NESTEC S.A.Download PDFPatent Trials and Appeals BoardNov 2, 20202019006503 (P.T.A.B. Nov. 2, 2020) Copy Citation 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 Claims 10, 12, 15, 17, and 25–27 are withdrawn from consideration.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. Appeal 2019-006503 Application 14/787,840 2 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”). Appeal 2019-006503 Application 14/787,840 3 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. Appeal 2019-006503 Application 14/787,840 4 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 Appeal 2019-006503 Application 14/787,840 5 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.) Appeal 2019-006503 Application 14/787,840 6 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, Appeal 2019-006503 Application 14/787,840 7 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- Appeal 2019-006503 Application 14/787,840 8 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. Appeal 2019-006503 Application 14/787,840 9 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 Appeal 2019-006503 Application 14/787,840 10 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 Copy with citationCopy as parenthetical citation