Ex Parte MURRAY et al

Patent Trial and Appeal Board

Jan 22, 2016

13069040 (P.T.A.B. Jan. 22, 2016)

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.
13/069,040 03/22/2011 Richard Durno MURRAY CFLAY.80635 9374
110933 7590 01/22/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
01/22/2016 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 RICHARD DURNO MURRAY and KIM WOOLLETT
____________

Appeal 2014-003816
Application 13/069,040
Technology Center 1700
____________

Before CHUNG K. PAK, JEFFERY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1 through 28. We have jurisdiction under 35 U.S.C. § 6(b).
Appellants’ invention is generally directed to a salt composition
comprising sodium chloride and at least one edible salt other than sodium
chloride, a method of making the salt composition, a food product
comprising the salt composition, and a method of salting a food product with
the salt composition. App. Br. 3–4. Claim 1 is reproduced below:
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1. A salt composition for application to a food product, said
composition comprising:
a plurality of particles of sodium chloride having a bi-
modal particle size distribution with a first peak at a first
particle size and a second peak at a second particle size,
wherein said first particle size is smaller than said second
particle size; and
a plurality of particles of at least one edible salt other
than sodium chloride, having a particle size distribution
comprising a third peak at a third particle size, wherein said
third particle size is greater than said first particle size and
smaller than said second particle size.

App. Br. 14 (Claims Appendix).
Appellants (see App. Br., generally) request review of the following
rejections from the Examiner’s Final Office Action:1
Claims 1–28 under 35 U.S.C. § 103(a) as unpatentable over David
Kilcast et al., Reducing Salt in Foods Practical Strategies 201–220 (eds.,
2007) (“Kilcast 2007”).
Claims 1–28 under 35 U.S.C. § 103(a) as unpatentable over David
Kilcast, Lowering Sodium, Prepared Foods (January 2008),
http://www.preparedfoods.com (“Kilcast 2008”).
Claims 1–28 under 35 U.S.C. § 103(a) as unpatentable over Jensen
(US 2008/0003344 A1, published January 3, 2008).
OPINION

1 Appellants argue claims 1–28 together. See Appeal Brief, generally. We
select independent claim 1 as representative of the rejected claims, which
will stand or fall with independent claim 1.
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After review of the respective positions provided by Appellants and
the Examiner, we AFFIRM the Examiner’s rejection of claims 1–28 under
35 U.S.C. § 103(a) as unpatentable over Kilcast 2007, the Examiner’s
rejection of claims 1–28 under 35 U.S.C. § 103(a) as unpatentable over
Kilcast 2008, and the Examiner’s rejection of claims 1–28 under 35 U.S.C.
§ 103(a) as unpatentable over Jensen. We add the following for emphasis.
The Examiner finds that Kilcast 2007 discloses salts (sodium chloride
(NaCl)) having different crystal or particle sizes. Final Act. 3. Kilcast 2007
discloses that such salts were applied to food, and a trained sensory panel
evaluated the rate at which the saltiness of the food was perceived. Kilcast
2007, 213–214. The Examiner finds that Kilcast 2007 discloses that the
salts with the smallest crystals (particle sizes) yielded a more rapid
perception of saltiness than the salts with larger crystals (particle sizes).
Final Act. 3 citing Kilcast 2007, 214.
Kilcast 2007 also discloses that “sodium reduction is achieved by a
straight substitution of a proportion of the sodium chloride with potassium
chloride,” and discloses that replacement of 30 % sodium chloride by
potassium chloride “is generally feasible for many products.” Kilcast 2007,
210.
The Examiner finds that Kilcast 2008 also discloses salt compositions
comprising large NaCl particles mixed with large potassium chloride (KCl)
particles, and small NaCl particles mixed with small KCl particles. Final
Act. 6. The Examiner finds that Kilcast 2008 discloses that when these
compositions were evaluated for saltiness impact, “[t]ime-intensity
measurements with a trained sensory panel showed that smaller salt crystal
sizes delivered a faster ‘salty hit,’ and combinations of sodium chloride and
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potassium chloride with different particle sizes generated modified time-
intensity profiles.” Final Act. 6 citing Kilcast 2008, 114.
Jensen discloses numerous seasoning blends comprising NaCl of
various particle sizes combined with KCl of various particle sizes. Jensen,
Fig. 9A, 9B, 10A, 10B, ¶¶ 46, 47, 48. For example, Jensen discloses
compositions comprising 20 µm NaCl and 20 µm KCl, 20 µm NaCl and 10
µm KCl, 10 µm NaCl and 20 µm KCl, 10 µm NaCl and 10 µm KCl (Fig.
9A, Fig. 9B); 10 µm NaCl and 5 µm KCl, 10 µm NaCl and 10 µm KCl, 10
µm NaCl and 20 µm KCl (Fig. 10A); 20 µm NaCl and 5 µm KCl, 20 µm
NaCl and 20 µm KCl, 20 µm NaCl and 20 µm KCl (Fig. 10B). Jensen
discloses that when a trained taste panel evaluated the intensity of the salt
perception yielded by these compositions at different predetermined times,
the panel determined that the various compositions delivered different time-
intensity salt perceptions. Jensen, Fig. 9A, 9B, 10A, 10B, ¶¶ 46, 47, 48.
Appellants argue that Kilcast 2007 and Kilcast 2008 both teach away
from the salt composition recited in claim 1 because, according to
Appellants, both references teach that combining NaCl with KCl would not
have yielded a salt composition that could have been used to produce a food
product that would have been widely accepted due to the bitter taste of KCl.
App. Br. 7–8, 10–11. We find Appellants argument lacking in persuasive
merit for the reasons that follow.
Kilcast 2007, Kilcast 2008, and Jensen each disclose salt
compositions comprising both NaCl and KCl, and each reference indicates
that the size of the particles in a salt composition is a variable that affects the
time-intensity profile of saltiness perception (a result-effective variable). In
re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
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recognition in the prior art that a property [or a result] is affected by the
variable is sufficient to find the variable result-effective.”) Therefore, we
find no reversible error in the Examiner’s determination that each of Kilcast
2007, Kilcast 2008, and Jensen would have led one of ordinary skill in the
art to produce a salt composition comprising NaCl and KCl (an edible salt
other than NaCl, as recited in claim 1) (Final Act. 5–6, 9–10, 12), and we
concur with the Examiner that the determination of optimum or desired
particle sizes of NaCl in the composition, and optimum or desired particle
sizes of KCl in the composition, such as the particle sizes recited in claim 1,
would have been well within the ambit of one of ordinary skill in the art.
Final Act. 5–6, 9–10, 12; KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417
(2007)(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)(“[W]hen
a patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious.”); In re
Kerkhoven, 626 F.2d 846, 850 (CCPA 1980)(“It is prima facie obvious to
combine two compositions each of which is taught by the prior art to be
useful for the same purpose, in order to form a third composition which is to
be used for the very same purpose.”); 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.”).
Significantly, Appellants themselves acknowledge that the Declaration of
Richard Murray dated July 15, 2013 (of record) indicates that one of
ordinary skill in the art could have arrived at the claimed salt composition
through nothing more than routine, albeit extensive, experimentation. App.
Br. 10; Dec. ¶ 6.
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“[W]here the prior art gives reason or motivation to make the claimed
[invention as here] . . . the burden (and opportunity) then falls on an
applicant to rebut that prima facie case. Such rebuttal or argument can
consist of . . . any other argument or presentation of evidence that is
pertinent.” In re Dillon, 919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc).
To carry such burden, Appellants contend that the claimed subject matter
imparts unexpected results. App. Br. 8–9. Appellants also contend that the
claimed subject matter satisfied a long-felt need and produced commercial
success. App. Br. 9–10. In support of these contentions, Appellants refer to
the Examples in the instant Specification and the Murray Declaration. App.
Br. 8–9. Specifically, Appellants argue that the Examples in the
Specification and the information in the Murray Declaration provide
evidence of a lack of bitterness imparted by the claimed salt composition,
and contend that this result would have been unexpected at the time of the
invention in light of the suggestion in both Kilcast 2007 and Kilcast 2008
that the bitterness of salt compositions containing KCl was a problem in the
art at that time. App. Br. 8–9 and 11.
We agree with the Examiner that Appellants have not met their
burden of establishing that the data provided in the Specification and
Declaration are reasonably commensurate in scope with the degree of
protection sought by the claims on appeal. Ans. 13; In re Klosak, 455 F.2d
1077, 1080 (CCPA 1972) (“the burden of showing unexpected results rests
on he who asserts them”). The Examples in Appellants’ Specification
describe two experiments. Spec. ¶¶ 26–38. In the first experiment, the taste
of potato chips to which a single inventive salt composition was applied was
compared to that of potato chips to which four different comparative salt
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compositions were applied. Spec. ¶¶ 27–33. Similarly, in the second
experiment, only a single inventive salt composition was tested against three
comparative samples. Spec. ¶¶ 34–37. The inventive salt composition used
in both experiments contained a mixture of equal weight proportions of
NaCl having a mean particle size of 220 µm, NaCl having a mean particle
size of 15 µm, and KCl having a mean particle size of 75 µm. Spec. ¶¶ 32
and 36. In the first experiment, potato chips were salted at a level of 1.3%
by weight of the salt composition, while in the second experiment potato
chips were salted at a level of 1.2% by weight. Id. The testers in both
experiments described the inventive salt composition as having a strong
saltiness impact and having no bitter taste. Spec. ¶¶ 33 and 37. However,
Appellants do not direct us to any objective evidence or scientific reasoning
demonstrating that the myriad salt compositions embraced by claim 1
comprising NaCl of various particle sizes and numerous other edible salts of
various particle sizes would reasonably be expected to impart the same
results as the single inventive salt composition tested in the Examples in the
Specification. App. Br. 6–12; In re Harris, 409 F.3d 1339, 1344 (Fed. Cir.
2005) (“Harris needed to show results covering the scope of the claimed
range. Alternatively Harris needed too narrow the claims.”); In re
Greenfield, 571 F.2d 1185, 1189 (CCPA 1978) (quoting In re Tiffin, 448
F.2d 791, 792 (CCPA 1971)) (“Establishing that one (or a small number of)
species gives unexpected results is inadequate proof, for ‘it is the view of
this court that objective evidence of non-obviousness must be commensurate
in scope with the claims which the evidence is offered to support.’”)
Moreover, the Murray Declaration does not provide data establishing
unexpected results commensurate in scope with the claimed subject matter.
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The Declaration indicates that the “KCl sandwich” was utilized in over 35%
of the total volume of PepsiCo’s Australian snack food market. Dec. ¶ 6.
The Declaration provides a table setting forth the amount of sodium
contained in finished products seasoned with the “KCl sandwich,” and the
percentage of sodium reduction achieved by utilizing the “KCl sandwich” to
season the products. Dec. ¶ 3. However, the Declaration does not provide
any indication of the actual composition of the “KCl sandwich.” For
example, the Declaration does not indicate the relative amounts of NaCl and
KCl present in the “KCl sandwich,” nor does it indicate the particle sizes of
the NaCl and KCl utilized in the “KCl sandwich”. Accordingly, the
Declaration does not provide sufficient information to determine whether the
“KCl sandwich” described in the document is even embraced by claim 1,
much less whether it provides unexpected results commensurate in scope
with the protection sought.
Appellants further argue that the Murray Declaration establishes that
the claimed salt composition “has enjoyed commercial success and satisfied
a long-felt need in the marketplace” because sales of snack foods seasoned
with the composition did not elicit an increase in consumer complaints
related to the flavor of the products. App. Br. 9.
We agree with the Examiner that a lack of consumer complaints is
insufficient evidence to establish commercial success. Ans. 13–14; In re
Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (Appellant must offer proof that
the asserted commercial success occurred in the relevant market and “that
the sales were a direct result of the unique characteristics of the claimed
invention—as opposed to other economic and commercial factors unrelated
to the quality of the patented subject matter.”); Geo. M. Martin Co. v.
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Alliance Machine Systems Int’l LLC, 618 F.3d 1294, 1304 (Fed. Cir. 2010)
(“The commercial success of a product is relevant to the non-obviousness of
a claim only insofar as the success of the product is due to the claimed
invention.”)
In addition, the Declaration does not provide any other evidence
establishing the commercial success of snack foods containing the claimed
salt composition, and establishing that sales of the snack foods resulted
directly from the merits of the claimed salt composition. In this regard, as
discussed above, the Murray Declaration does not indicate that snack foods
actually containing the claimed salt composition were sold in the Australian
market. Even assuming that this was the case, the Declaration does not
indicate the level of sales of such snack foods, or the actual market share of
such snack foods in a given market. The Declaration indicates only that the
“KCl sandwich” was utilized in over 35% of the total volume of PepsiCo’s
Australian snack food market, but does not indicate what market share this
comprises, or the actual level of sales of the snack foods. Dec. ¶ 6. The
Declaration also does not specify the extent of advertisement employed for
the snack foods, i.e., below, above, or identical to a given industry norm.
Thus, nowhere does the declaration demonstrate that the claimed salt
composition was commercially successful, or that any commercial success
was due to the merits of the claimed composition.
In addition, Appellants do not supply sufficient evidence to
demonstrate that there was a long-felt need, i.e., an unsolved problem, that
was met by their invention. App. Br. 6–12; In re Mixon, 470 F.2d 1374,
1377 (CCPA 1973). Appellants have not shown that the solution to the
problems associated with developing a reduced sodium salt composition
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would not have been apparent to one of ordinary skill in the art from the
teachings of each of Kilcast 2007, Kilcast 2008, and Jensen. App. Br. 6–12;
In re Gershon, 372 F.2d 535, 539 (CCPA 1967) (Establishing long-felt need
requires objective evidence showing existence of a persistent problem
recognized by those of ordinary skill in the art for which a solution was not
known.) For example, Appellants do not show that there were no known
reduced sodium salt compositions that addressed the problem associated
with bitterness caused by replacement of a portion of NaCl with KCl. App.
Br. 6–12. In fact, Kilcast 2007 teaches that “[s]odium salts and bitter
compounds generally interact so that bitterness is suppressed to some
variable degree and saltiness is unaffected,” and further teaches that
sweeteners have been demonstrated to be effective in masking perceived
bitterness. Kilcast 2007, 212. In addition, as Appellants point out (App. Br.
11–12), Jensen discloses inclusion of bitterness masking agents in salt
compositions containing relative high percentages of KCl. Jensen ¶ 59;
Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. Cir. 1988)
(The long-felt need must not have been satisfied by another before the
invention by applicant.)
It follows that the Examiner does not reversibly err in determining
that the evidence of obviousness, on balance, outweighs the evidence of
nonobviousness relied upon by Appellants. Accordingly, we sustain the
Examiner’s rejections of claims 1 through 28 under § 103(a).

ORDER
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For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

AFFIRMED

KRH