Ex Parte Brooker et alDownload PDFPatent Trial and Appeal BoardApr 26, 201310525189 (P.T.A.B. Apr. 26, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/525,189 11/07/2005 Brian Edward Brooker M02B148 3687 20411 7590 04/26/2013 The BOC Group, Inc. 575 MOUNTAIN AVENUE MURRAY HILL, NJ 07974-2082 EXAMINER BEKKER, KELLY JO ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 04/26/2013 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte BRIAN EDWARD BROOKER AND RICHARD IVOR TOMLIN ____________________ Appeal 2011-007533 Application 10/525,189 Technology Center 1700 ____________________ Before RICHARD E. SCHAFER, TERRY J. OWENS and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges. SCHAFER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-007533 Application 10/525,189 2 Brian Edward Brooker and Richard Ivor Tomlin (Applicant) appeals from an Examiner’s decision rejecting Claims 22-39 and 41. 35 U.S.C. §§ 6(b) and 134(a). We affirm. The Claimed Subject Matter Applicant’s invention is directed to an improved process for making ice cream. Applicant’s method uses the same general steps conventionally used in making ice cream: (1) blending selected ingredients, including edible fat, to form a dispersion and (2) gasifying and freezing the dispersion. Applicant’s improved method substitutes cryogenically precrystallized particles of edible fat for the uncrystallized liquid fat traditionally included in the dispersion. Spec. 2:13-18. Applicant’s process must also be carried out “without [the blend] being subjected to homogenization or ageing.” The use of cryogenically precrystallized fat allows for the elimination of homogenization and aging steps. Id. at 2:20-24. Claim 23 is representative: 23. A method of making ice cream, comprising blending in the presence of at least one emulsifier an aqueous ice cream precursor phase with precrystallised particles of edible fat which each contain a multiplicity of individual crystals so as to form a dispersion, and gasifying and freezing the dispersion so as to form an ice cream, in which the particles of edible fat are precrystallised cryogenically, wherein the dispersion is gasified and frozen without being subjected to homogenisation or ageing. Br. 18 (Claims Appendix). Rejections In the Answer the Examiner maintained the following rejections: Appeal 2011-007533 Application 10/525,189 3 1. Claims 23-33, 37, 39, and 41 under 35 U.S.C. § 103(a) over the combined teachings of Delany1 and Brooker2. 2. Claims 34-36 and 38 under 35 U.S.C. § 103(a) over the combined teachings of Delany, Brooker and Jonas.3 3. Claim 41 under 35 U.S.C. § 112, second paragraph, as indefinite. DISCUSSION The Prior Art Rejections I. As an initial matter, we observe that Applicant does not present separate arguments specifically directed to the subject matter of the dependent Claims 24- 33, 37, 39, and 41 rejected over the combination of Delaney and Brooker. Br. 15. As to the subject matter of dependent Claims 34-36 and 38, rejected over the combined teachings of Delaney, Brooker and Jonas, Applicant relies on the arguments made against the rejection of Claim 23. Id. at 15-16. We choose Claim 23 as the basis for deciding this appeal. 37 C.F.R. § 41.37(c)(1)(vii). II. The Delaney reference, which Applicant characterizes as teaching the traditional method of making ice cream (Br. 11, 2nd full paragraph), discloses blending the aqueous ice cream precursor ingredients with liquid (i.e., uncrystallized) fats. Delaney 9:26-30. The preferred fats are hydrogenated vegetable oils. Id. at 9:2-5. Delaney teaches homogenizing the mixture to reduce the size of the fat globules and form an oil-in-water emulsion. Id. at 9:30-32. Homogenizing reduces the emulsion particle size to 0.2 to 1.5 μm, and preferably 1 (EP 0147483). 2 (US 2001/0038872 A1). 3 (US 4,012,533). Appeal 2011-007533 Application 10/525,189 4 to 0.2 to 0.5 μm. Id. at 10: 33-36. Delaney notes that small fat particle size is important in achieving the improved shelf life. Id. at 11:1-5. The homogenized emulsion is then aged to crystallize the fat globules. Id. at 5:30-32. The homogenized and crystallized fat particles are retained in the subsequent freezing and aeration of the mixture. Id. at 12:9-14. The freezing and aeration take place in a rotating cylinder equipped with scraper blades and a whipping mechanism. Id. at 13:29-32. The Examiner found that Delaney teaches the process of Claim 23 except for blending of cryogenically precrystallized edible fat with the aqueous ice cream precursor mixture and gasifying and then freezing the mixture without a homogenization or aging step. Ans. 5. Applicant has not challenged those findings. The Examiner relied on Brooker as suggesting the substitution of cryogenically precrystallized hydrogenated fat for the liquid fat used by Delaney and for the elimination of the homogenization and aging steps. Id. at 6-9. Brooker teaches a method for making improved food products using hydrogenated fat in the form of cryogenically crystallized particles. Brooker ¶¶ 0010 and 0018. Using Applicant’s terminology Brooker teaches the incorporation of “precrystalli[z]ed particles of edible fat.” The cryogenic crystallization is said to produce fats having a crystal size of 0.5 μm or less. Id. at ¶ 0017. Food products made with the crystallized fat particles may be packaged and sold without waiting for the fats to crystallize which is said to be typical of traditional scraped surface processes. Id. at ¶ 0018. Thus, Brooker teaches there is no need to store, i.e., age, the food product to allow the fats to crystallize. Id. at ¶ 0020. Brooker also teaches that the use of precrystallized fat allows a reduction in the amount of hydrogenated fat in Appeal 2011-007533 Application 10/525,189 5 the final food product without loss of desired food properties. This result is said to provide significant cost and health benefits. Id. at ¶¶ 0021-26. The Examiner concluded that “it would have been obvious . . . to use the precrystallized particles of fat as taught by Brooker . . . in the ice cream taught by Delany.” Ans. 6. The Examiner also concluded that it would have been obvious to process the ice cream without homogenization and aging. Id. at 7. III. We have carefully considered Applicant’s arguments in light of the record and do not see reversible error in the Examiner’s conclusions. A central theme cuts across Applicant’s arguments --that one skilled in the art would recognize from Delaney’s teachings that the traditional homogenization and aging steps are critical and that it is nearly impossible to alter the traditional process. Br. 11. Based upon the alleged criticality, Applicant argues that one skilled in the art would not have a reasonable expectation of success that Delaney’s homogenization and aging steps could be eliminated, that the elimination is the result of the use of improper hindsight, and that Delaney teaches away from using the technique described by Brooker. Id. at 11-15. We find no merit in Applicant’s criticality argument. Delaney’s statements on criticality must be considered in the context of Delaney’s specific process that uses uncrystallized fats. Because liquid fats are used, Delaney’s process requires both homogenization to obtain the proper fat particle size and aging to crystallize the fats. Delaney 5:23-32. Brooker teaches “an improved method for forming . . . food products which can generally overcome the difficulties . . . with existing methods.” Brooker ¶ 0009. Those difficulties include obtaining the necessary fat crystalline structure along with delays and costs attendant in obtaining the appropriate crystalline structure. Id. at ¶ 0004. Delaney uses homogenization and Appeal 2011-007533 Application 10/525,189 6 aging to obtain the desired fat characteristics. Delaney 5:30-32 and 9:30-32. Those steps, critical to Delaney’s process, are the very “difficulties” said to be overcome by using precrystallized fat. Brooker ¶¶ 0010-11 and 0020. Applicant’s argument simply ignores Brooker’s teachings. The use of precrystallized fat is said to provide a number of benefits including small fat crystal size, elimination of delays while the fat crystalizes, and using less fat content while maintaining desired food properties. Id. at ¶ 0020. The person having ordinary skill in the art would have been motivated to use precrystallized fats to obtain the benefits taught by Brooker. In view of these benefits, it would have been at least obvious to try Brooker’s precrystallized fats as a substitute for the liquid hydrogenated fats preferred by Delaney. One having ordinary skill in the art would also have recognized that in using precrystallized fats, the homogenization step, which reduces the size of the fat particles, and the aging step, which crystallizes the fats, would be unnecessary. Brooker’s cryogenically precrystallized fat particles already have those characteristics. Thus, Brooker teaches that the precrystallized fats have the small crystal size achieved by homogenization. Compare Delaney 10: 33-36 with Brooker ¶ 0017. Brooker also teaches that using precrystallized fats eliminates the necessity of aging to form crystallized fats. Id. at ¶ 0018. Thus, the substitution of precrystallized fats and the elimination of the homogenization and aging steps would not have been unobvious. We affirm the rejection of Claim 23 and dependent Claims 23-39 and 41. Indefiniteness of Claim 41 The Examiner concluded that the requirement of Claim 41 that “the dispersion is provided at below ambient temperature for gasification and freezing” renders the subject matter of that claim indefinite. Answer 3-4. Appeal 2011-007533 Application 10/525,189 7 Upon consideration of the evidence on this record and Applicant’s arguments, we hold that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Claim 41is indefinite. We sustain the rejection based on the findings of fact, conclusions of law, and rebuttals to arguments expressed by the Examiner at pages 3-4 and 10-11 of the Answer. AFFIRMED bar Copy with citationCopy as parenthetical citation