Ex Parte Jackson et al

Patent Trial and Appeal Board

Nov 14, 2013

11425880 (P.T.A.B. Nov. 14, 2013)

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.
11/425,880 06/22/2006 Philip Henry Jackson 06-503 (29776-0011) 9965
62488 7590 11/14/2013
CP Kelco US, INC
c/o Pete Pappas, Sutherland, Asbill & Brennan LLP
999 Peachtree Street, NE
SUITE 2300
ATLANTA, GA 30309-3996
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
11/14/2013 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 PHILIP HENRY JACKSON, HO SHIONG BOCK JOHN,
MICHELLE NICOLE KAMIERSKI, CHIENKUO RONNIE YUAN, and
GOH HWEE KWANG
____________
Appeal 2012-010879
Application 11/425,880
Technology Center 1700
____________

Before CHUNG K. PAK, TERRY J. OWENS, and
KAREN M. HASTINGS, Administrative Patent Judges.

DECISION ON APPEAL

Appeal 2012-010879
Application 11/425,880

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Appellants appeal under 35 U.S.C. § 134 from the Examiner’s final
rejection of claims 1-6, 8-13, 15, and 28-31. An oral hearing was conducted
on November 5, 2013. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
Appellants’ arguments in their briefs are directed only to independent
claim 1:
1. An acidified protein beverage consisting essentially
of:
a protein base;
a particulate; and
an effective amount of a cellulose gum and an effective
amount of a gellan gum for stabilizing the protein base and
suspending the particulate;
wherein the cellulose gum is present in the acidified
protein beverage in the range from about 0.2% to about 1.0%
by weight and the gellan gum is present in the acidified protein
beverage in an amount of at least about 0.025% by weight; and
wherein the elastic modulus of the acidified protein
beverage is greater than about 0.10 dynes/cm2.
The Examiner maintains, and Appellants appeal1, the rejection of
claims 1-6, 8-13, 15, and 28-31 under 35 U.S.C. § 103(a) as obvious over

1 There is no rejection under 35 U.S.C. § 112, first paragraph, on appeal,
thus Appellants’ discussion of that rejection is of no moment in this appeal
(App. Br. 14 (Appellants’ state that the claims “should have been rejected
under 35 U.S.C. §112, first paragraph” and then present a response to a
rejection that is not on appeal)).
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Application 11/425,880

3
Dulebohn2 in view of Clark3, with evidence provided by Svensson4, Garcia5,
Sardi6, and Heems7.
ANALYSIS
Upon consideration of the evidence on this record and each of
Appellants’ contentions, we find that the preponderance of evidence on this
record supports the Examiner’s conclusion that the subject matter of
Appellants’ independent claim 1 is unpatentable over the applied prior art.
We sustain the above rejection based on the findings of fact, conclusions of
law, and rebuttals to arguments expressed by the Examiner in the Answer.
We add the following for emphasis.
The Examiner’s determination that essential components do not need
to be removed from the invention of Dulebohn (as Appellants’ contend at
App. Br. 7) since the recited components of the beverage of claim 1
encompass these components (Ans. 9, 13) is reasonable. Appellants have

2 WO 02/49459 A1 published June 27, 2002.
3 U.S. 5,376,396 issued Dec. 27, 1994.
4 Malin Svensson et al., Metabolically Improved Exopolysaccharide
Production by Streptococcus Thermophilus and Its Influence on the
Rheological Properties of Fermented Milk, 71(10) APPLIED & ENVTL.
MICROBIOLOGY 6398 (2005), available at
http://www.ncbi.nlm.nih.gov/pmc/articles/PMC1265931/.
5 M Concepción García et al., Chemical Characterization of Commercial
Soybean Products, 62 FOOD CHEMISTRY 325-31 (1998).
6 Bill Sardi, They’re Taking the Joy Out of Soy, KNOWLEDGE OF HEALTH,
INC. (2000), http://web.archive.org/web/2001
01281708/http://www.tldp.com/issue/11_00/joysoy.htm.
7 Dany Heems et al., Fully Automated Precolumn Derivatization, On-line
Dialysis and High-Performance Liquid Chromatographic Analysis of Amino
Acids in Food, Beverages and Feedstuff, 798 J. CHROMATOGRAPHY A 9-17
(1998).
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Application 11/425,880

4
not presented any persuasive technical reasoning or evidence on this record
to the contrary.
Furthermore, if a technique has been used to improve one device or
composition, and a person of ordinary skill in the art would recognize that it
would improve similar devices or compositions in the same way, using the
technique is obvious unless its actual application is beyond that person’s
skill. KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007). Appellants
have not adduced any persuasive technical reasoning or evidence in response
to the Examiner’s reasonable determination that the addition of a stabilizing
blend composition of cellulose gum and gellan gum in the ratios exemplified
in Clark will likewise improve the stability of the acidified protein beverage
of Dulebohn, especially as Dulebohn teaches that both of these gums may be
used alone or in a mixture to stabilize its beverage (see, e.g., generally Ans.,
App. Br., Reply Br.). “Obviousness does not require absolute predictability
of success . . . all that is required is a reasonable expectation of success.” In
re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing
In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)).
Appellants rely upon four Declarations (see Evidence Appd’x), each
submitted by one of the inventors named in this application, along with
Table 11 of the Specification, to establish that it was unexpected for this
combination of gums to have the necessary modulus of elasticity to stabilize
an acidified beverage. The burden of showing unexpected results rests on
the person who asserts them by establishing that the difference between the
claimed invention and the closest prior art was an unexpected difference.
See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, it is well
established that “any superior property must be unexpected to be considered
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Application 11/425,880

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as evidence of non-obviousness.” Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (2007). The Examiner’s position that the Specification Table 11 does
not provide any evidence that this result was unexpected in view of
Dulebohn’s and Clark’s explicit teachings of using a mixture of these two
gums as a beverage stabilizer is well founded (e.g., Ans. 15). Appellants do
not provide any objective evidence that the results are actually unexpected,
especially in light of Clark which describes the known use of this specific
combination of gums for stabilizing beverages.
Thus, the Examiner’s position that the Declarations and Specification
Table 11 relied upon fails to evince unexpected results from the recited
combination of components is supported by a preponderance of the
evidence.
The decision of the Examiner is affirmed.
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
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