419,474 15 quinoa flour, is a result effective variable whose optimization is within the grasp of one of ordinary skill in the art. Boesch, 617 F.2d at 276. We sustain the rejection of claim 7 as obvious over The 36th Ave., Hillson, and Zhang. Claim 12 Claim 12 is an independent claim drawn to a method of preparing gluten-free tortillas. Appeal Br. 28 (Claims App.). The Examiner finds that The 36th Ave. teaches mixing all the ingredients to form a dough, flattening the dough, then frying the tortilla dough to form a tortilla composition, but does not teach the order of steps as claimed. Non-Final Act. 8. The Examiner finds that Zhang teaches a method of preparing gluten-free tortillas comprising steps almost identical to those of claim 12. Id. (citing Zhang Table 1, ¶¶ 14, 33, 35, 44). The Examiner concludes that it would have been obvious to prepare the gluten- free tortilla as disclosed by The 36th Ave. by the method of Zhang, as it is a known method of preparing acceptable gluten-free tortillas. Id. The Examiner determines that it would have been obvious to add enzymes—as taught in Zhang—to The 36th Ave. composition to improve dough machinability and product texture. Ans. 22–23. Appellant relies on arguments made in relation to claim 1 for overcoming compositional limitations in claim 12 that are analogous to those of claim 1. Appeal Br. 17. For reasons discussed supra, those arguments are unpersuasive. Appellant argues that there is no apparent reason for making the proposed combination of references. Id. at 15. Specifically, Appellant argues that The 36th Ave. teaches only one step of mixing all dry and liquid Appeal 2020-002788 Application 15/419,474 16 ingredients together at the same time, and adding an additional mixing step would not be efficient and would increase the amount of time needed to prepare the tortillas. Id. at 16. The Examiner’s explanation for combining the prior art teachings is sufficient when an allowance is made for “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Mixing a combination of dry ingredients together at low speed before mixing in liquid ingredients provides the benefit of more thorough intermixing of the dry ingredients with the liquid ingredients. The ’474 Application suggests that lack of thorough mixing was known to be a problem with gluten-free tortillas. See Spec. ¶ 9. Mixing the dry ingredients as low speed would prevent wide dispersal of dry ingredients outside of the mixing container. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” Id. at 416. “Our precedent . . . does not require that the motivation be the best option, only that it be a suitable option from which the prior art did not teach away.” Par Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1197–98 (Fed. Cir. 2014). Furthermore, a combination of references may be obvious even if the combination eliminates a benefit of one of the references. See In re Urbanski, 809 F.3d. 1237, 1243 (Fed. Cir. 2016) (“One of ordinary skill would have been motivated to pursue the desirable properties taught by Wong, even if that meant foregoing the benefit taught by Gross.”); see also Winner Int’l Royalty Corp., 202 F.3d at 1349 (“The fact that the motivating benefit comes at the expense of another benefit, . . . should not nullify its use as a basis to modify the disclosure of Appeal 2020-002788 Application 15/419,474 17 one reference with the teachings of another. Instead, the benefits, both lost and gained, should be weighed against one another.”). Appellant also argues that there is no apparent reason to use an enzyme in the method of The 36th Ave. Appeal Br. 16. Appellant also argues that “[m]ost home bakers/cooks would not have access to enzymes, which are used industrially or commercially.” Reply Br. 8. The Examiner finds that Zhang teaches that the use of enzymes may be advantageous in improving dough machinability and product texture. Ans. 23. Here, again, the Examiner’s explanation for combining the prior art teachings is sufficient when an allowance is made for “the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR, 550 U.S. at 418. Claim 12 is not limited to home bakers or cooks, thus Appellant’s argument that they would not have access to enzymes is unpersuasive (as well as unsupported by evidence). Appellant argues that Zhang does not teach mixing the dough at high speed, as required by claim 12. Appeal Br. 17. Appellant argues that “the dough prepared using the combined teachings of the references is not taught or suggested to be tough or require kneading.” Id. The Examiner finds that Zhang does not specifically teach that mixing of dough is done at high speed, but that “it would have been obvious to mix the dough at high speed since dough is known to be tough and require a fair bit of kneading. It would have been obvious to adjust the speed of the mixing in order to achieve the proper consistency desired.” Ans. 8–9. In addition, The 36th Ave. describes “mix[ing] and knead[ing] until dough is smooth and elastic.” Appellant’s argument is unpersuasive. Appeal 2020-002788 Application 15/419,474 18 We sustain the rejection of claim 12 as obvious over The 36th Ave., Hillson, and Zhang. Claim 13 Claim 13 depends from claim 12 and recites inclusion of 1% to 2% of at least one hydrocolloid by weight of the composition. Appeal Br. 28 (Claims App.). Appellant repeats the arguments made with respect to claim 2, which includes the same limitation to a hydrocolloid. Compare id. at 17–18 with id. at 12–13; compare Reply Br. 9 with id. at 5–6. For the reasons discussed regarding claim 2, supra, Appellant’s arguments are unpersuasive. We sustain the rejection of claim 13. Claims 15 and 16 Claim 15 depends from claim 12 and, like claim 5, recites “wherein the quinoa flour is present in an amount from 17% to 20% by weight of the composition.” Appeal Br. 28 (Claims App.). Claim 16 depends from claim 15 and, like claim 6, recites “wherein the oat flour is present in an amount from 17% to 20% by weight of the composition. Id. Appellant argues claims 15 and 16 together, thus claim 16 stands or falls with claim 15. Id. at 18. Appellant repeats the arguments made with respect to claim 5, which includes the same limitations to an amount of quinoa flour. Compare id. at 18 with id. at 13–14; compare Reply Br. 9 with id. at 6–7. For the reasons discussed regarding claims 5 and 5, supra, Appellant’s arguments are unpersuasive. We sustain the rejection of claims 15 and 16. Appeal 2020-002788 Application 15/419,474 19 Claim 17 Claim 17 depends from claim 16 and further requires 17% to 20% rice flour by weight of the tortilla composition. Appeal Br. 29 (Claims App.). Appellant’s arguments regarding claim 17 are a repetition of those made in relation to claim 7, which includes the same rice flour requirement. Compare id. at 19 with id. at 14–15; compare Reply Br. 25–26 with id. at 22. For the reasons discussed regarding claim 7, supra, Appellant’s arguments are unpersuasive. We sustain the rejection of claim 17. Claim 21 Claim 21 is an independent claim that is identical to claim 1 except for lacking the inclusion of “only” in describing “a combination of three flours.” Compare Appeal Br. 29 with id. at 27. Appellant proffers the same arguments for patentability of claim 21 as were made for claim 1. Compare id. at 19–23 with id. at 7–12; Reply Br. 9. For the reasons discussed regarding claim 17, supra, Appellant’s arguments are unpersuasive. We sustain the rejection of claim 21. B. Obviousness of claims 8 and 18 Claim 8 depends from claim 7 and further recites “wherein the composition further comprises about 8% by weight of tapioca starch.” Appeal Br. 27 (Claims App.). Claim 18 recites the same requirement for tapioca starch, but depends from claim 17. Id. at 29. Appellant does not argue these claims separately, and states that they stand or fall with claim 7 or 17. Id. at 24. For the reasons discussed regarding claims 7 and 17, supra, we sustain the rejection of claim 21. Appeal 2020-002788 Application 15/419,474 20 C. Obviousness of claim 9 Claim 9 depends from claim 1, and further recites “wherein the composition is free of gluten protein, a fat and a leavener.” Appeal Br. 27 (Claims App.). The Examiner finds that The 36th Ave. teaches that the composition is gluten free (contains no gluten) but does not specifically teach that it is free of fat. Non-Final Act. 10. The Examiner relies on Feasting on Fruit as teaching a gluten free tortilla comprising brown rice flour, potato flour, water, and salt, and including no fat. Id. The Examiner finds that there is a reasonable expectation of success in combining the teachings of The 36th Ave. and Feasting on Fruit because both references disclose gluten-free tortillas comprising brown rice flour. Ans. 26. The Examiner determines that it would have been obvious to make the gluten free tortillas of The 36th Ave. and Hillson have no fat as taught in Feasting on Fruit in order to simplify the ingredients present and eliminate fat content for health conscious consumers. Non-Final Act. 10. Appellant argues that Feasting on Flour discloses using brown rice flour and potato flour without olive oil, but that it would not have been obvious to use quinoa flour, brown rice flour, and oat flour—as taught in The 36th Ave.—without olive oil. Appeal Br. 24–25. Appellant argues that Hillson teaches quinoa flour and oat flour are not in the same category as brown rice flour or potato flour (the combination disclosed in Feasting on Fruit), thus it is not predictable that a combination of quinoa flour, oat flour, and brown rice flour will have the same result as a combination of potato flour and brown rice flour in making a tortilla without olive oil. Id. Appellant argues that Hillson discloses potato flour to be a stabilizer, adding Appeal 2020-002788 Application 15/419,474 21 texture and moisture. Reply Br. 10. Appellant argues that one of ordinary skill in the art would not have a reasonable expectation of success in simply removing olive oil from The 36th Ave. composition. We agree with Appellant. “[A] combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. “[T]he ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009). The Examiner fails to demonstrate that the combination of quinoa flour, oat flour, and brown rice flour would work for the intended purpose of providing a tortilla in the absence of olive oil or another fat. We do not sustain the rejection of claim 9 as obvious over The 36th Ave., Hillson, Zhang, and Feasting on Fruit. D. Obviousness of claims 10, 11, 19, and 20 Appellant does not argue claims 10 (depending from claim 1), 11 (depending from claim 10), 19 (depending from claim 12), or 20 (depending from claim 12) separately. Appeal Br. 25. These claims stand or fall with the claims from which they depend. For the reasons discussed regarding claims 1 and 12, supra, we sustain the rejection of claims 10, 11, 19, and 20. Appeal 2020-002788 Application 15/419,474 22 CONCLUSION The Examiner’s decision to reject claims 1–8, 10–13, and 15–21 is affirmed. The Examiner’s decision to reject claim 9 is reversed. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–7, 12, 13, 15– 17, 21 103 The 36th Ave., Hillson, Zhang, King Arthur Flour, Aqua- calc, The Physics Fact 1–7, 12, 13, 15–17, 21 8, 18 103 The 36th Ave., Hillson, Zhang, Schober 8, 18 9 103 The 36th Ave., Hillson, Zhang, Feasting on Fruit 9 10, 11, 19, 20 103 The 36th Ave., Hillson, Zhang, Griebel 10, 11, 19, 20 Overall Outcome 1–8, 10–13, 15–21 9 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2018). AFFIRMED IN PART Copy with citationCopy as parenthetical citation