Ex Parte VAN DEN ELSHOUT et al

Patent Trial and Appeal Board

Sep 26, 2018

14400336 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT 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.
14/400,336 11/11/2014 Wilhelmus Hubertus Henricus Antonius VAN DEN 30183.0005.USPO 4782
32894 7590 09/28/2018
HOYNG ROKH MONEGIER LLP
Rembrandt Tower 31st Floor
Amstelplein 1
Amsterdam, 1096 HA
NETHERLANDS
ELSHOUT
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
amdocketing@hoyngrokh.com
ronny.amirsehhi@hoyngrokh.com
david.owen@hoyngrokh.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILHELMUS HUBERTUS HENRICUS,
ANTONIUS VAN DEN ELSHOUT,
and JOHANNES GISBERT GERARDUS MARIA KLERKEN, JR.
Appeal2017-010354
Application 14/400,336
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-16 of Application 14/400,336
under 35 U.S.C. § 103(a) as obvious. Final Act. 2--4 (Sept. 8, 2016).
Appellants 1 seek reversal of the rejection pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we affirm-in-part.
1 Appellants identified Scelta Umami Holding B.V. as the real party in
interest. Br. 2.
Appeal2017-010354
Application 14/400,336
BACKGROUND
The technical background relates to a composition for the partial
replacement of sodium chloride, particularly in baked dough products, such
as bread. Spec. ,r 11. The composition is said to address high sodium
content, which is associated with high blood pressure, without negatively
influencing the taste or the structure of the bread. Id. ,r,r 1, 11.
Claims 1, 2, and 14 are representative of the '336 Application's
claims and are reproduced below from the Claims Appendix to the Appeal
Brief:
1. A salt replacement product comprising a homogeneous
particle of:
a. 5-70 wt.% of one or more extracts from fungi;
b. 10-80 wt.% of a chloride salt of a metal that is acceptable
in food, selected from the group consisting of calcium,
magnesium, or combinations thereof;
c. and optionally one or more powder stabilizing additives.
2. A process for the preparation of a salt replacement
product, comprising the following steps:
a. providing a solution of
1. 5-7 0 wt.% ( on dry weight) of one or more extracts
from fungi,
11. 10-80 wt.% ( on dry weight) of a chloride salt of a
metal that is acceptable in food, selected from the
group consisting of calcium, magnesium, or
combinations thereof;
iii. and optionally one or more powder stabilizing
additives
b. drying the solution
c. and obtaining a substantial homogeneous salt
replacement product in granular form.
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Application 14/400,336
14. A baked dough product, containing less than 1.3%
sodium chloride, further comprising 0.2-3 % salt replacement
product of claim 1.
Br. 16, 17.
REJECTION
On appeal, the Examiner maintains the following rejection:
1. Claims 1-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Fry2 and Nakagawa. 3
Final Act. 2; Answer 2.
DISCUSSION
Rejection 1. Appellants make separate arguments for reversal of this
rejection with respect to three sets of independent claims: claim 1, Br. 8-13;
claim 2, id. at 13-14; and claims 12 and 14. Id. at 14--15. With respect to
claims 12 and 14, we select claim 14 as representative. 37 C.F.R. §
4I.37(a)(l)(iv). We address Appellants' arguments regarding claims 1, 2,
and 14 seriatim.
Claim 1. Appellants argue that the rejection of claim 1 as
unpatentable over the combination of Fry and Nakagawa should be reversed
because: ( 1) "the resultant homogeneous particles [ of less than 1
micrometer] of claim 1 are smaller than" Fry's particle size of greater than
420 micrometers, Br. 9; (2) "[t]he Examiner has not identified the essential
features of claim 1 that are clearly not disclosed in the cited prior art," id. at
10 (emphasis omitted)); and (3) "[t]he Examiner has failed to provide [a]
2 US 3,821,436, issued June 28, 1974.
3 US 4,963,387, issued Oct. 16, 1990.
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Application 14/400,336
motivational statement in the rejection of claim 1 under" 35 U.S.C. § 103(a).
Id. at 11.
Appellants' arguments are not persuasive.
First, the limitations of claim 1 are silent with respect to any requisite
size for the homogeneous particles. See In re Self, 671 F.2d 1344, 1348
( CCP A 19 82) ("Many of [ A ]ppellant' s arguments fail from the outset
because ... they are not based on limitations appearing in the claims.").
Furthermore, the Specification provides that "[t]he term 'solution' is to be
understood that particles less than 1 micrometer, preferably less than 0.1
micrometer may be present." Spec. ,r 44. Claim 1, however, does not recite
a "solution." Thus, we are unpersuaded by Appellants' contention that "the
homogenous particle of claim 1 comprises at most particles of less than 1
micrometer." Br. 9.
Second, Appellants assert in connection with argument (2) that the
Examiner reversibly erred in equating Fry's flavoring composition with a
salt replacement composition. Id. at 11. Appellants argue that a "salt
replacement composition is devoid of flavors, just like table salt does not
have flavor." Id.
We, however, agree with the Examiner that "[t]able salt has a 'salty'
flavor." Answer 8. Appellants' arguments fail to identify reversible error in
the Examiner's findings because "a 'salt replacement composition' is
considered a 'flavoring composition' due to the fact that it ultimately affects
the flavor of a food commodity." Id.
Third, argument (3) is not persuasive because, in rejecting claim 1, the
Examiner found that Fry's flavoring composition may comprise salts. Id. at
10. As the Examiner found, the term "salt" would have suggested to the
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Application 14/400,336
ordinary skilled artisan that Fry teaches sodium chloride as an "acceptable
flavoring compound."4 Id. The Examiner correctly found that one of
ordinary skill in the art would have been motivated to substitute the sodium
chloride salts in Fry's flavoring composition because Nakagawa teaches that
"sodium chloride may be replaced by calcium and magnesium chlorides" in
a salt replacement. Id. at 9. The Examiner further found that Nakagawa's
"salt substitute may comprise 5-30% (wt.) of alkaline earth metal salts." Id.
at 6 ( citing Nakagawa 1 :65---68).
We, therefore, agree with the Examiner's determination that "it would
have been obvious to those of ordinary skill in the art, at the time the
invention was made, to modify the flavoring composition of [Fry] by
incorporating calcium and/or magnesium salts to produce a flavoring
composition ( salt substitute) comprising mushroom extract and calcium
and/or magnesium salts." Id. at 3; see, e.g., In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (holding that a prima facie case of obviousness
typically exists when the ranges of a claimed composition overlap the ranges
disclosed in the prior art).
Thus, we determine that the preponderance of the evidence of record
supports the Examiner's conclusion of obviousness for claim 1.
Claim 2. Appellants argue that the rejection of claim 2 as obvious
over the combination of Fry and Nakagawa should be reversed for the
reasons set forth in the arguments for reversal of claim 1. Br. 13.
For the reasons set forth above and in the Examiner's Answer,
Appellants have not identified reversible error in the Examiner's
4 Appellants admit that"[ c ]ommon kitchen salt (sodium chloride, also
abbreviated as NaCl) is much in use." Spec. ,r 1.
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Application 14/400,336
determination that claim 1 is rendered obvious by the combination of Fry
and Nakagawa.
We note that claim 2 recites "a solution," unlike claim 1. As set forth
above, the Specification provides that "[t]he term 'solution' is to be
understood that particles less than 1 micrometer, preferably less than 0.1
micrometer may be present." Spec. ,r 44. Thus, Appellants argue that the
particles of the claimed subject matter are distinguished in size from Fry's
particle size of greater than 420 micrometers. See Br. 9. According to
Appellants, "the solution for spray drying preferably does not comprise
particles that cause blockage of the spray nozzles." Id. (citing Spec. ,r 45).
To the extent that Appellants implicitly argue that the size of Fry's
particles would have blocked spray nozzles, we are unpersuaded. As the
Examiner aptly responds, "Fry uses the same spray drying technique for
drying a solution comprising the components of the inventive composition."
Answer 7. Furthermore, the limitations of claim 2 are silent with respect to
any requisite size for the claimed solution components. See In re Self, 671
F .2d at 1348.
Appellants argue that the recitation of "a solution of' requires that
"claim 2 consists essentially of one or more fungi extract and chloride salt of
a metal consisting of calcium and/ or magnesium," but other components
may be included, so long as they do not have flavor. Id. at 13. Appellants
implicitly argue that "all the flavorants" of Fry are excluded from claim 2.
Id. at 14.
Appellants' argument is not persuasive. In claim 2, because the term
"comprising" is used to introduce the steps in the process, there is a
presumption that the solution provided may contain elements in addition to
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Application 14/400,336
those explicitly mentioned in the claim. See, e.g., In re Skvorecz, 580 F.3d
1262, 1267 (Fed. Cir. 2009) (citing CIAS, Inc. v. Alliance Gaming Corp.,
504 F.3d 1356, 1360 (Fed. Cir. 2007)) ("In the patent claim context the term
'comprising' is well understood to mean 'including but not limited to."').
Therefore, we agree with the Examiner that the salt replacement
compositions of claim 2 may comprise all compounds mentioned by Fry and
Nakagawa. Answer 12.
We further agree with the Examiner that Appellants have not provided
sufficient evidence demonstrating that it was erroneous for the Examiner to
find that claim 2 is drawn to a combination of known elements, according to
known methods, that yield predictable results. See id. at 2-3. Thus, we
determine that the preponderance of the evidence supports the Examiner's
conclusion of obviousness for claim 2.
Claim 14. Appellants argue that the Examiner reversibly erred in
concluding that claim 14 is obvious merely because Nakagawa discloses use
of salt substituents in bread. Br. 15. Appellants further argue that the
Examiner has not considered "the essential features '1.3% sodium chloride'
and '0.2-3% salt replacement product of claim 1 "' and has not provided a
"convincing line of reasoning." Id.
In response, the Examiner argues that "optimizing the levels of such
compositions in dough or the resulting bread would have been trivial to
those of skill in the art." Answer 13.
The Examiner has not pointed to any evidence that optimization by
the ordinary skilled artisan to arrive at the requisite less than 1.3 % sodium
chloride and 0.2-3% salt replacement product of claim 1 would have been
trivial. Given that salt influences not only taste, but the structure of bread,
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Application 14/400,336
the Examiner has not provided any argument or reasoning supported by
adequate facts to explain why a person of ordinary skill in the art would
have found such optimization a trifling exercise. See Spec. ,r 7. In the
absence of such an explanation, we cannot affirm the rejection of claim 14.
See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) ("[R]ejections on
obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.").
For the reasons set forth above, we are persuaded by Appellants'
arguments for reversal of the obviousness rejection of claims 12 and 14.
Thus, we also reverse the rejection of claim 13, which depends from claim
12.
DECISION
For the reasons set forth above, we affirm-in-part the obviousness
rejection of claims 1-16 of the '336 Application. In particular, we affirm the
rejection of claims 1-11, 15, and 16. We reverse the rejection of claims 12-
14.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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