Ex Parte Peterson et alDownload PDFPatent Trial and Appeal BoardSep 18, 201815067446 (P.T.A.B. Sep. 18, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 15/067,446 03/11/2016 Scott Peterson 30589 7590 09/20/2018 DUNLAP CODDING, P.C. PO BOX 16370 OKLAHOMA CITY, OK 73113 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. 555910.136 (8585-US-CNT7) CONFIRMATION NO. 4666 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 09/20/2018 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): docketing@dunlapcodding.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT PETERSON, 1 Frank Welch, Thomas Burkholder, Norman Jager, and Giovanna Aleman Appeal2017-008712 Application 15/067 ,446 Technology Center 1700 Before MARK NAGUMO, WESLEY B. DERRICK, and JEFFREY R. SNAY, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Nestec S.A. ("Nestec") timely appeals under 35 U.S.C. § 134(a) from a rejection2 of all pending claims 1-20. We have jurisdiction. 35 U.S.C. § 6. We reverse. 1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under 35 U.S.C. § 134, is the real party in interest, identified as Nestec S.A. (Appeal Brief, filed 09 December 2016 ("Br."), 1.) 2 Office Action mailed 14 July 2016 ("Office Action"; cited as "OA"). (As Nestec argues ("Response to Office Communication Re: Appeal," filed October 2016), the appeal is proper because the claims in the application were rejected in the parent application, 12/599,321.) Appeal2017-008712 Application 15/067 ,446 A. Introduction 3 Procedural background OPINION Nestec requested an oral hearing in this appeal, but subsequently elected to waive hearing attendance. (Communication of 12 July 2018.) The present application is a member of a family of applications, one of which has already come before us: Appeal 2017-004151 (PTAB 17 November 2017, rev'd) in Application 13/190,2194 ( drawn to a method of preparing freeze-dried yogurt, now U.S. Patent No. 10,010,091 B2 (3 July 2018)). 5 Another member of the family, 12/482,252 6 (drawn to a method of preparing freeze-dried yogurt), is before us as Appeal 2017-008712, and is decided concurrently on a very similar basis. 3 Application 15/067 ,446, Freeze-Dried, Aerated Dairy or Dairy-Substitute Compositions and Methods of Making Thereof, filed 11 March 2016 as a continuation of 12/599,321, which was filed 28 January 2010 (now abandoned), which was filed as the national stage under 35 U.S.C. § 371 of PCT/US08/63312, which was filed 09 May 2008, and which claims benefit of 60/916,949, which was filed 9 May 2007. We refer to the "'446 Specification," which we cite as "Spec." 4 Application 13/190,219 was filed 25 July 2011, as a continuation of 12/482,256, which was filed was filed 10 June 2009, as a continuation-in- part of PCT/US08/63312. 5 We acknowledge with appreciation the notice provided by Nestec of the appeal in the '219 application. (Br. 1, § II.) 6 Application 12/482,252 was filed 10 June 2009 as a continuation-in-part of PCT/US08/63312. 2 Appeal2017-008712 Application 15/067 ,446 The subject matter of this application is also related, somewhat more distantly, to another family of applications, several of which have already come before the Board for decision, and one of which, Appeal 2017-009031, in Application 13/457,411 7, is decided concurrently. Subject matter background The subject matter on appeal relates to methods of making freeze- dried, aerated, shelf stable yogurt. (Spec. 2 [0005].) The product is said to be easily dissolved in the mouth, providing flavor as well as reduced risk of choking. (Id. at 1-2 [0003].) The '446 Specification teaches that it is known that "[ a ]eration can provide desirable characteristics such as light, fluffy textures" (id. at 1 [0002], 1. 2), but that "aerated products are subject to physical and chemical instability and therefore can destabilize over time" (id. at 11. 3--4). The Specification discloses that it is known to add a hydrated emulsifier to already cultured dairy products before aeration. (Id. at 11. 4---6, citing Engesser '1578.) Subsequent freeze-drying of the products, however, is said to result in a product that is too fragile to withstand shipping and handling. (Id.) Aeration is also said to be known to improve dissolvability, but also to lead to reduced hardness and decreased durability. (Id.) Nestec seeks patent protection for a method of preparing a freeze- dried shelf stable yogurt snack food in which a dry emulsifier consisting of lactylated monoglycerides or diglycerides is added to milk, mixed via high 7 Application 13/457,411 was filed 18 May 2012. Other appeals in this patent family are identified in the 2017-009031 Opinion. 8 Eric R. Engesser et al., Food products and their method of preparation, U.S. Patent No. 7,005,157 B2 (2006). 3 Appeal2017-008712 Application 15/067 ,446 shear blending, pasteurized, inoculated with a yogurt culture, fermented, aerated, freeze-dried, formed into pieces, and packaged for sale. Claim 1 is representative and reads: A method of providing a freeze-dried aerated yogurt product packaged for sale to a consumer, wherein the freeze-dried aerated yogurt composition is readily dissolvable to reduce the risk of choking hazards for consumers with restricted or under-developed oral motor skills or digestive functions, the method comprising the sequential steps of: adding a dry emulsifier directly to one or more dairy or dairy substitute ingredients via high shear blending to form a mixture, wherein the dry emulsifier consists of lactylated monoglycerides and/or lactylated diglycerides; pasteurizing the mixture; adding a yogurt culture to the pasteurized mixture; fermenting the pasteurized mixture containing the yogurt culture to provide a fermented mixture; aerating the fermented mixture to provide an overrun from about 35% to about 45% prior to freeze-drying; freeze-drying the aerated mixture to form the product; and packaging the product for sale to a consumer, wherein the dairy or dairy substitute ingredient( s) is present in an amount of from about 70% to about 85% by weight of the product, and the dry emulsifier is present in an amount of from about 0.001 % to about 1 % of the freeze-dried, aerated yogurt product, and wherein the product is readily dissolvable to reduce the risk of choking hazards for consumers with restricted or under- developed oral motor skills or digestive functions and 4 Appeal2017-008712 Application 15/067 ,446 has a hardness value in a range of from about 0.5 to about 8 pounds force peak load, a dissolvability in a range of from about 0.1 to about 8 pounds force peak load, and a viscosity in a range of from about 1000 to about 400,000 cp at a 5 RPM speed of the spindle 6 in a Brookfield Viscometer. (Claims App., Br. 26; some indentation, paragraphing, and emphasis added.) The Examiner maintains the following ground of rejection 9, 10 : Claims 1-20 stand rejected under 35 U.S.C. § I03(a) in view of the combined teachings of and Rudolph 11 and Engesser '089. 12 B. Discussion The Board's findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Nestec urges the Examiner erred harmfully, inter alia, because Rudolph 13 and Engesser '089, individually or in combination, do not teach mixing a dry emulsifier as with a dairy ingredient at high shear prior to 9 Examiner's Answer mailed 28 March 2017 ("Ans."). 10 Because this application was filed before the 16 March 2013, effective date of the America Invents Act, we refer to the pre-AIA version of the statute. 11 Martin J. Rudolph et al., Edible product with live and active probiotics, WO 01/62099 Al (2001). 12 Eric R. Engesser et al., Whipped yogurt products and method of preparation, U.S. Patent Application Publication 2003/0224089 Al (2003). 13 The Examiner relies on Rudolph for teachings of freeze-drying shaped probiotic aerated dairy blend food products (OA 3, 11. 7-12). The Examiner makes no findings regarding emulsifiers based on teachings of Rudolph. 5 Appeal2017-008712 Application 15/067 ,446 pasteurization and subsequent fermentation. (Br. 10-15.) In particular, Nestec points out (id. at 11, 1. 21-12, 1. 7) that Engesser '089 teaches that it is essential that the emulsifier (which is a blend of lactylated mono- and di- glycerides) be hydrated in water in the presence of an aqueous dispersion of wetting agent (Engesser '089, 4 [0059]-[0061]) to "facilitate[] dispersion of the lactylated emulsifiers in the water to form the hydrated emulsifier composition" (id. at [0063].) The Examiner "takes the position that it does not matter whether the emulsifier is hydrated or not" because "[ a ]11 the ingredients are mixed together to achieve an initial hydration and then freeze dried." (OA 4, 11. 5- 7 .) This unelaborated reasoning is not sufficient to explain why a person having ordinary skill in the art would have disregarded the extensive and repeated statements discussion by Engesser '089 regarding the criticality of mixing a hydrated emulsifier blend with the dairy mix. Moreover, as Nestec points out (Br. 12, 11. 16-22), Engesser '089 teaches that the yogurt should not be subjected to high shear blending. In the words of Engesser '089, "[c]are needs to be taken to minimize the shear imparted to the yogurt in practicing such process steps to minimize the loss of thickness or viscosity built up by the fermentation step." (Engesser '089 1 [0010], 11. 18-21.) Consistently, Engesser '089 teaches that the hydrated emulsifier must have a low viscosity "for ease of handling and mixing without imparting shear to the dairy blend mix." (Id. at 4 [0066].) The Examiner has not, however, come forward with evidence of record or an explanation why the routineer would have discounted these teachings of Engesser '089 and added a dry emulsifier to a dairy blend via high shear blending, as required by claim 1. 6 Appeal2017-008712 Application 15/067 ,446 Furthermore, Nestec argues (Br. 12, 1. 22-13, 1.2), the Examiner has not explained why the routineer, on the basis of teachings in Engesser '089 and Rudolph, would have added a dry emulsifier to a dairy product prior to pasteurization and fermentation steps, as required by claim 1. Engesser '089 emphasizes that the hydrated emulsifier blend must be pasteurized because it is added to inoculated and fermented yogurt in order to "provide[] bacteriological stability for a blended dairy/hydrated emulsifier product that does not receive further bacteriological treatment such as heat processing." (Engesser '089 [0071], 11. 4--7.) The evidence and arguments presented by Nestec, that Engesser '089 does not support the Examiner's findings and conclusions regarding the obviousness of adding dry emulsifier to dairy ingredients via high shear blending before pasteurization, inoculation, and fermentation, far outweigh the evidence and arguments advanced by the Examiner. We conclude that Nestec has shown harmful error in the Examiner's rejections, so we reverse. C. Order It is ORDERED that the rejection of claims 1-20 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation