Christopher Barrett et al.

Patent Trials and Appeals Board

Aug 6, 2021

2020001946 (P.T.A.B. Aug. 6, 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.
13/173,298 06/30/2011 Christopher J. Barrett 7320US02 8890
7590 08/06/2021
John A. O'Toole
P.O. Box 1113
Minneapolis, MN 55440
EXAMINER
COX, STEPHANIE A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
08/06/2021 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER J. BARRETT, PATRICK C. DREESE,
DANIEL R. GREEN, VICTOR T. HUANG,
CHRISTINE NOWAKOWSKI,
FERN A. PANDA, and
SCOTT WHITMAN
Appeal 2020-001946
Application 13/173,298
Technology Center 1700
Before TERRY J. OWENS, WESLEY B. DERRICK, and
ELIZABETH M. ROESEL, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s decision to reject claims 1–4, 6–17, and 28–33. We have
jurisdiction under 35 U.S.C. § 6(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as General Mills, Inc.
Appeal Brief, filed July 30, 2019 (“Appeal Br.”), 4.
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We AFFIRM IN PART.
CLAIMED SUBJECT MATTER
The subject matter of the claims on appeal relates to reduced sucrose
sugar slurry coating syrup that includes non-hydrated insoluble starch
particles, methods for preparing the coating syrup, and methods for
preparing food pieces using the coating syrup. Claims 1, 11, and 13.
Claims 1, 11, and 13 are the independent claims on appeal:
1. A pre-sweetener reduced sucrose hypocrystalline sugar
slurry coating syrup, comprising:
40 - 70% sucrose (dry weight basis);
10 - 35% non-sucrose soluble solids;
1 - 20% non-hydrated insoluble starch having a particle
size of 50 microns or less; and,
8 - 25% moisture.
11. A method for preparing a pre-sweetener, reduced
hypocrystalline sugar slurry coating syrup, comprising
the steps:
A. Preparing a sugar make-up slurry comprising:
40 - 70% sucrose (dry weight basis),
10 - 35% non-sucrose soluble solids,
1 - 20% non-hydrated insoluble starch having a
particle size of 50 microns of [sic] less, and,
8 - 25% moisture; and
B. Heating the sugar make-up slurry with agitation to
below the gelatinization temperature of the starch at
170 - 250°F (75 - 121 °C) to dissolve the sucrose and
non-sucrose soluble solids to form a hot sugar slurry
coating syrup.
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13. A method for preparing food pieces coated with a pre-
sweetener, reduced sucrose hypocrystalline sugar slurry coating
syrup comprising the steps of:
(a) providing pieces of dried base;
(b) preparing a sugar make-up slurry comprising:
40 - 70% sucrose (dry weight basis);
10 - 35% non-sucrose soluble solids;
1 - 20% non-hydrated insoluble starch having a
particle size of 50 microns or less; and
8 - 25% moisture;
(c) coating the dried base pieces with the sugar make-up
slurry as a pre-sweetener coating, wherein the weight
ratio of dried base pieces to coating ranges from 10:1 to
0.5:1 to form coated pieces; and
(d) reducing the moisture content of the coated pieces to
a range of less than 5% to provide finished pre-sweetened
coated food pieces.
Appeal Br. 19–21.
REJECTIONS
The Examiner maintains the following grounds of rejection2:
Claims 1–4, 9–14, 17, and 28–33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Creighton (US 5,176,936, issued Jan. 5, 1993)
in view of Kamper (US 2009/0081349 A1, published Mar. 26, 2009); and
Claims 6–8, 15, and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Creighton in view of Kamper, and further in view of
Green (US 2005/0255218 A1, published Nov. 17, 2005).

2 Examiner’s Final Office Action dated March 4, 2019 (“Final Act.”);
Advisory Action dated April 26, 2019; Examiner’s Answer dated Nov. 15,
2019 (“Ans.”); See also Response After Final dated April 5, 2019.
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DISCUSSION3
For any ground of rejection, “the examiner bears the initial burden . . .
of presenting a prima facie case of unpatentability.” In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). We consider the record to determine whether
Appellant has identified reversible error in the Examiner’s rejection. 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))).
Upon consideration of the rejections, Appellant’s arguments, and
Examiner’s response to those arguments, we are unpersuaded of reversible
error in the Examiner’s rejection of claims 1, 9, 13, 14, 30, 31, and 33 over
Creighton in view of Kamper, but are persuaded of reversible error in the
Examiner’s rejection of claims 2–4, 10–12, 17, 28, 29, and 32 over
Creighton in view of Kamper, and of claims 6–8, 15, and 16 in further view
of Green.
Creighton and Kamper – Claims 1–4, 9–14, 17, and 28–33
Independent claim 1 is directed to a reduced sucrose sugar slurry
coating syrup that includes sucrose, non-sucrose soluble solids, and non-
hydrated, insoluble starch particles. Appeal Br. 19 (claim 1).
Creighton relates to ready-to-eat breakfast cereal products having a
cereal base formed into a hollow, pillow shaped piece and a sugar

3 We refer to the Specification filed June 30, 2011 (“Spec.”), the Final
Office Action, the Response After Final, the Advisory Action, the Appeal
Brief, the Examiner’s Answer, and the Reply Brief filed January 14, 2020
(“Reply Br.”).
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presweetening coating. Spec. Abstract. Creighton discloses compositions of
its puffed cereal base pieces, compositions of its sugar presweetening
coating, and how to apply the coating to cereal pieces to obtain a
presweetened ready to eat cereal product. See, e.g., Creighton, 1:16–20,
1:23, 3:50–58, 5:32–39, 9:29–68. The Examiner relies on Creighton for its
teachings of a pre-sweetener sugar slurry comprising 20 to 80% sucrose, 5 to
30% non-sucrose soluble solids, 15 to 35% moisture, and optionally other
ingredients. Ans. 3 (citing Creighton, 9:29–68). The Examiner determines
that the recited ranges of 40–70% sucrose, 10–35% non-sucrose soluble
solids, and 8–25% moisture are rendered prima facie obvious because they
“overlap or lie inside” the ranges disclosed by Creighton. Ans. 3.
Kamper relates to a sugar reduced aerated confection that includes a
non-hydrated polysaccharide filler ingredient, preferably starch in the form
of discrete particles, as an inert filler. Kamper, Abstract. Kamper discloses
that its improved aerated confection, i.e., a marshmallow, with high levels of
non-hydrated starch in particulate form to act as an inert filler can be made
by incorporating non-hydrated starch into a concentrated sugar syrup and
then using that syrup to form the marshmallow. See e.g., id. ¶¶ 14, 54–58,
119–126 (Example 1). Kamper discloses, in particular, that a syrup prepared
by boiling to dissolve sucrose and corn syrup solids and to concentrate the
resulting syrup and adding starch after cooling results in a useable syrup, but
that preparing a syrup with the same amount of starch (and other
ingredients) where the starch is added prior to the heating step results in a
viscous syrup that cannot be used. See, e.g., Kamper ¶¶ 119–124.
In rejecting independent claim 1, the Examiner relies on Kamper as
teaching the use of non-hydrated starch as an inert filler in its syrup that
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“acts as a substitute for sugar without adversely affecting the organoleptic
effects of the sugar syrup.” Ans. 4; Kamper ¶ 14. The Examiner also relies
on the non-hydrated starch “remain[ing] in particulate form in the syrup” as
meaning it is “insoluble.” Ans. 4 (citing Kamper ¶ 14). The Examiner also
relies on Kamper “teach[ing] that the starch has a particle size of 2-50
microns” and “that the starch is incorporated into the syrup in an amount up
to 35% (e.g. 0-35%).” Id. (citing Kamper ¶¶ 54, 56–58).
The Examiner determines that “it would have been obvious to one of
ordinary skill in the art to add a non-hydrated insoluble starch . . . to the
slurry of Creighton” because “Kamper discloses that it acts as an inert filler
without adversely affecting the organoleptic effects of the solution.” Id.
The Examiner further reasons that “[a]dding starch to Creighton will allow
the slurry of Creighton to continue to function predictably as a coating for
cereal pieces.” Id. at 5.
Appellant contends that the Examiner erred because there is “no
apparent reason to look to Kamper . . . to modify a coating slurry as in
Creighton.” Appeal Br. 7. Appellant highlights that Kamper concerns
production of an aerated confection while Creighton concerns a coating
slurry. Id. Appellant further contends that the Examiner’s reliance on
Kamper as disclosing that the added non-hydrated starch “acts as an inert
filler without adversely affecting the organoleptic effects of the solution”
falls short because “[t]here is no expressed or implied desire for an inert
filler in the coating of Creighton.” Id. at 7–8 (citing Final Act. 5). Appellant
also contends that the syrup disclosed by Creighton is not a concentrated
syrup, that “Creighton does not disclose concentrating the sugar syrup,” and
that “the addition of starch to the unconcentrated slurry syrup of Creighton
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would be contrary to [Kamper’s] teaching[]” and would “lead to an unusable
taffy like substance.” Id. at 8. In sum, Appellant contends that the
Examiner’s reasoning falls short because it fails to explain how the coating
of Creighton is deficient and how including starch as an inert filler
overcomes the deficiency or is otherwise desirable. Id.
Appellant’s arguments, detailed above, are not persuasive of
reversible error in the rejection of independent claim 1. Although Creighton
relates to a presweetened cereal and Kamper relates to an aerated confection,
both also relate to a slurry syrup. And Kamper specifically discloses, in its
Example 1A, a sugar syrup without starch, and in its Examples 1B–1C,
sugar syrups with starch, that all have amounts of sucrose, corn syrup
components, and water within the ranges disclosed in Creighton.
Compare Kamper ¶ 119 (Example 1 Table), ¶ 121, with Creighton, 9:37–39.
In short, both references are directed to preparation of a sugar syrup product.
Thus, the relevance of Kamper’s teaching of a slurry syrup with included
starch that has substantially similar properties and organoleptic effects is
clear on this record. As to the argument that “[t]here is no expressed or
implied desire for an inert filler,” it is also clear that Kamper reasonably sets
forth that a reduced sugar food product is desirable even if, and to the extent,
that Kamper achieves the reduction by reducing the sugar present in
“confectionary food products” used in “reduced sugar children’s RTE [ready
to eat] cereals.” See, e.g., Kamper, Abstract. The arguments that Creighton
does not disclose that its syrup is concentrated are not persuasive because
the moisture content disclosed in Creighton—15 to 35% water—overlaps the
“8–25% moisture” recited in claim 1. Creighton, 9:38–39. Further, the
rejection is not grounded solely on Creighton, but on the combined teachings
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of Creighton and Kamper, and Kamper explicitly teaches concentrating an
initial slurry syrup with heating. See, e.g., Ans. 12 (citing Kamper ¶ 121);
Kamper ¶ 121 (“slurry mixtures were then each individually boiled to
concentrate solids”). The argument that the combination would “lead to an
unusable taffy like substance” is likewise unpersuasive of error because
claim 1 does not require heating and because Kamper teaches that the
heating step, if required to dissolve the sugar and non-sucrose soluble solids,
is done prior to addition of the starch. Kamper ¶ 121. Accordingly, we
affirm the rejection of claim 1.
In rejecting claim 2, requiring that a portion of the starch is provided
from a low protein flour, the Examiner relies on Kamper’s disclosure of “a
cereal grain bran,” stating that it “is the same as applicant and therefore a
low protein flour.” Ans. 5, 12; Kamper ¶¶ 5–55. Appellant contends the
cited portion of Kamper provides “no mention of a low protein flour” and
that there is no prima facie case. Appeal Br. 9.
On this record, we find Appellant’s argument persuasive because the
Examiner fails to establish any basis for the relied on “cereal grain bran”
being a “low protein flour.” Accordingly, we reverse the rejection of
claim 2.
In rejecting claim 3, requiring “0.1% to about 15% of a finely milled
insoluble fiber,” the Examiner relies on Creighton’s disclosure of adding
finely milled fiber to the cereal piece itself, rather than the coating, and
determines that it would have been obvious to do so, reasoning that “[t]his is
merely a rearrangement of the location of the material that is well within the
ordinary skill as the final product still contains fiber” (Ans. 5) and that
“there is nothing unexpected . . . as the fiber would continue to function as
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expected” (id. at 12). Appellant contends that there is no suggestion of
adding fiber to the coating, that it is not merely a rearrangement of parts, and
that adding insoluble fiber to the slurry would change the properties of the
slurry. Appeal Br. 9–10.
On this record, we find Appellant’s argument persuasive because the
Examiner fails to establish a reason why a skilled artisan would have
modified a slurry syrup by including the recited fiber. “[O]bviousness
concerns whether a skilled artisan not only could have made but would have
been motivated to make the combinations or modifications of prior art to
arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC, 805 F.3d
1064, 1073 (Fed. Cir. 2015). Further, on this record, we discern no
sufficient reasoning to support the Examiner’s position that there is no
difference in the function of the fiber, particularly its function while it is in
the slurry syrup prior to being incorporated with the cereal piece. See Ans.
5, 12. Accordingly, we reverse the rejection of claim 3.
In rejecting claim 4, reciting a “sucrose crystallinity value of 25% v/v
or less” and types of included “non-sucrose soluble solids,” the Examiner
relies on Kamper’s disclosure “that good results are obtained” with a “sugar
syrup ha[ving] a crystallinity of about 10–20%” and determines that,
“therefore it would have been obvious to have the sugar slurry of Creighton
have a similar crystallinity.” Ans. 5, 12–13; Kamper ¶ 91. Appellant
contends that the Examiner’s reasoning falls short because “a crystallinity
that leads to good results for an aerated confection is not necessarily a
crystallinity that leads to a good coating composition.” Appeal Br. 10.
On this record, we find Appellant’s argument persuasive because the
rejection, as set forth for claim 1, is grounded on a combination to obtain a
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coating syrup for coating cereal, while the rationale for the recited
crystallinity fails to address this use, but is grounded instead on the
suitability for forming aerated confections. Compare Ans. 5 (highlighting
that the coating syrup would “continue to function predictably as a coating
for cereal pieces”), with id. at 5 (highlighting that “Kamper discloses that
good results are obtained” in forming aerated confections). In short, there is
no sufficient explanation for the obviousness of the recited sucrose
crystallinity value. Berk-Tek, 805 F.3d at 1073. Accordingly, we reverse
the rejection of claim 4.
In rejecting claim 9, reciting that “a portion of the non-hydrated starch
is supplied by an insoluble cereal grain bran,” the Examiner addresses this
claim in conjunction with claim 2 and relies on Kamper’s disclosure of “a
cereal grain bran.” Ans. 5 (citing Kamper ¶¶ 5–55). Appellant does not
raise an argument as to this claim, and the argument raised as to claim 2
does not apply. See Appeal Br. 9.
On this record, we find the Examiner’s position well founded and we
are not apprised of any error; accordingly, we affirm the rejection of claim 9.
Claim 10, reciting “a fat content of up to 15%,” depends from claim 4,
which rejection we reverse, as discussed above. Accordingly, we also
reverse the rejection of claim 10.
Claim 31, depending from claim 1, recites that discrete particles of
non-hydrated insoluble starch “remain as discrete particles in the . . . syrup.”
The Examiner rejects the claim in conjunction with independent claim 1.
Ans. 3–5. Appellant does not raise any particular argument as to claim 31.
See Appeal Br.; Reply Br.
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On this record, we determine that the Examiner’s basis for the
limitations of claim 31, as set forth in conjunction with the rejection of
claim 1, are well founded and we are not apprised of any error.
Accordingly, we affirm the rejection of claim 31.
Independent claim 11 is directed to a method of making a reduced
sucrose sugar slurry coating syrup including the steps of: (1) preparing a
“sugar make-up slurry” comprising sucrose, non-sucrose soluble solids, and
non-hydrated, insoluble starch particles; and (2) heating the “sugar make-up
slurry with agitation” at a temperature “below the gelatinization temperature
of the starch . . . to dissolve the sucrose and non-sucrose soluble solids.”
Appeal Br. 20 (claim 11).
In rejecting independent claim 11, the Examiner relies on Creighton
and Kamper as disclosing the preparation of “a pre-sweetener sugar slurry”
as set forth “with respect to claim 1” and further on Kamper’s teaching “that
the slurry is heated to 235–255[º] F to dissolve the ingredients followed by
cooling . . . to about [170º F]” and that it is well known in the art that
agitation provides thorough mixing. Ans. 6 (citing Kamper ¶ 21 [sic ¶ 121]).
Appellant highlights that, “[a]s claimed, the starch is added prior to
heating,” and argues that Kamper teaches a contrary process in which the
non-starch ingredients are heated and dissolved and concentrated to form a
concentrated syrup, to which the starch is only added after the concentrated
syrup has cooled. Appeal Br. 10–11 (citing Kamper ¶ 121). Appellant
further argues that “adding the starch prior to heating can lead to an unusable
product with a taffy-like consistency” and that the Examiner has failed to
explain why Creighton would have been modified to prepare a sugar make-
up slurry containing starch before heating as required in claim 11. Id. at 11.
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The Examiner responds that Appellant’s arguments that “only 1% of
starch, the lower end of the claimed range, will not result in a taffy like
material,” reasoning that “Applicant’s range is so low that the amount of
starch will not affect the properties of the syrup of Creighton.” Ans. 13.
Further, as to concentrating, the Examiner relies on the moisture content in
Creighton reaching levels as low as those recited in the claim. Id. (citing
Creighton, 9:30–65). The Examiner concludes again, on these
determinations, that it would have been obvious “to add starch to the syrup
of Creighton and heat the syrup, wherein the starch will not affect the
properties of the syrup due to what is taught by Kamper with the starch
being an inert filler and the low amount of starch present.” Id.
On this record, we are persuaded that the Examiner erred reversibly
because the Examiner’s reasoning ignores the teaching of Kamper that
heating the syrup solution while including the starch results in a thickening
of sugar slurry that includes starch, and the reasonable inferences that must
be drawn from that teaching. Specifically, the thickening that Kamper
reports upon heating its sugar slurry that includes starch reasonably indicates
that included starch is gelatinized during the heating process. As such, the
contended fact that the level of starch claimed is so low, being only 1%
starch, that the amount of starch will not affect the properties of the syrup is
inapposite. The claim requires that the heating with agitation is conducted
below the gelatinization temperature of the starch used, not that the level of
starch is so low that it will not significantly alter the coating syrup’s
properties. Further, under the Examiner’s reasoning, there would have been
no reason to use a combination of particular heating conditions and starches
to stay below the gelatinization temperature of the starch, and the Examiner
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has not shown that such a combination of conditions is inherently disclosed.
Accordingly, we reverse the rejection of claim 11.
Claims 12, 17, and 32 each depend from independent claim 11 and, as
such, incorporate the limitations of claim 11 not met by the rejection, as
discussed above. Accordingly, we reverse the rejections of claims 12, 17,
and 32.
Independent claim 13 is directed to a method for preparing pre-
sweetened coated food pieces coated with a reduced sucrose sugar slurry
coating syrup including the steps of: (1) providing pieces of dried base;
(2) preparing a sugar make-up slurry that includes sucrose, non-sucrose
soluble solids, and non-hydrated, insoluble starch particles; (3) coating the
dried base pieces with the sugar make-up slurry; and (4) reducing the
moisture content of the pre-sweetened coated food pieces. Appeal Br. 20–21
(claim 13).
In rejecting independent claim 13, the Examiner relies on Creighton
and Kamper as disclosing the preparation of the slurry, as set forth in
claim 1, and on Creighton for disclosure as to coating dried food pieces with
the slurry to form coated pieces and reducing the moisture content of the
coated pieces to meet the recited range of less than 5% moisture content.
Ans. 6–7 (citing Creighton, 9:29–68). As to the recited ratio of dried base
pieces to coating of “10:1 to 0.5:1,” the Examiner relies on Creighton’s
disclosure of an overlapping range of “20:1 to 4:1 (5g to 25g coating per
100g of dried base)” rendering the recited range prima facie obvious. Id.;
Creighton, 9:52–54.
Appellant raises, in effect, the same arguments that it raised in
contesting the rejection of claim 1 as to the recited sugar make-up slurry,
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namely, that Creighton and Kamper relate to a coating for a cereal and a
syrup for forming a marshmallow, respectively, and that there is no
motivation to combine the teachings or to modify the coating syrup of
Creighton. Compare Appeal Br. 11–13, with id. at 7–8. As to the further
coating and moisture removal steps, Appellant contends that the Examiner’s
reliance on Creighton’s method falls short because “there is no reason why
the modified coating of the Examiner’s combination would still be applied
[in] the same way as the unmodified coating.” Id. at 13.
Appellant’s arguments are not persuasive of reversible error in the
rejection of independent claim 13. As detailed above in regard to
independent claim 1, there is no deficiency identified as to the ground of
obviousness of the provided syrup.4 As to its use as a coating syrup,
including the coating and moisture removal steps, Appellant directs us to no
reason why a syrup including starch, prepared according to the teaching of
Kamper, and having substantially the same properties as a syrup without
starch, as taught by Kamper, would not reasonably be expected to function
as a coating syrup in Creighton’s method. Accordingly, we affirm the
rejection of claim 13.
Claim 14, depending from claim 13, recites that “at least a portion of
the dried base includes a R-T-E cereal.” The Examiner relies on “Creighton
disclos[ing] that the dried base is RTE cereal.” See Ans. 7. Appellant does
not raise any particular argument as to claim 14.

4 Here, we refer to the syrup prepared in accordance with the teaching of
Kamper with addition of the included starch after any heating necessary to
dissolve the sucrose and non-sucrose solids or to concentrate the syrup.
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On this record, we find the Examiner’s position well founded and we
are not apprised of any error; accordingly, we affirm the rejection of
claim 14.
Claim 28, depending from claim 13, recites that “preparing the sugar
make-up slurry further comprises[] heating the make-up sugar slurry with
agitation” at a temperature “below the gelatinization temperature of the
starch . . . to dissolve the sucrose and non-sucrose soluble solids.” Appeal
Br. 21–22 (claim 28). As in the rejection of independent claim 11, the
Examiner relies on preparing a sugar slurry according to Kamper’s method.
Compare Ans. 7, 13, with id. at 6, 14. Appellant highlights the deficiencies
in the Examiner’s rejection in the same manner as for claim 11. Compare
Appeal Br. 14–15, with id. at 10–11.
On this record, we are persuaded that the Examiner erred reversibly
for the reasons set forth above for independent claim 11. Accordingly, we
reverse the rejection of claim 28
Claim 29 depends from claim 28 and, as such, incorporates the
limitations of claim 28 not met by the rejection, as discussed above.
Accordingly, we reverse the rejection of claim 29.
Claim 30, depending from claim 13, recites that “a portion of the
starch is provided by a cereal grain bran.” The Examiner relies on Kamper
disclosing that the starch is provided by a cereal grain bran. Ans. 7 (citing
Kamper ¶ 55). Appellant does not raise an argument as to this claim.
On this record, we find the Examiner’s position well founded and we
are not apprised of any error; accordingly, we affirm the rejection of
claim 30.
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Claim 33, depending from claim 13, recites that discrete particles of
non-hydrated insoluble starch “remain as discrete particles in the . . . syrup.”
The Examiner rejects the claim in conjunction with independent claim 1.
Ans. 3–5. Appellant does not raise any particular argument as to claim 33.
On this record, we determine that the Examiner’s basis for the
limitations of claim 33, as set forth in conjunction with the rejection of
claim 1, are well founded and we are not apprised of any error.
Accordingly, we affirm the rejection of claim 33.
Creighton, Kamper, and Green – Claims 6–8, 15, and 16
Claim 6, depending from claim 1, recites that the “sugar slurry coating
syrup . . . additionally compris[es] about 5% to about 25% of an edible
insoluble mineral.” Appeal Br. 19 (claim 6). The Examiner relies on Green
disclosing “a coating slurry and specifically . . . that the coating can have
from 0.01 to 10% of an edible insoluble mineral, such as calcium
carbonate.” Ans. 8 (citing Green ¶¶ 35, 57).
Appellant argues that
Paragraph 35 of Green generally discloses that a coating can
contain an adjuvant material. There is no disclosure of an
edible insoluble mineral as part of a sugar coating syrup.
Further, paragraph 57 is directed to additives to a cereal base,
rather than a coating.
Appeal Br. 15–16; see also Reply Br. 4 (“Green teaches that insoluble
minerals may be added to a dry particulate or a cereal base.”).
The Examiner responds that, “[w]hile Green discloses that calcium is
part of the cereal base, Green also teaches that calcium fortification can be
part of the coating as well.” Ans. 14 (citing Green ¶ 57). The Examiner
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determines that it would have been obvious to provide minerals as taught by
Green in the sugar slurry of Creighton. Ans. 14.
In its arguments as to claims 7 and 15, Appellant contends that Green
uses a binder layer, such as a primer layer, and a dry powdered coating and
argues that “[t]he dry coating is not part of a slurry.” Appeal Br. 16, 17.
Appellant’s arguments identify reversible error in the Examiner’s
rejection as to the insoluble minerals being included in a slurry coating syrup
and as to them being included in the recited amounts. While paragraph 35 of
Green does disclose a coating that can include minerals, and that minerals
can be present in amounts “from about 0.01% to about 10% of the coating,”
there is no indication that the coating including minerals is provided as a
slurry or that the included minerals are insoluble minerals. Green ¶ 35.
Similarly, while paragraph 57 does disclose an insoluble mineral, i.e.,
calcium carbonate, and that it can be part of a coating, there is likewise no
basis in that disclosure for a coating slurry including the insoluble mineral,
i.e., calcium carbonate, in an amount according to the claim. Id. ¶ 57.
Rather, Green’s paragraph 57 discloses that “the cereal base can contain low
levels [of] calcium material for calcium fortification, e.g., up to about
0.005%–1.3% dry weight of calcium, such as supplied by calcium
carbonate” (emphasis added) and that “all or a portion of the calcium
fortification ingredient can be added as part of the particulate coating.” Id.
The Examiner’s reasoning is grounded on “Green disclos[ing] a
coating slurry” that includes the edible insoluble mineral (Ans. 8, 14), which
would be similar to the use of a slurry as taught by the combination of
Creighton and Kamper, discussed above. The method disclosed by Green,
however, instead forms a coating using an “adhesive layer” that is used to
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adhere a “dry powder” (Green ¶ 27), and the “particulate coating” (id. ¶ 57)
is reasonably be viewed as a “dry powder” rather than a constituent of a
slurry. See also id. ¶¶ 19–24 (summarizing the steps of Green’s method,
including applying an “adhesive primer coating in liquid form” and a coating
“in powder form”). There is no further rationale provided for combining the
disparate teachings of a sugar coating slurry according to the combination of
Creighton and Kamper with the teachings of Green to arrive at a sugar
coating slurry that includes about 5% to about 25% of an edible insoluble
mineral. See Ans. 8, 14–15.
Thus, for the reasons above, there is an insufficient basis set forth in
the rejection for a sugar coating slurry containing an edible, insoluble
mineral in an amount according to the claim. In re Warner, 379 F.2d 1011,
1017 (CCPA 1967) (“The Patent Office has the initial duty of supplying the
factual basis for its rejection. It may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”). Accordingly, on this basis, we reverse the rejection of claim 6.
Claims 7 and 8 each depend from claim 6 and, as such, incorporate
the limitations of claim 6 not met by the rejection, as discussed above.
Accordingly, we reverse the rejections of claims 7 and 8.
Claim 15, depending from claim 13, recites “the coating additionally
comprises about 5 – 10% of a calcium material.” Appeal Br. 21 (claim 15).
The Examiner relies on “Green disclos[ing] that it is known in the art for a
sugar coating to contain a mineral, such as calcium, in an amount from 1 to
10%.” Ans. 8 (citing Green ¶¶ 35, 57). In response to Appellant’s
arguments, the Examiner relies on “Green teach[ing] an overlapping range
of mineral and further teach[ing] that the mineral can be calcium carbonate.”
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Id. at 15. Appellant raises the same, or similar, arguments as it did to
claim 6. Appeal Br. 16–17; Reply Br. 4.
As with the rejection of claim 6, discussed above, there is no basis in
Green’s paragraph 35 for the mineral present in the coating in an amount
from 1 to 10% to be calcium carbonate and while Green’s paragraph 57 does
disclose calcium carbonate, it does so in a specific amount calibrated as a
percentage of the base material, not the coating. Nonetheless, the Examiner
again relies on Green teaching calcium carbonate in an amount from 1 to
10% in a sugar coating without further reasoning or explanation. Ans. 8. In
the face of Green teaching a specific amount of calcium carbonate to be
used, albeit calibrated as a percentage of the base material, more is needed to
support the reliance on Green to disclose or teach calcium carbonate in an
amount from 1 to 10% in a sugar slurry coating syrup. Further, there is
again a deficiency in the apparent reliance on Green as teaching a sugar
slurry coating syrup containing the included mineral in that no further
rationale is provided for combining the disparate teachings of a sugar
coating slurry according to the combination of Creighton and Kamper with
the teachings of Green to arrive at a coating comprising about 5 – 10% of a
calcium material. See Ans. 8, 15. Thus, there is an insufficient basis set
forth for the coating to include “about 5 – 10% of a calcium material.”
Warner, 379 F.2d at 1017. Accordingly, we reverse the rejection of claim
15.
Claim 16 depends from claim 15 and, as such, incorporates the
limitations of claim 15 not met by the rejection, as discussed above.
Accordingly, we reverse the rejection of claim 16.
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CONCLUSION
The Examiner’s rejection of claims 1, 9, 13, 14, 30, 31, and 33 over
Creighton in view of Kamper are affirmed, but the Examiner’s rejection of
claims 2–4, 10–12, 17, 28, 29, and 32 over Creighton in view of Kamper and
of claims 6–8, 15, and 16 in further view of Green are reversed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 9–14,
17, 28–33
103 Creighton, Kamper 1, 9, 13,
14, 30, 31,
33
2–4, 10–12,
17, 28, 29,
32
6–8, 15, 16 103 Creighton,
Kamper, Green
6–8, 15, 16
Overall
Outcome
1, 9, 13,
14, 30, 31,
33
2–4, 6–8,
10–12, 15–
17, 28, 29,
32
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 IN PART