Ex Parte Peterson et al

Patent Trial and Appeal Board

Sep 18, 2018

15067446 (P.T.A.B. Sep. 18, 2018)

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.
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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).
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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
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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.
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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.
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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
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