General Mills, Inc.

Patent Trials and Appeals Board

May 26, 2021

2020002788 (P.T.A.B. May. 26, 2021)

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