NUTRITION ACT. CO., LTD.

Patent Trials and Appeals Board

Mar 18, 2022

2022000353 (P.T.A.B. Mar. 18, 2022)

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. 14/835,682 08/25/2015 Hiromasa SUZUKI VN-0677PCTUS 1146 95765 7590 03/18/2022 William H. Bollman c/o JP Caliman Corporation 3 Corporate Park Suite 250 Irvine, CA 92606 EXAMINER WONG, LESLIE A ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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): usdocket@ryuka.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HIROMASA SUZUKI, MASAHITO ISHIKAWA, and YOKO WATANABE Appeal 2022-000353 Application 14/835,682 Technology Center 1700 Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and JAMES C. HOUSEL, Administrative Patent Judges. HOUSEL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 7, 8, and 10-24. See Final Office Action (“Final Act.”) dated July 7, 2020, 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM, but designate a NEW GROUND of REJECTION. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies NUTRITION ACT, CO., LTD. as the real party in interest. Appeal Brief (“Appeal Br.”) filed December 24, 2020, 5. Appeal 2022-000353 Application 14/835,682 2 CLAIMED SUBJECT MATTER The invention recited in the claims on appeal relates to a powdery yoghurt2 material and a method of making yoghurt from this material. Specification (“Spec.”) filed August 25, 2015, ¶ 1. Claim 7, reproduced below from the Claims Appendix to the Appeal Brief, is illustrative of the claimed subject matter: 7. A method of making an individual serving of yoghurt using non-yoghurt material, comprising: removing from a consumer package an individually- packaged portion of powdered milk mixed with 0.1 to 10 wt% of at least one strain of a lactic acid bacterium material, the lactic acid bacterium material being mixed with the powdered milk in powder form; reconstituting the milk in the individually-packaged portion of powdered milk mixed with the lactic acid bacterium material to form reconstituted milk with mixed-in lactic acid bacterium by adding non-heated water in a container; and converting the reconstituted milk with mixed-in lactic acid bacterium into a yoghurt for the first time by fermenting the reconstituted milk with mixed-in lactic acid bacterium in the container at a temperature of between 25°C and 35°C for 12-36 hours. REFERENCES The Examiner relies on the following prior art to reject the claims: Name Reference Date Wiessel et al. (“Wiessel”) US 2012/0114625 A1 May 10, 2012 2 “Yoghurt” and “yogurt” are used interchangeably in the record to mean the same thing. Appeal 2022-000353 Application 14/835,682 3 A.Y. Tamime and R.K. Robinson, YOGHURT SCIENCE AND TECHNOLOGY, Pergamon Press, NY, NY (1985), pp. 256-75 (“Tamime”). Susanne Myers, Hillbilly Housewife, https://www.hillbillyhousewife.com/yoghurt.htm, pp. 1-51 (2004) (“Hillbilly”). PJ Hamel, Homemade Yoghurt: Simple Pleasure, King Arthur Baking Co., https://blog.kingarthurflour.com/2011/06/28/homemade-yoghurt-simple- pleasure/, pp. 1-4 (2011) (“Hamel”). Len Light, History of EasiYo, EasiYo, http://www.easiyo.com/pdf/historybook.pdf, pp. 1-32 (“EasiYo”). REJECTIONS The Examiner maintains, and Appellant requests our review of, the following rejections: 1. Claims 7, 8, and 10-24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement; and 2. Claims 7, 8, and 10-24 under 35 U.S.C. § 103 as unpatentable over Tamime in view of Hillbilly, Hamel, EasiYo, and Wiessel. OPINION We review the appealed rejections for error based upon the issues Appellant identifies, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in 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.”)). After considering Appellant’s arguments and the evidence of record, we are not persuaded of reversible error in the stated rejections for the reasons set forth in the Appeal 2022-000353 Application 14/835,682 4 Examiner’s Answer, which we adopt as our own. We add the following for emphasis. Rejection 1: Written Description The Examiner rejects claims 7, 8, and 10-24 under 35 U.S.C. § 112(a) or § 112 (pre-AIA), first paragraph, as failing to comply with the written description requirement. Ans. 3. In particular, the Examiner finds that the original disclosure fails to support “using non-yoghurt material” as recited in claim 7. Id. The Examiner states that it is not clear what Appellant intends to be encompassed by “non-yoghurt material,” especially because the materials listed in claim 7 are yoghurt materials, e.g., milk and starter cultures. Id. at 5. Further, the Examiner finds that because Appellant neither uses nor defines “non-yoghurt material” in the Specification, the scope and meaning of such a recitation is unclear. Id. The Examiner acknowledges that Appellant argues that “non-yoghurt material” is intended to exclude any material that was converted into a yoghurt, but notes that this meaning is neither disclosed nor implied in the Specification. Id. Appellant acknowledges that the Specification fails to explicitly explain what is not in the powdery yoghurt material that is used to create the yoghurt for the first time. Appeal Br. 12. However, Appellant argues that the Specification teaches what ingredients are in the powdery yoghurt material, and asserts that none of these ingredients “are something that was previously a yoghurt.” Id. at 12-13. Appellant further contends that the purpose of including “non-yoghurt material” in claim 7 is to distinguish from conventional prior art which includes yoghurt starter cultures. Id. at 13. Appellant urges that “[n]either milk powder nor lactic acid bacterium were ever a yoghurt or derived from a previous yoghurt.” Id. Appeal 2022-000353 Application 14/835,682 5 Appellant’s arguments are not persuasive of reversible error. To begin, we note that “non-yoghurt materials” as recited in claim 7 is a negative limitation. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1347-48 (Fed. Cir. 2016) (“Negative limitations generally recite an express exclusion of material.”). A negative limitation, like any other limitation, must have adequate basis in the original disclosure under the written description requirement Section 112(a) or pre-AIA Section 112, first paragraph. In re Herz, 537 F.2d 549, 551−52 (CCPA 1976) (“it is necessary and proper to determine whether [the] specification reasonably supports a construction” that would exclude or include particular ingredients). As our reviewing court has explained, “[n]egative limitations are adequately supported when the specification describes a reason to exclude the relevant limitation.” Santarus, Inc. v. Par Pharm., Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012). Appellant fails to direct our attention to any expressed reason to exclude yoghurt materials, and specifically, dried yoghurt starter cultures. Although Appellant argues that none of the materials described in the Specification to be included in the powdery yoghurt powder or to be used in the method for making yoghurt “are something that was previously a yoghurt,” and the purpose of the negative limitation is to exclude yoghurt starter cultures, the negative limitation is neither described nor defined in the Specification. And importantly, Appellant has not shown that an ordinary artisan would have understood that the meaning of this negative limitation excludes any material that was previously a yoghurt or derived from a yoghurt, while permitting powdered milk and lactic acid bacterium material. To the contrary, as the Examiner explains, an ordinary artisan would have understood “non-yoghurt material” to exclude any ingredient one might Appeal 2022-000353 Application 14/835,682 6 normally find in a yoghurt, including dairy products and lactic acid bacterium material. In addition, Appellant fails to direct our attention to any disclosure explicitly, implicitly, or inherently teaching that the invention excludes any material that was previously a yoghurt or derived from a yoghurt. Indeed, the Specification describes a product comprising milk powder and lactic acid bacterium as a “powdery yoghurt material.” Spec. ¶ 4 (emphasis added). The Specification also describes “a yoghurt making method using such a powdery yoghurt material.” Id. These disclosures teach that milk powder and lactic acid bacterium are yoghurt, rather than non-yogurt, materials. Accordingly, we sustain the Examiner’s written description rejection of claims 7, 8, and 10-24. New Ground of Rejection: Indefiniteness As discussed above, Appellant intends claim 7’s recitation of making yoghurt “using non-yoghurt material” to be interpreted as excluding any yoghurt material or material that is derived from yoghurt, including dried yoghurt cultures. However, such an interpretation is inconsistent with the Specification which refers to the combination of milk powder and lactic acid bacterium as a “powdery yoghurt material.” Spec. ¶ 4. In addition, as the Examiner explains, an ordinary artisan would have reasonably interpreted ingredients normally found in yoghurt, such as milk and lactic acid bacterium material to be yoghurt material. As such, the negative limitation, “non-yoghurt material,” is inconsistent with the recited ingredients in claim 7. Thus, claim 7 is both internally inconsistent and inconsistent with how the invention is described in the Specification. In addition, as the Examiner explains, in order to resolve such ambiguity, claim 7 may be interpreted to Appeal 2022-000353 Application 14/835,682 7 merely exclude materials that themselves are yoghurt, and not excluding dried yoghurt starter cultures, contrary to Appellant’s intent. Accordingly, we reject claims 7, 8, and 10-24 under 35 U.S.C. § 112(b) as failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention. We designate this a new ground of rejection in accordance with 37 C.F.R. § 41.50(b). Rejection 2: Obviousness In many cases, our affirmance of an indefiniteness rejection (or institution of a new indefiniteness ground of rejection) of the only independent claim on appeal would end our analysis because addressing prior art rejections under § 102 and § 103 would require undue and improper speculation. See In re Aoyama, 656 F.3d 1293, 1298-99 (Fed. Cir. 2011); In re Steele, 305 F.2d 859, 862 (CCPA 1962). However, in this case, as indicated above, claim 7 is ambiguous in that it is prone to alternative interpretations, one consistent with Appellant’s arguments and one consistent with the Examiner’s position. Therefore, for the sake of judicial efficiency we will exercise our discretion to reach the prior art rejection despite the indefiniteness of claim 7, based on the interpretation of this claim consistent with the Examiner’s position. See Ex parte Saceman, 27 USPQ2d 1472, 1474 (BPAI 1993); Ex parte Tanksley, 26 USPQ2d 1384, 1387 (BPAI 1991). In other words, for purposes of deciding the merits of this prior art rejection, we interpret claim 7’s recitation, “using non-yoghurt material,” as excluding yoghurt, but permitting dried yoghurt cultures. The Examiner rejects claims 7, 8, and 10-24 under 35 U.S.C. § 103 as unpatentable over Tamime in view of Hillbilly, Hamel, EasiYo, and Appeal 2022-000353 Application 14/835,682 8 Wiessel.3 Ans. 3-4. In particular, the Examiner finds that Tamime discloses a method for making yoghurt comprising mixing milk powder and a lactic acid bacterium material, and reconstituting the mixture with water at 10- 40°C. Id. at 3. The Examiner acknowledges that Tamime fails to teach the use of individual packaging. Id. The Examiner next finds that Hillbilly and Hamel each teaches the preparation of yoghurt comprising mixing water, dried milk, and a dried yoghurt culture.4 Ans. 3-4. The Examiner also finds that EasiYo teaches the use of individual packaging and reconstitution of yoghurt. Id. at 4. The Examiner concludes that it would have been obvious to have used a mixture of dried milk and dried lactic acid bacterium culture in individually packaged portions in Tamime’s process in order to provide for consumer convenience, wherein the selection of fermentation temperature and times are selected for optimum activity with a reasonable expectation of success. Id. at 4. Appellant argues that the prior art fails to teach a method of making an individual serving of yoghurt using non-yoghurt material, comprising individually-packaged portion of powdered milk mixed with at least one strain of lactic acid bacterium material, as recited in claim 7. Appeal Br. 18- 19. Appellant emphasizes that claim 7 not only recites that the yoghurt is 3 Appellant merely argues that Wiessel fails to remedy deficiencies in the combination of the remaining references in this rejection as applied to independent claim 7. Appeal Br. 23. Because the Examiner relies on Wiessel only for its teaching of features present in dependent claims (Ans. 4), we need not further discuss this reference. 4 Significantly, Hillbilly also teaches that acidophilous bacteria is available in powdered form, thereby suggesting the use of the bacteria directly, rather than a dried yoghurt culture. Hillbilly 2. Appeal 2022-000353 Application 14/835,682 9 made using non-yoghurt material, but that the ingredients include powdered milk and lactic acid bacterium material. Id. at 19. Appellant contends that these ingredients are converted into yoghurt for the first time by fermenting at low temperature. Id. In contrast, Appellant asserts that Tamime is directed to making an instant yoghurt by reconstituting an already fermented yoghurt, whereas the present invention is not a reconstituted instant yoghurt. Appeal Br. 19-20. Appellant also contends that Ferguson (US 3,080,236, issued Mar. 5, 1963), cited in Tamime, teaches away from the method of claim 7. Id. at 20. In particular, Appellant asserts that Ferguson teaches that prior attempts at rapid manufacture of yoghurt have resulted in poorly controlled growth conditions which yielded inferior quality and taste. Id. With regard to both Hillbilly and Hamel, Appellant asserts that each of these references teach preparation of yoghurt comprising mixing water, dried milk, and a dried yoghurt culture. Appeal Br. 21-22. Appellant asserts that a dried yoghurt culture is not a non-yoghurt material, which has never been a yoghurt to obtain a yoghurt for the first time. Id. With regard to EasiYo, Appellant asserts that this reference reconstitutes yoghurt, and does not use non-yoghurt material, much less reconstitute ingredients into a yoghurt for the first time, as claimed. Id. at 22. Appellant’s above arguments are not persuasive of reversible error. Initially, we note that Appellant presumes that the claims are limited to ingredients that have never been used to make yoghurt before and that the recitation, “using non-yoghurt material” excludes dried yoghurt cultures as disclosed in the references. However, as explained previously, Appellant fails to describe or define “non-yoghurt material,” yet includes materials Appeal 2022-000353 Application 14/835,682 10 commonly found in and used to make yoghurt, such as milk and lactic acid bacterium material. In addition, although claim 7 recites “converting the reconstituted milk with mixed-in lactic acid bacterium into a yoghurt for the first time,” this recitation merely requires that this particular mixture, the reconstituted milk with mixed in lactic acid bacterium, has not previously been converted to yoghurt. Contrary to Appellant’s assertions, this recitation does not require that the lactic acid bacterium was not a dried yoghurt starter culture. As such, claim 7 can reasonably be interpreted to permit use of dried yoghurt cultures, which are not themselves yoghurt. In other words, we interpret claim 7 to permit use of materials, such as dried yoghurt cultures, that are not themselves yoghurt. Because Appellant’s arguments are based on a different interpretation of claim 7, which excludes use of dried yoghurt cultures, these arguments do not address or apply to this interpretation. Appellant does not dispute that the dried yoghurt cultures disclosed by the prior art, including Hillbilly and Hamel, include lactic acid bacterium material. Appellant does not dispute or otherwise address the Examiner’s reliance on EasiYo as teaching and suggesting the use of individually packaged ingredients to make yoghurt, nor the Examiner’s position regarding the obviousness of the recited fermentation temperature and duration of claim 7. As such, Appellant has not identified reversible error in the Examiner’s prima facie case of obviousness. Appellant next argues that the present invention provides “unexpected results of a yoghurt converted from non-yoghurt material into a yoghurt for the first time, resulting in better taste and texture.” Appeal Br. 20, citing the Declaration of Hiromasa Suzuki under 37 C.F.R. § 1.132 (“Decl.”) filed May 26, 2020. However, Appellant merely reprints the Declaration Appeal 2022-000353 Application 14/835,682 11 primarily without significant comment, explanation, or elaboration. Appeal Br. 24-27. The Declaration also presumes that claim 7 is limited to reconstitution of ingredients, none of which have ever previously been used to make yoghurt or been derived from yoghurt, and that the recitation, “using non-yoghurt material” excludes dried yoghurt cultures as disclosed in the references. As such, the Declaration fails to address Hillbilly’s and Hamel’s use of dried yoghurt cultures which are themselves not yoghurt. The burden of establishing that unexpected results support a conclusion of nonobviousness rests with Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). Here, Appellant fails to carry that burden. “[I]t is well settled that unexpected results must be established by factual evidence. ‘Mere argument or conclusory statements in the specification does not suffice.’” See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) (“Attorney’s argument in a brief cannot take the place of evidence.”). The Declaration fails to allege or establish any result of the claim 7 process, as interpreted above, would have been unexpected to one of ordinary skill in the art. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (“[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.”). Nor does the Declaration offer or analyze any objective data in support of the opinions expressed therein. Velander v. Garner, 348 F.3d 1359, 1371 (Fed. Cir. 2003) (“In giving more weight to prior publications than to subsequent conclusory statements by experts, the Board acted well within [its] discretion.”); Ashland Oil, Inc. v. Delta Resins & Refractories, Appeal 2022-000353 Application 14/835,682 12 Inc., 776 F.2d 281, 294 (Fed. Cir. 1985) (“Lack of factual support for expert opinion going to factual determinations . . . may render the testimony of little probative value in a validity determination.”); In re Altenpohl, 500 F.2d 1151, 1158 (CCPA 1974) (lack of factual support rendered an affidavit of little probative value in overcoming obviousness rejection). Therefore, the Declaration fails to establish that the process of claim 7, as interpreted above, produces results that would have been unexpected to one of ordinary skill in the art. Appellant does not separately argue dependent claims 8 and 10-24. Accordingly, we sustain the Examiner’s obviousness rejection of claims 7, 8, and 10-24 over the combination of Tamime, Hillbilly, Hamel, EasiYo, and Wiessel. CONCLUSION Upon consideration of the record and for the reasons set forth above and in the Examiner’s Answer, the Examiner’s decision to reject claims 7, 8, and 10-24 under 35 U.S.C. § 112(a) as failing to comply with the written description requirement, and § 103 as unpatentable over Tamime in view of Hillbilly, Hamel, EasiYo, and Wiessel, is affirmed. Further, for the reasons given above, we reject claims 7, 8, and 10-24 under 35 U.S.C. § 112(b) as indefinite, and designate this a new ground of rejection. 37 C.F.R. § 41.50(b). DECISION SUMMARY The following table summarizes the outcome of each rejection: Appeal 2022-000353 Application 14/835,682 13 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 7, 8, 10- 24 112(a) Written Description 7, 8, 10- 24 7, 8, 10- 24 112(b) Indefiniteness 7, 8, 10-24 7, 8, 10- 24 103 Tamime, Hillbilly, Hamel, EasiYo, Wiessel 7, 8, 10- 24 Overall Outcome 7, 8, 10- 24 7, 8, 10-24 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. Appeal 2022-000353 Application 14/835,682 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). See 37 C.F.R. 41.50(f). AFFIRMED; 37 C.F.R. § 41.50(b)