VALIO LTD

Patent Trials and Appeals Board

Jan 28, 2021

2019006251 (P.T.A.B. Jan. 28, 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.
14/650,217 06/05/2015 Antti HEINO GPK-227-205 7117
23117 7590 01/28/2021
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
COX, AMBER M
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
01/28/2021 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):
PTOMAIL@nixonvan.com
pair_nixon@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTTI HEINO, ULLA HELLE, and MIKA KOPONEN1
____________

Appeal 2019-006251
Application 14/650,217
Technology Center 1700
____________

Before CATHERINE Q. TIMM, GEORGE C. BEST, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–17, 19, 20, and 23–29. We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to methods of producing milk
products, such as an acidified milk base. E.g., Spec. 1:3–5; Claim 1.
Claim 1 is reproduced below from page 21 (Claims Appendix) of the Appeal
Brief:

1 The word “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42.
The Appellant identifies the real party in interest as Valio Ltd. Appeal Br. 3.
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1. A method for producing an acidified milk base, comprising the
steps of:
a) providing a milk-based solution of a milk raw material and an
ideal whey protein solution, which is a microfiltration
permeate obtained from microfiltration of milk,
b) pasteurizing the milk-based solution from step a) at a
temperature from 80°C to 95°C for a period of 5 to 15 minutes
to provide a pasteurized milk-based solution,
c) cooling the pasteurized milk-based solution from step b) to
provide a cooled milk-based solution, and
d) adding a coagulant to the cooled mixture from step c) and
ripening to provide the acidified milk base.
REJECTIONS ON APPEAL2
The claims stand rejected under 35 U.S.C. § 103 as follows:
1. Claims 1–15 and 23–28 over Heino (US 2012/110705 A1,
published Aug. 23, 2012) and Henson (US 3,963,836, issued June 15, 1976).
2. Claims 16, 17, and 29 over Heino and Chandan (Chandan et al.,
Dairy Ingredients for Food Processing, Ch. 13 (20113) (of record)).
3. Claim 19 over Heino, Henson, and Chandan.
4. Claim 20 over Heino, Henson, Chandan, and Tamime (Tamime et
al., Tamime and Robinson’s Yoghurt: Science & Technology (3d ed.)
(20074) (of record)).

2 The Appellant does not challenge the prior art status of any reference relied
on by the Examiner.
3 2011 is the date identified by the Examiner in a Notice of References Cited
dated April 10, 2017. The Appellant does not dispute this date.
4 2007 is the date identified by the Examiner in a Notice of References Cited
dated February 11, 2016. The Appellant does not dispute this date.
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5. Claims 1–12, 14–17, 23–27, and 29 over Heino and Streiff
(US 4,956,186, issued Sept. 11, 1990).
6. Claims 19 and 20 over Heino, Streiff, and Tamime.
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in the Examiner’s rejections.
Accordingly, we affirm the rejections for reasons set forth below, in the
Final Action dated December 14, 2017, and in the Examiner’s Answer.
Rejections 1–4
The Appellant presents arguments for claims 1, 16, and 19. We
address those claims below. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), claims 2–15 and 23–28 will stand or fall with claim 1;
claims 17 and 29 will stand or fall with claim 16; and claim 20 will stand or
fall with claim 19.
Claim 1. The Examiner finds that Heino teaches a method for
making a milk-based whey protein product that is used as a raw material in
the preparation of acidified milk products, and “thus teach[es] an acidified
milk base.” Ans. 3. The Examiner finds that the whey protein component of
Heino’s whey protein product can be produced by microfiltration and
constitutes an “ideal whey protein solution,” as recited by claim 1. Id. The
Examiner finds, however, that Heino does not “disclose the steps involved in
obtaining the acidified milk base” from the whey protein product, i.e., the
pasteurizing, cooling, adding a coagulant, and ripening steps. Id. at 4.
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The Examiner finds that Henson teaches a method for making
acidified milk products such as quark in which, prior to coagulation, milk is
pasteurized at temperatures of 55°C to 80°C for 0.5 to 30 minutes and
subjected to filtration, and that pasteurization “preferably” takes place before
filtration. Id. The Examiner finds that Henson discloses cooling after
pasteurization, followed by “inoculat[ion] with a quark culture lactic acid
starter and a small quantity of rennet,” i.e., addition of a coagulant. Id. at 5.
The Examiner finds that Henson discloses that “the setting time for the curd
to form is usually between 12 and 24 hours,” which finding implicates the
“ripening” step of claim 1. Id. The Examiner finds that, because Henson
teaches only that it is “preferabl[e]” to pasteurize before filtering, Henson
reasonably suggests that filtering could alternatively take place prior to
pasteurization. Id. at 4.
The Examiner concludes that “[i]t would have been obvious . . . to use
the processing conditions” of Henson with “the whey protein product of
Heino . . . because Henson et al. demonstrate that these steps were already
found to be suitable for producing an acidified milk product that is derived
from a protein concentration/retentate at the time of the invention.” Id. at 5.
The Appellant first argues that “Henson teaches that pasteurization is
carried out before the milk is subject to membrane filtration.” Appeal Br. 8
(emphasis in original).
That argument is unpersuasive. Henson teaches that its “milk should
be pasteurized, preferably before the milk is subjected to membrane
filtration.” Henson at 4:19–21 (emphasis added). As the Examiner explains
in the Answer, Heino expressly teaches that its “whey protein product” (i.e.,
the product after filtration) may be “heat treated as [sic] a manner known per
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se, if appropriate.” Ans. 32 (quoting Heino ¶ 36). The Appellant does not
persuasively dispute that pasteurization was a known manner of heat
treatment. In the Reply Brief, although the Appellant continues to argue that
the prior art does not teach or suggest pasteurization after filtration, see
Reply 2, the Appellant fails to acknowledge or address Heino’s
paragraph 36, which—as noted above—the Examiner quotes in support of
the Examiner’s finding that Heino directly teaches filtration of milk products
prior to heat treatment. On this record, given that (1) Henson’s method is
not limited to pasteurization before filtration, Henson at 4:19–21, and
(2) Heino directly suggests heat treatment of its whey protein product after
filtration, Heino ¶ 36, we are not persuaded of reversible error in the
Examiner’s finding that the prior art describes or suggests pasteurization
after filtration. See 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 . . . .”).
The Appellant also argues that “[t]he pending claims facilitate
advantageous features, e.g., fresh taste and soft velvety structure.” Appeal
Br. 12.
That argument is unpersuasive because “any superior property must
be unexpected to be considered as evidence of non-obviousness.” See Pfizer,
Inc. v. Apotex, Inc., 480 F.3d 1348, 1371 (Fed. Cir. 2007) (emphasis in
original). The Appellant has not argued that the alleged “advantageous
features” would have been unexpected. We also note that Heino expressly
describes its product as being “smooth and velvety.” Heino ¶ 12.
Particularly in the absence of any meaningful argument from the Appellant,
it is unclear why those features would have been viewed as advantageous (or
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unexpected) in the claimed products given that similar prior art products
were described as possessing those features.
The Appellant also argues that Henson “does not teach or suggest
pasteurization conditions of 80°C to 95°C for a period of 5 to 15 minutes,”
and that, given the breadth of Henson’s time and temperature disclosures,
“Henson does not direct a person having ordinary skill in the art to use both
a high temperature of 80°C and prolonged heating time.” Appeal Br. 13
(emphases in original). The Appellant argues that, “[b]ased on Henson’s
teachings, if a person having ordinary skill in the art were to use the
temperature of 80°C in the pasteurization, that person would also use a short
duration of half a minute at maximum.” Id. (emphasis in original).
Those arguments are unpersuasive. As an initial matter, we observe
that they are attorney argument unsupported by evidence. See In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a
brief cannot take the place of evidence.”). Henson discloses:
Pasteurization may be carried out for example over a
comparatively long period of about 30 minutes at temperatures
between 55°C and 65°C, or over a substantially shorter period;
for example, half a minute or even less, at high temperatures
between for example 70°C and 80°C, particularly about 75°C.
Henson at 4:19–31. Consistent with the Examiner’s findings, that disclosure
teaches pasteurization at exemplary temperatures of 55–80°C for exemplary
time periods of approximately 0.5 minutes to 30 minutes. The disclosed
temperature range overlaps the claimed temperature range of 80–95°C, and
the disclosed time range fully encompasses the claimed time range of 5–15
minutes. We also observe that Heino teaches “heat treatment at a
temperature range of 65°C to 95°C, for 15 seconds to 10 minutes prior to
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microfiltration.” Heino ¶ 42. “[E]ven a slight overlap in range establishes a
prima facie case of obviousness.” See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003).
Consistent with the Appellant’s argument, Henson’s disclosure does
suggest that pasteurization “may be carried out” at lower temperatures for
longer periods or at higher temperatures for shorter periods, indicating an
inverse relationship between temperature and time. Henson at 4:19–31. The
Appellant provides no persuasive reason to believe, however, that a person
of ordinary skill in the art would have regarded, for example, 5 minutes at
80°C—which falls within the scope of claim 1 and within the scope of
Henson’s disclosure—to be unsuitable. As the Examiner explains in the
Answer, other prior art of record discloses, for example, pasteurization of
similar milk products at 95°C for 5 minutes. See Ans. 34 (citing Heino
¶ 41). In the Reply Brief, the Appellant fails to persuasively address the
Examiner’s findings in that regard. See generally Reply. The record
suggests that a person of ordinary skill in the art would have regarded
pasteurization of milk products at 80°C for 5 minutes to be suitable
pasteurization conditions. On this record, the Appellant has not persuasively
identified reversible error in the Examiner’s determination that the recited
pasteurization temperatures and times are taught or suggested by the prior
art. See Jung, 637 F.3d at 1365.
We affirm the Examiner’s rejection of claim 1.
Claims 16 and 19. Claims 16 and 19 recite quark products having,
inter alia, a “total solids” content of 15% to 27%. See Appeal Br. 23–24
(Claims Appendix).
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The Examiner finds that Heino fails to expressly disclose a quark
product having a solids content of 15 to 27%. Ans. 11. The Examiner finds,
however, that Chandan teaches quark products made from pasteurized milk;
that Chandan’s quark products desirably have a soft body, smooth texture,
and good spreadability; and that Chandan describes using ultrafiltration to
“increase[] the total solids of the final quark to 17% to 19%.” Id. The
Examiner finds that, in view of the similarities between the quark products
of Heino and Chandan, “one of ordinary skill in the art would have expected
the total solids of the quark of Heino et al. in view of Chandan et al. to be
within the claimed range.” Id. (analysis of claim 16); see also id. at 13–14
(same analysis as to claim 19). The Examiner also finds that, because
Chandan teaches methods of making quark similar to Heino’s, and Chandan
discloses that total solids content of 17 to 19% yield desirable quark
products, “a skilled artisan would have been motivated to produce quark
comprising the whey protein product of Heino et al. in view of the teachings
of Chandan.” Id. at 35–36.
The Appellant argues that Heino does not disclose that its quark is
subjected to ultrafiltration, but, rather, that Heino subjects “milk raw
material” to ultrafiltration to produce a whey protein as a precursor to a
quark product. Appeal Br. 15. The Appellant argues that, “based on the
teachings of Heino, a person having ordinary skill in the art would not have
expected that the total solids of quark would or could be within the claimed
range.” Appeal Br. 15.
That argument is not persuasive of reversible error in the Examiner’s
rejection. To the extent that the Examiner’s rationale relies on inherency,
see Ans. 11 (“one of ordinary skill in the art would have expected the total
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solids of the quark of Heino et al. in view of Chandan et al. to be within the
claimed range”), we agree with the Appellant that the Examiner has not
adequately established that Heino’s quarks necessarily and inevitably would
have possessed a total solids content falling within the claimed range.
However, as set forth above, the Examiner also finds that a person of
ordinary skill in the art would have been motivated by Chandan to achieve a
total solids content in Heino of 17–19% in view of Chandan’s disclosure that
such a total solids content produces desirable quarks. See Ans. 35–36. In
particular, we observe that Heino does not appear to disclose what total
solids content is desirable in a quark, and that Chandan discloses that quarks
having total solids content of 17–19% have desirable properties. The
Examiner’s proposed combination relies on the use of a known element (17–
19% total solids content) according to its established function to achieve
predictable results (quarks with desirable properties). Such combinations do
not typically result in nonobvious subject matter. See KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“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.”). The Appellant
has not argued that it would have been beyond the ordinary level of skill in
the art to achieve such a solids content in the quark of the combined prior
art, either using Chandan’s ultrafiltration method or other methods known in
the art.
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We are not persuaded of reversible error in the Examiner’s rejections
of claims 16 and 19 based on the recited total solids content ranges of those
claims. We affirm the Examiner’s rejection of claims 16 and 19.
Rejections 5 and 6
The Appellant presents arguments for claims 1, 16, and 19. We
address those claims below. Consistent with the provisions of 37 C.F.R.
§ 41.37(c)(1)(iv), claims 2–12, 14, 15, and 23–27 will stand or fall with
claim 1; and claim 17 and 29 will stand or fall with claim 16.
Claim 1. The Examiner relies on Heino as set forth above and relies
on Streiff essentially as a substitute for Henson; i.e., as teaching or
suggesting “the steps involved in obtaining the acidified milk base
comprising pasteurization, cooling, adding a coagulant, and ripening.”
Ans. 16–17. Of particular relevance to the issues raised by the Appellant,
the Examiner finds that Streiff teaches preferred pasteurization conditions of
82.2°C–85°C for 30 minutes. Id. at 17. The Examiner acknowledges that
Streiff’s pasteurization time is “slightly outside of the claimed time range,”
but the Examiner finds that Streiff’s description of its time period as
preferred “suggests that the pasteurization can be performed for other
periods of time.” Id. at 18. The Examiner also finds that Heino discloses
pasteurization at 95°C for 5 minutes, and determines that “it would have
been well within the skill level of one of ordinary skill in the art to heat the
milk-based solution of Heino . . . at a time and temperature that are sufficient
to pasteurize the mixture.” Id. In view of those and other findings less
relevant to the issues on appeal, the Examiner concludes that the subject
matter of claim 1 would have been obvious in view of Heino and Streiff.
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The Appellant argues that a person of ordinary skill “would not
believe that [Streiff’s time of] 15 minutes is only ‘slightly’ different from 30
minutes,” and that the pasteurization conditions recited by claim 15 “would
not have been obvious from the teachings of Streiff.” Appeal Br. 17–18.
The Appellant argues that “Heino does not remedy the deficiencies of
Streiff.” Id. at 18.
Those arguments are not persuasive of reversible error in the
rejection. Streiff is not limited to pasteurization times of 30 minutes; on the
contrary, Streiff expressly teaches that “[a]ny conventional pasteurization
technique, process or method is operable in the present invention provided
that charring and other off-flavor characteristics are avoided.” Streiff at
7:53–56. The prior art shows that pasteurization times and temperatures
overlapping those recited by claim 1 were known in the art as suitable for
achieving pasteurization of similar milk-based products. E.g., Heino ¶¶ 41
(disclosing 95°C for 5 minutes), 42 (disclosing “heat treatment at a
temperature range of 65°C to 95°C, for 15 seconds to 10 minutes”). Given
that the Examiner’s proposal is a reduction of Streiff’s recited time period of
30 minutes, which would reduce the probability of charring or other off-
flavor characteristics that Streiff describes as undesirable, see Streiff at
7:53–56, we agree with the Examiner that a person of ordinary skill in the
art, through the use of only ordinary creativity, would have understood
Streiff as suggesting that other known times and temperatures, such as those
of Heino, are suitable for Streiff’s process. The Appellant has not attributed
criticality or unexpected results to its recited pasteurization time. Cf. In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“Normally, it is to be expected that
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a change in temperature, or in concentration, or in both, would be an
unpatentable modification.”).
Thus, we are not persuaded of reversible error in the Examiner’s
rejection of claim 1.
Claims 16 and 19. The Examiner finds that Streiff “disclose[s] a
process wherein the skim milk is concentrated by the ultrafiltration process
to about 26–28% total solids. In addition, Streiff . . . disclose[s] that water
can be added to the UF retentate in amounts sufficient to achieve any desired
total solids level.” Ans. 23. The Examiner determines that a person of
ordinary skill “would have reasonably looked to Streiff . . . to modify the
total solids content of the acidified milk product as taught by Heino . . . so
that it is a more desirable product.” Id. The Examiner also determines that
Streiff teaches optimization of total solids content through routine
experimentation to achieve desired product characteristics, and that it would
have been obvious to optimize Heino’s total solids “through routine
experimentation in order to obtain a desirable acidified milk product such as
quark.” Id. at 24.
The Appellant argues that, because Streiff teaches a “preferred level
of solids is from 8.25 to 11.0%,” a person of ordinary skill in the art
practicing Heino would have been motivated to achieve 8.25–11.0% total
solids, which falls beyond the scope of claim 16. Appeal Br. 18–19.
That argument is not persuasive of reversible error. Streiff teaches
that, before dilution with water, its skim milk product is “concentrated to
about 26–36% and preferably 26–28% total solids.” Streiff at 6:44–45.
Those ranges overlap the range of claim 16.
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Streiff teaches that “[w]ater can be added in amounts sufficient to
achieve any desired total solids level, but a preferred total solids level is
from about 8.25 to 11.0 percent on a weight basis.” Id. at 6:47–50
(emphases added). That disclosure teaches or suggests at least two things.
First, that addition of water is optional (“can be added”), and, if not added,
the total solids content would be in the 26–36% range. See id. Second, it
expressly states that “any desired total solids level” may be achieved, and
clearly labels the range of “about 8.25 to 11.0” as “preferred.” Id. Given
that the Appellant has not persuasively argued that controlling total solids
content of a quark is beyond the ordinary level of skill in the art, and given
that total solids content ranges overlapping the claimed range were known in
the art as suitable for similar milk products, e.g., Streiff at 6:44–45; Chandan
at 347 (teaching quark with total solids of 17–19% has “smooth texture”),
we are not persuaded of reversible error in the Examiner’s determination that
a person of ordinary skill would have been capable of, and had reason to,
optimize total solids content to any desirable level, including levels that
overlap those of claims 16 and 19. Cf. Aller, 220 F.2d at 456 (“Normally, it
is to be expected that a change . . . in concentration . . . would be an
unpatentable modification.”).
We affirm the Examiner’s rejection.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§ References Affirmed Reversed
1–15, 23–28 103(a) Heino, Henson 1–15, 23–28
16, 17, 29 103(a) Heino, Chandan 16, 17, 29
19 103(a) Heino, Henson, Chandan 19
20 103(a) Heino, Henson, Chandan, Tamime 20
1–12, 14–17,
23–27, 29 103(a) Heino, Streiff
1–12, 14–17,
23–27, 29
19, 20 103(a) Heino, Streiff, Tamime 19, 20
Overall
Outcome
1–17, 19, 20,
23–29
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED