Ex Parte Brinker et al

Patent Trial and Appeal Board

Oct 25, 2018

12597713 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/597,713 01/19/2010
466 7590
YOUNG & THOMPSON
209 Madison Street
Suite 500
Alexandria, VA 22314
10/29/2018
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Eva-Maria Brinker
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2001-1730 1873
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
10/29/2018 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):
DocketingDept@young-thompson.com
yandtpair@firs ttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EVA-MARIA BRINKER and KERSTIN SCHMIDT
Appeal 2018-001192
Application 12/597, 713 1
Technology Center 1700
Before BRADLEY R. GARRIS, MONTE T. SQUIRE, and BRIAND.
RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 20, 22, 24--30, and 34--36. We have jurisdiction.
35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is CSM Nederland B.V.
Appeal Br. 2.
Appeal 2018-001192
Application 12/597,713
STATEMENT OF THE CASE2
Appellants describe the invention as relating to a sweetened dough
that utilizes non-fermentable carbohydrates so that it can be stored for
several hours without dough collapse due to overproofing (i.e., yeast
producing too much gas). Spec. 1:7-12; 2:6-11. Claim 20, reproduced
below with formatting added for readability and emphases added to certain
key recitations, is illustrative of the claimed subject matter:
20. A process of preparing a yeast-leavened sweetened dough
using non-fermentable carbohydrates instead of fermentable sugars,
said dough having a sweetness that is equivalent to the sweetness of a
dough containing 5-20% sucrose by weight of flour,
said yeast-leavened sweetened dough comprising:
40-80 wt% of flour;
25-50 wt% of water;
3-25wt% of nonfermentable carbohydrates selected from
the group consisting of lactose, arabinose, cellobiose,
trehalose, xylose, sugar alcohols and combinations
thereof;
and
0.5-5 wt.% of yeast;
said process comprising the steps of combining a dry particulate
mix with an aqueous composition and optionally other bakery
ingredients to form a flour- and yeast-containing dough,
followed by proofing the dough so as to obtain the yeast-
leavened dough, said mix comprising:
up to 90 wt.% of non-fermentable carbohydrates selected
from the group consisting oflactose, arabinose, cellobiose,
2 In this Decision, we refer to the Final Office Action dated Dec. 7, 2016
("Final Act."), the Appeal Brief filed June 3 0, 2017 ("Appeal Br."), the
Examiner's Answer dated September 21, 2017 ("Ans."), and the Reply Brief
filed November 14, 2017 ("Reply Br.").
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Appeal 2018-001192
Application 12/597,713
trehalose, xylose, sugar alcohols and combinations
thereof, including at least 3 wt.% of a nonfermentable
sugar alcohol and at least 3 wt.% of nonfermentable
reducing sugars selected from the group consisting of
lactose, arabinose, cellobiose, xylose and combinations
thereof, the non-fermentable carbohydrates being
added instead of fermentable sugars to obtain the
yeast-leavened dough; and
two or more bakery ingredients selected from the group
consisting of:
10-90 wt.% of viable yeast;
10-50 wt.% ofbaking powder;
5-90 wt.% of emulsifier;
3-50 wt.% of ascorbic acid; and
0.0001-1 wt.% ofbakery enzyme;
all of these percentages being calculated on the combined
amount of these two to five bakery ingredients.
Appeal Br. 14--15 (Claims App.).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Van Ejik
Inoue et al.
("Inoue")
Lanner et al.
("Lann er")
Degre et al.
("Degre")
us 5,385,742
US 7,815,952 B2
US 2001/0053401 Al
US 2007 /0092602 Al
3
Jan.31, 1995
Oct. 19, 2010
Dec. 20, 2001
Apr. 26, 2007
Appeal 2018-001192
Application 12/597,713
REJECTIONS
On appeal, the Examiner maintains the rejection of claims 20, 22, 24--
30, and 34--36 under 35 U.S.C. § 103 as unpatentable over Inoue in view of
Lanner, Van Eijk, and Degre. Ans. 3.
ANALYSIS
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) ("[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability."). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. In re Fine,
837 F.2d 1071, 1074 (Fed. Cir. 1988); KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 417 (2007).
Here, the Examiner finds that Inoue teaches a process for producing a
yeast-based fermented dough and teaches most recitations of claim 20. Ans.
3--4. The Examiner finds that Inoue does not disclose specifically using
non-fermentable carbohydrates instead of fermentable sugars. Id. at 4. The
Examiner determines, however, that "Inoue et al teach that fermentable
saccharides have a negative effect[] on the baked products formed and their
use is not practical as they deteriorate[] working efficiency. Thus, it would
have been readily obvious to one skilled in the art to use just less-
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Application 12/597,713
fermentable saccharides instead of the easily fennentable saccharides." Id.
The Examiner relies on secondary references Van Eijk, Degre, and Lanner
only "to show other known non-fermentable carbohydrates that can be used
in the Inoue dough." Id. at 8-9.
Appellants argue that Inoue does not teach or suggest all recitations of
claim 20 because Inoue teaches using less-fermentable saccharides along
with easily-fermentable saccharides. See, e.g., Appeal Br. 12-13. Because
the Appellants and the Examiner interpret claim 20 differently (Reply Br. 1-
2; Ans. 7, 11 ), we begin our assessment of Appellants' argument with claim
construction.
During examination, we construe claims based on the broadest
reasonable interpretation consistent with the specification. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); see also Cuozzo
Speed Tech., LLC v. Lee, _U.S._, 136 S. Ct. 2131, 2145 (2016) (noting
that the Patent Office has used the broadest reasonable construction standard
for more than 100 years). Here, claim 20 recites a process of "preparing a
yeast-leavened sweetened dough using non-fermentable carbohydrates
instead of fermentable sugars." Appeal Br. 14 (Claims App.). The
Specification defines "sweetened dough" as dough that "contains added
sweetener, e.g., a fermentable sugar such a sucrose, a non-fermentable sugar
such as lactose and/or a sugar alcohol such as a sorbitol." Spec. 5:12-15.
Thus, claim 20 requires that preparation of a sweetened dough that contains
a non-fermentable sugar such as lactose. The lactose is used instead of (i.e.,
in place of) fermentable sugars. The recitation of "sugars" (plural) rather
than sugar (singular) indicates that all fermentable sugars are replaced.
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Application 12/597,713
Thus, the recited dough preparation process excludes inclusion of any
fermentable sugar.
This claim construction is further supported by claim 20 reciting a
mix that comprises "non-fermentable carbohydrates being added instead of
fermentable sugars." It is also supported by Appellants' Specification
teaching embodiments that exclude fermentable sugars. See, e.g., Spec. 3:
25-27 ("By using non-fermentable carboyhydrates instead of fermentable
sugars ... the rate of carbon dioxide production may be reduced"), 4: 16-31
(teaching a bakery product having as little as 0% fermentable sugars), 8:6-9
(referring to "( optional) fermentable sugars").
Applying this claim construction to the evidence before us, we
determine that the Examiner has not adequately established that Inoue
teaches or suggests preparation of a dough without inclusion of any
fermentable sugar. The Examiner asserts that it would have been obvious to
exclude all fermentable sugar because Inoue teaches that fermentable
saccharides have negative effects on Inoue's baked products. Ans. 3--4; see
also, e.g., Inoue 4:44--50 (stating that "in the case of using rice flour as a
major material, the use of easily-ferementable saccharides only deteriorates
working efficiency .... "). Appellants, however, correctly explain that Inoue
also teaches that easily-fermentable saccharides are "essential" to obtaining
a bakery product with a "satisfactory bulge" and teaches use of less-
fermentable saccharides "along with easily fermentable saccharides."
Appeal Br. 8-9 (citing Inoue 4:39--42, 50-56); see also Inoue 26:59-7
( explaining that Inoue' s experimental results establish that satisfactory
products "can be produced by using rice flour along with gluten, easily-
fermentable saccharide and less fermentable saccharide").
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The Examiner also finds that the Experiments and Examples of Inoue
exemplify that easily-fermentable saccharides are not essential. Final Act.
5-7 (referring to Experiments 4 and 5 and "Examples 5, 6"); Ans. 9-10
(referring to Experiments 4 and 5 and Examples 4--5). The preponderance of
the evidence does not support this finding. The Experiments referenced by
the Examiner (Experiments 4 and 5) include maltose (Inoue 17:50-22:12),
and maltose is a fermentable carbohydrate in the context of claim 20 (see,
e.g., Spec. 4:21-22 (listing maltose as a fermentable sugar)). 3 Moreover,
Experiments 4 and 5 each include sucrose as well because they make use of
the method of Experiments 1 and 2 except for using additional sweeteners in
combination with maltose, and Experiments 1 and 2 make use of sucrose.
Inoue 11: 6-21 ( explaining that experiment 1 includes "3. 5 parts by weight
of sucrose as an easily-fermentable saccharide"), 12:44--52 ( explaining that
Experiment 2 uses the same composition and method as Experiment 1
except for adding maltose), 17:55-67 (explaining that Experiment 4 uses the
same method as Experiment 2 except replacing half of the maltose with
maltitol), 19:63-20-34 (explaining that Experiment 5 uses same method as
Experiment 2 but uses maltose in combination with other sweeteners); see
also Appeal Br. 9-11.
With respect to the Examples referenced by the Examiner (Inoue
Examples 4, 5, and 6), Appellants persuasively explain that each of these
3 To the extent the Examiner reads our prior opinion differently, the
Examiner reads the opinion too broadly; we did not previously hold that
every one of Inoue' s less-fermentable saccharides would necessarily be, in
the context of Appellants' Specification, a non-fermentable carbohydrate.
Compare Ans. 10 with April, 29, 2016, Decision on Appeal 2014-008945,
5---6.
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Application 12/597,713
examples refer to flour pre-mixes rather than dough. Ans. 11; see also Inoue
28:40-30:18 (describing Examples 4---6). Reading Inoue as a whole, a
person of skill in the art would understand that using the pre-mixes to form
dough would involve adding other ingredients such as sucrose, salt, butter,
water, and/or yeast. See, e.g., Inoue 11 :6-20 (listing dough ingredients for
Experiment 1); Inoue 30:22-35:25 (describing dough product Examples 7-
14 that all include sucrose). Thus, the Examiner has not adequately
explained how either the Experiments or the Examples of Inoue suggest
preparing a dough product that lacks fermentable sugars.
Because the Examiner has not identified sufficient evidence
supporting that a person of ordinary skill in the art would have had reason to
exclude fermentable sugars when preparing yeast-leavened sweetened
dough, we do not sustain the Examiner's rejection of claim 20. We also do
not sustain the rejection of claims 22, 24--29, and 36 because each of those
claims depend from claim 20.
Claim 30 recites "A sweetened, yeast-leavened dough that is obtained
by the process according to claim 20, wherein the dough comprises 3-75%
of said dry particulate mix." Appeal Br. 16 (Claims App.). For the reasons
above, we also do not sustain the rejection of claim 30. We do not sustain
the rejection of claims 34 and 35 because each of those claims depend from
claim 30.
DECISION
For the above reasons, we reverse the Examiner's rejections of
claims 20, 22, 24--30, and 34--36.
REVERSED
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