2020002280 (P.T.A.B. May. 12, 2021)

GENERAL MILLS, INC.

Patent Trials and Appeals BoardMay 12, 2021

2020002280 (P.T.A.B. May. 12, 2021)

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. 14/893,846 11/24/2015 Erika B. Smith 7867US03 5903 106306 7590 05/12/2021 DIEDERIKS &WHITELAW, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 EXAMINER TURNER, FELICIA C ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 05/12/2021 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): gmi.mail@dwpatentlaw.com mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIKA B. SMITH, WENYI WANG, and VIKRAMADITYA GHOSH Appeal 2020-002280 Application 14/893,846 Technology Center 1700 Before TERRY J. OWENS, GEORGE C. BEST, and WESLEY B. DERRICK, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision to reject claims 1–2 and 4–21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as General Mills, Inc. (Appeal Br. 6). Appeal 2020-002280 Application 14/893,846 2 CLAIMED SUBJECT MATTER The claims are directed to a food product with yogurt whey. Claims 1 and 9, reproduced below, are illustrative of the claimed subject matter: 1. A food product comprising a neutralized yogurt whey. 9. A food product comprising neutralized yogurt whey, the neutralized yogurt whey comprising: a pH of 6.0 or greater; 50 to 75% wt lactose on a dry basis; at least 100 mg calcium per 100 grams of yogurt whey; at least 0.5% wt galactose; and at least 10% wt solids, wherein the neutralized yogurt whey is a free flowing liquid. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Ward US 3,061,442 Oct. 30, 1962 Moore US 3,537,860 Nov. 3, 1970 Nassauer US 5,580,592 Dec. 3, 1996 Tay US 2008/0107769 A1 May 8, 2008 Keller WO 2009/004566 A2 Jan. 8, 2009 Komatsu JP 2011109935 A Abstract June 9, 2011 Asada 3 Adv. in Biosci. & Biotech. 828-832 2012 Bold https://www.thekitchn.com/what- to-do-with-whey-greek-yogurts- dark-side-food-news-190013 May 24, 2013 Merriam-Webster https://www.merriam- webster.com/dictionary/liquid N/A Appeal 2020-002280 Application 14/893,846 3 REJECTIONS Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1, 2 103 Nassauer, Bold, Keller 4–8 103 Nassauer, Bold, Keller, Moore 9, 10, 19 103 Komatsu, Merriam- Webster Bold, Keller, Asada 11–18 103 Komatsu, Merriam- Webster, Bold, Keller, Asada, Tay 20, 21 103 Komatsu, Merriam- Webster, Bold, Keller, Asada, Ward OPINION We need address only the independent claims, i.e. claims 1 and 9.2 Claim 1 Claim 1 requires a food product comprising neutralized yogurt whey.3 Nassauer neutralizes acid whey in a spray drying process, wherein the whey source may be cottage cheese (col. 1, ll. 10–11, 59–61, 63–65; col. 2, ll. 9–12, 43–47, 49–51; claim 1). Bold discloses acid or sour whey, from yogurt and cottage cheese, was a problematic waste product, unlike less acidic sweet whey from cheese manufacture (p. 1, ¶¶ 1, 3). 2 The opinion applies equally to the original grounds and new grounds of rejection (Ans. 3, 5, 9, 12). 3 The Appellant defines “neutralized yogurt whey” as yogurt whey that has been neutralized with a basic material to raise the pH (Spec. ¶ 11). Appeal 2020-002280 Application 14/893,846 4 Keller teaches the skilled person would readily recognize that one source of acid whey could be substituted for another source of acid whey (p. 3, ll. 5–7), and that all whey types could be spray dried (p. 1, l. 23). Keller teaches whey protein improves the quality of bakery products (p. 5, ll. 7–9). The Appellant argues that as Nassauer is specifically directed to cheese whey, and the prior art does not equate yogurt whey to cheese whey, the substitution of yogurt whey for cheese whey would be unpredictable and destroy Nassauer’s invention (Appeal Br. 9–11; Reply Br. 3). In responding to the Appellant’s argument, the relevant issue is whether the combined teachings of the prior art would have fairly suggested the claimed food product to a person of ordinary skill in the art. See In re Napier, 55 F.3d 610, 613 (Fed. Cir. 1995). As Nassauer teaches an improved process for drying acid whey because it was so troublesome to dry that it was disposed of by most producers (col. 1, ll. 10–11; col. 2, ll. 18–21), Nassauer would have suggested to a person having ordinary skill in the art that applying Nassauer’s neutralization spray drying treatment to acid whey would make it more useful. As Bold discloses acid whey, from yogurt and cottage cheese, was a problematic waste product, unlike less acidic sweet whey from cheese manufacture (p. 1, ¶¶ 1, 3), the prior art would have suggested that neutralization of acidic whey, including yogurt whey, would make it more useful. As Keller teaches the skilled person would readily recognize that one source of acid whey could be substituted for another source of acid whey Appeal 2020-002280 Application 14/893,846 5 (p. 3, ll. 5–7) and that all whey types could be spray dried (p. 1, l. 23), the teachings of the prior art would have suggested, to one of ordinary skill in the art, neutralization spray drying not only Nassauer’s cottage cheese whey, but also other acid whey such as yogurt whey.4 Based on the combined teachings, a person of skill in the art would have recognized that yogurt whey could be treated in the same manner as Nassauer’s acid whey to provide a dried neutralized form that was a useful alternative to the problematic acidic waste. Further, as Keller teaches whey protein improves the quality of bakery products (p. 5, ll. 7–9), the use of whey products, including neutralized yogurt whey, in bakery products would have been obvious to one of ordinary skill in the art. For the above reasons, we sustain the Examiner’s rejection of claim 1. Claim 9 Claim 9 requires a food product comprising neutralized yogurt whey which is a free flowing liquid. Komatsu teaches a food product comprising whey treated by removing calcium phosphoric acid from a high mineral liquid from milk or whey, and concentrating and drying the high mineral liquid until the solid content is at least 20 mass% to obtain a whey mineral (Abstract).5 4 The Board in the related appeal (Appl. No. 14/138,608) also finds the combined teachings of prior art, including Nassauer and Keller, support that a person of skill in the art would have recognized that yogurt whey could be treated in the same manner as acid whey in the neutralization spray drying process of Nassauer (Decision 4–5). 5 A discussion of the secondary references, Bold, Keller, and Asada is not needed. Appeal 2020-002280 Application 14/893,846 6 The Examiner finds that “Komatsu discloses a liquid whey concentrate that is neutralized . . . .” (Ans. 13), wherein removing “phosphoric acid . . . is indicative of neutralization” (Ans. 18). The Examiner has the initial burden of establishing a prima facie case of obviousness under 35 U.S.C. § 103. See in re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.”). The Examiner has not explained how removing calcium phosphoric acid is neutralization. The reference does not recognize calcium phosphoric acid removal as neutralization, or identify a starting pH or quantity of calcium phosphoric acid removed so that one of skill in the art could determine if the removal resulted in neutralization (Appeal Br. 13; Reply Br. 3). The Examiner has not established that Komatsu’s calcium phosphoric acid removal equates to neutralization, let alone neutralization with a basic material as required by Appellant’s definition of neutralized yogurt whey (Spec. ¶ 11). Additionally, the Examiner has not established that the concentrated and dried whey mineral added to Komatsu’s food is a free flowing liquid whey material as required by the Appellant’s claim 9 (Appeal Br. 13–14). As drying and concentrating is the removal of liquid material, there is no evidence that the liquid intermediary of Komatsu would remain a free flowing liquid after being concentrated and dried to a solids content greater than or equal to 20 mass% to produce the final whey mineral product. Appeal 2020-002280 Application 14/893,846 7 The Examiner has not met the initial burden of establishing a prima facie case of obviousness. Accordingly, we reverse the rejections of claim 9 and its dependent claims. CONCLUSION The Examiner’s decision to reject claims 1–2 and 4–21 is AFFIRMED IN PART. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2 103 Nassauer, Bold, Keller 1, 2 4–8 103 Nassauer, Bold, Keller, Moore 4–8 9, 10, 19 103 Komatsu, Merriam-Webster Bold, Keller, Asada 9, 10, 19 11–18 103 Komatsu, Merriam-Webster, Bold, Keller, Asada, Tay 11–18 20, 21 103 Komatsu, Merriam-Webster, Bold, Keller, Asada, Ward 20, 21 Overall Outcome 1, 2, 4–8 9–21 Appeal 2020-002280 Application 14/893,846 8 TIME FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv) (2013). AFFIRMED IN PART