NESTEC S.A.

Patent Trials and Appeals Board

Nov 2, 2020

2019006503 (P.T.A.B. Nov. 2, 2020)

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.
14/787,840 10/29/2015 Kyungsoo Woo 3712036-02492 9919
29157 7590 11/02/2020
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/02/2020 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KYUNGSOO WOO

Appeal 2019-006503
Application 14/787,840
Technology Center 1700
____________

Before CATHERINE Q. TIMM, JEFFREY T. SMITH, and
MICHAEL G. McMANUS, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–5, 9, 13, 14, 18–20, 24, and 28.
Claims 10, 12, 15, 17, and 25–27 are withdrawn from consideration. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
Appellant’s invention is generally directed to “food compositions and
methods for making and using same that provide enhanced saltiness

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Nestec
S.A. Appeal Br. 2.
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perception by positioning most of the sodium in an aqueous phase relative to
a starch polymer phase.” (Spec. ¶ 1.) Representative food compositions
include water-based sauce, dairy-based sauce, tomato-based sauce and
combinations thereof. (Spec. ¶ 14.) Independent claim 1 is representative of
the appealed subject matter and is reproduced below:
1. A method of producing an inhomogeneous sodium distribution
in a food composition, the method comprising:
cooling gelatinized starch to a temperature of 4 to 50 °C, thereby
forming an insoluble starch gel; and
after the cooling, adding to the insoluble starch gel at least 0.30
wt.% to 3.50 wt.% of sodium chloride, thereby forming the
inhomogeneous sodium distribution in the food composition,
wherein the food composition comprises more sodium trapped in
an aqueous phase versus a starch polymer phase.
Claims Appendix.
The following rejections are presented for our review: 2
I. Claims 1, 2, 13, 14, and 28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over RT3 in view of the combination of Bruno4, Montignac5,
ISI6, Ponkin7, Cunningham8, Buchanan9, Stypula10 and PH11.

2 The complete statement of the rejections on appeal appears in the
December 5, 2018 Final Action. (Final Act. 7–18.)
3 RT: RecipeTips.com: Flour Cooking Guide (RT).
4 “Bechamel Sauce, In the Kitchen, Pizza Today” (“Bruno”).
5 “The Factors that Modify Glycemic Indexes” (“Montignac”).
6 “International Starch Institute: Starch” (“ISI”).
7 “Easy No-Lump White Sauce” (“Ponkin”).
8 “White Sauce or Bechamel Sauce” (“Cunningham”).
9 US 2,406,585; issued Aug. 27, 1946.
10 US 4,877,628; issued Oct. 31, 1989.
11 “Prentice Hall: The Solution Process” (“PH”).
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II. Claims 3–5 and 18–20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of RT, Bruno, Montignac , ISI, Ponkin,
Cunningham, Buchanan, Stypula, PH, further in view of Slimgenics12.
III. Claims 9 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of RT, Bruno, Montignac , ISI, Ponkin,
Cunningham, Buchanan, Stypula, PH, further in view of Fisher13 and
Hingley14.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has
long been the Board’s practice to require an applicant to identify the alleged
error in the examiner’s rejections” (citing Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential))).
Having considered the respective positions the Examiner and
Appellant advance in light of this appeal record, we affirm the Examiner’s
rejections based on the fact-finding and reasoning set forth in the Answer
and Final Office Action, which we adopt as our own. We add the following
primarily for emphasis.

12 Slimgenics: Happy Thanksgiving for 8 People; copyright 2012.
13 Fisher: Using Balsamic Vinegar to “Fix” a Sauce; Good Cheap Eats.
14 Hingley: Balsamic & Herb Turkey Gravy; Gluten Free Club.
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Rejection I
The Examiner rejects claims 1, 2, 13, 14, and 28 over the combination
of RT, Bruno, Montignac, ISI, Ponkin, Cunningham, Buchanan, Stypula,
and PH.

Claims 1 and 28.
We limit our discussion to the independent claim 1 as argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Appellant fails to provide
substantive arguments addressing the limitations of claim 28. (Appeal Br.
7–15).
Appellant argues a person of ordinary skill in the art would not have
combined the teachings of RT with Bruno, Montignac, ISI, Ponkin,
Cunningham, and/or Buchanan to arrive at cooling gelatinized starch to a
temperature of 4 to 50 °C, thereby forming an insoluble starch gel; and after
the cooling, adding to the insoluble starch gel sodium chloride, as required
by independent Claim 1. (Appeal Br. 7–12.) Appellant relies on the
September 13, 2018 Declaration of the inventor Woo, paragraph 9, to
support the argument that the barrier layer of Stypula contains the sodium
chloride and is located between a batter and a porous inner food structure
that is not similar to the velouté sauce of RT. (Appeal Br. 8.)
Appellant’s arguments are not persuasive of reversible error for
reasons explained by the Examiner (Ans. 15–16.) Appellant has not refuted
the Examiner’s determination that RT describes methods of producing food
compositions (velouté sauce) that comprise formation of gelatinized starch at
elevated temperatures and cooling the gelatinized sauce to temperatures as
low as 4°C as described by Bruno. (Final Act. 8–10.) While RT fails to
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disclose the amount of salt added after formation of the cooled gelatinized
starch, we concur with the Examiner that the additionally cited references
establish the obviousness of adding salt to the preformed cooled gelatinized
starch. The Examiner cites Ponkin, Cunningham, and Buchanan for
describing formation of gelatinized starch products wherein salt was added
after gelatinization. Appellant has not presented arguments refuting the
teachings of these references.15 The Examiner cited Stypula as evidence of
obviousness for addressing the amount of salt added. (Final Act. 12–13.)
Accordingly, based on the collective teachings of the applied prior art,
we are in full agreement with the Examiner that it would have been obvious
for one of ordinary skill in the art to perform the method of producing an
inhomogeneous sodium distribution in a food composition comprising the
addition of salt to cooled gelatinized starch. The references cited by the
Examiner established the process of forming gelatinized starch at elevated
temperatures, cooling the gelatinized starch and subsequently adding salt to
the gelatinized starch. These are the process steps required by the claimed
invention to form an inhomogeneous sodium distribution in a food
composition. It is well settled that it is a matter of obviousness for one of
ordinary skill in the art to combine conventional ingredients in a food
product, and to determine their optimum amounts, in the absence of
evidence that the ingredients coact or cooperate in a manner to produce an
unexpected result. See In re Levin, 178 F.2d 945, 948 (CCPA 1949). In the
present case, Appellant has not established that the claimed ingredients in

15 Appellant only argues that the assertion that all aspects of the claimed
invention were individually known in the art is not sufficient to establish a
prima facie case of obviousness. (Appeal Br. 12.)
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the recited amounts achieve an unexpected result with respect to the method
of preparation. Appellant has failed to direct us to evidence that establishes
the technique rendered obvious by the cited prior art for the addition of salt
to a food composition comprising cooled gelatinized starch would have
failed to result in an inhomogeneous sodium distribution in a food
composition. In other words, Appellant has failed to establish that the
techniques of the cited prior art would have resulted in a homogeneous
sodium distribution in a food composition.
We have considered the Woo Declaration, but do not find it
persuasive. Although factual evidence is preferable to opinion testimony,
such testimony is entitled to consideration and some weight so long as the
opinion is not on the ultimate legal conclusion at issue. While an opinion as
to a legal conclusion is not entitled to any weight, the underlying basis for
the opinion may be persuasive. In re Chilowsky, 306 F.2d 908, 916 (CCPA
1962). Some weight may be given to a persuasively supported statement of
one skilled in the art on what was not obvious to him (see In re Lindell, 385
F.2d 453, 456 (CCPA 1967) and In re Weber, 341 F.2d 143 (CCPA 1965)).
Here, the declarant Woo has provided his opinion “that one of skill would
not have combined the cited references to arrive at the present claims
requiring adding to the insoluble starch gel at least 0.30 wt.% to 3.50 wt.%
of sodium chloride.” (Woo Declaration ¶ 7.) The declarant Woo makes the
conclusory statement that “there is no reason that the skilled person would
adjust the amount of salt to be specifically the claimed range of 0.30 wt.% to
3.50 wt.%” and “[n]one of the other secondary references provide any
reason or motivation for the skilled artisan to modify RT with Stypula to
arrive at the claimed amount of sodium chloride.” (Woo Declaration ¶¶ 15,
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18.) The opinions lack persuasive merit because they do not adequately
explain how the declarant arrived at these conclusions.
Appellant relies on the examples in the Specification as evidence that
“the sauces prepared according to the present claims were perceived with
higher saltiness and longer duration of saltiness after intake.” (Appeal Br.
13 (emphasis omitted)).
We find no evidence proffered by the Appellant, which indicates that
the asserted significant improvement in performance results are derived from
either a direct or an indirect comparison between the claimed subject matter
and the closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392
(Fed. Cir. 1991); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Also, it is not clear from the showing relied upon in the Specification
whether the asserted improvement—saltiness and longer duration of
saltiness after intake—is due to the amount of salt added after cooking and
low temperature storage as exhibited in table 5 because the control example
has significantly less salt added before the cooking process. (Spec 16.)
Moreover, Appellant has not adequately explained why the showing referred
to in the Specification is commensurate in scope with the protection sought
by the claims on appeal.

Claims 2, 13, 14
Regarding claims 2, 13, and 14, we affirm the rejection of these
claims for the reasons advanced by the Examiner. Appellant has only
presented arguments as to independent claim 1 (discussed above) and has
not otherwise presented separate arguments on the merits of the subject
matter of claims 2, 13, and 14. In this regard, Appellant does not assert non-
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obviousness based on the additional limitations set forth in claims 2, 13, and
14. (Appeal Br. 15–16.) Because we do not find Appellant’s arguments
persuasive as to independent claim 1, it follows that these arguments are
unpersuasive as to claims 2, 13, and 14.
For the foregoing reasons and those the Examiner presents, we sustain
the rejection of claims 1, 2, 13, 14, and 28.

Rejection II
The Examiner rejects claims 3–5 and 18–20 over the combination of
RT, Bruno, Montignac, ISI, Ponkin, Cunningham, Buchanan, Stypula, PH,
and Slimgenics.
Appellant argues dependent claims 3–5 and 18–20 are patentable
because they depend from independent claim 1. (Appeal Br. 17–18.)
Appellant has only presented substantive arguments as to independent claim
1 (rejection discussed above) and has not otherwise presented separate
arguments on the merits for the rejections of claims 3–5 and 18–20. In this
regard, Appellant does not assert non-obviousness based on the additional
limitations set forth in claims 3–5 and 18–20 subject to these rejections by
explaining how the additional reference applied thereto by the Examiner fail
to establish the obviousness of the additional features recited in this
separately rejected dependent claims. Because we do not find Appellant’s
arguments persuasive as to independent claim 1, it follows that these
arguments are unpersuasive as to claims 3–5 and 18–20.

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Rejection III
The Examiner rejects claims 9 and 24 over the combination of RT,
Bruno, Montignac, ISI, Ponkin, Cunningham, Buchanan, Stypula, and PH
further in view of Fisher and Hingley.
Appellant argues dependent claims 9 and 24 are patentable because
they depend from independent claim 1. (Appeal Br. 19–20.) Appellant has
only presented substantive arguments as to independent claim 1 (rejection
discussed above) and has not otherwise presented separate arguments on the
merits for the rejections of claims 9 and 24. In this regard, Appellant does
not assert non-obviousness based on the additional limitations set forth in
claims 9 and 24 subject to these rejections by explaining how the additional
reference applied thereto by the Examiner fail to establish the obviousness of
the additional features recited in this separately rejected dependent claims.
Because we do not find Appellant’s arguments persuasive as to independent
claim 1, it follows that these arguments are unpersuasive as to claims 9 and
24.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 13, 14,
28
103(a) RT, Bruno,
Montignac, ISI,
Ponkin,
Cunningham,
Buchanan, Stypula,
PH
1, 2, 13,
14, 28

3–5, 18–20 103(a) RT, Bruno,
Montignac, ISI,
3–5, 18–
20

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Ponkin,
Cunningham,
Buchanan, Stypula,
PH, Slimgenics
9, 24 103(a) RT, Bruno,
Montignac, ISI,
Ponkin,
Cunningham,
Buchanan, Stypula,
PH, Fisher, Hingley
9, 24
Overall
Outcome
1–5, 9, 13,
14, 18–20,
24, 28

TIME PERIOD 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).
AFFIRMED