Criezis, Anthony William. et al.

Patent Trials and Appeals Board

Jan 28, 2020

13570860 - (D) (P.T.A.B. Jan. 28, 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.
13/570,860 08/09/2012 Anthony William Criezis 29610-102484-US 4040
109813 7590 01/28/2020
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
EXAMINER
MCCLAIN-COLEMAN, TYNESHA L.
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/28/2020 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 ANTHONY WILLIAM CRIEZIS,
BRUCE EDWARD CAMPBELL, LISA ANN DIERBACH,
JENNIFER LOUISE KIMMEL,
TIMOTHY DAVID KNIGHT, and JOSEPH MICHAEL SCHUERMAN

Appeal 2019–003057
Application 13/570,860
Technology Center 1700
Before JEFFREY B. ROBERTSON, N. WHITNEY WILSON, and BRIAN
D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 11–16, 18–20, and 34–40.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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 Koninklijke
Douwe Egberts B.V. which is a subsidiary of Jacobs Douwe Egberts which
is co-owned by Mondelez International and Acorn Holdings B.V. Appeal Br.
3. Appellant also states that Acorn Holdings B.V. is a subsidiary of JAB
Holdings Company. Id.
Appeal 2019–003057
Application 13/570,860

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a method of making a
concentrated dairy liquid (e.g., concentrated milk). Spec. ¶¶ 2, 9. Claim 1 is
illustrative:
11. A method of making a concentrated dairy liquid,
the method comprising:
pasteurizing a dairy cream;
concentrating the pasteurized cream to obtain a
concentrated cream retentate;
homogenizing the concentrated cream retentate to form a
homogenized cream;
adding a blend of dairy minerals to the homogenized
cream retentate;
heating the homogenized cream retentate including the
blend of dairy minerals to obtain a concentrated dairy liquid
having a Fo value of at least 5, the concentrated dairy liquid
having a protein to fat ratio of from about 0.04 to about 0.1 and
lactose in an amount of up to 1.5 percent,
wherein the dairy minerals are included in an amount
effective to provide at least two of the following mineral to
protein ratios in the concentrated dairy liquid:
about 0.017 mg to about 0.0264 mg potassium per mg
protein;
about 0.008 mg to about 0.0226 mg magnesium per mg
protein;
about 0.122 mg to about 0.3516 mg calcium mg per mg
protein; and
about 0.199 mg to about 0.5394 mg phosphate per mg
protein.

2 In this Decision, we refer to the Final Office Action mailed April 5, 2018
(“Final Act.”); the Appeal Brief filed September 5, 2018 (“Appeal Br.”); the
Examiner’s Answer mailed January 8, 2019 (“Ans.”); and the Reply Brief
filed March 8, 2019 (“Reply Br.”).
Appeal 2019–003057
Application 13/570,860

3
Independent claim 40 recites mineral to protein ratios similar to those of
claim 1.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Germann
Ward et al.
(“Ward”)
Kimmel et al.
(“Kimmel”)

Van Pelt et al.
(“Van Pelt”)
Kurokawa

Reference
US 1,912,073
US 2003/0165574 A1

US 2010/0104711 A1

AU 20107.76

EP 2 263 471 A1
Date
May 30, 1933
Sept. 4, 2003

Apr. 29, 2010

June 8, 1978

Dec. 22, 2010

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 11, 14–16, 18–20, 34–37, 39, and 40 under 35 U.S.C. § 103 as
obvious over Germann in view of Kimmel and Ward. Ans. 4–9.
B. Claims 12 and 13 under 35 U.S.C. § 103 as obvious over Germann,
Kimmel, Ward and further in view of Pleysier. Id. at 9–10.
C. Claim 38 under 35 U.S.C. § 103 as obvious over Germann in view of
Kimmel and Ward and further in view of Kurokawa. Id. at 10–11.

OPINION
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,
Appeal 2019–003057
Application 13/570,860

4
1445 (Fed. Cir. 1992) (“[T]he [E]xaminer bears the initial burden, on review
of the prior art or on any other ground, of presenting a prima facie case of
unpatentability.”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art or the inferences and creative
steps a person of ordinary skill in the art would have employed. See In re
Fine, 837 F.2d 1071, 1074 (Fed. Cir. 1988); see also KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 417 (2007). To resolve the issues before us on
appeal, we focus on the Examiner’s findings and determinations that relate
to the error Appellant identifies.
The Examiner rejects independent claims 11 and 40 as obvious over
Germann, Kimmel, and Ward. Ans. 4. The Examiner finds that Ward
teaches mineral ranges that overlap with the range claims 11 and 40 recite.
Ans. 18. The Examiner also explains that the art teaches reasons to vary
mineral content such that it would have been obvious to “select any portions
of the disclosed ranges, including the instantly claimed ranges of dairy
minerals from the ranges disclosed in the prior art references.” Id. at 7; see
also id. at 19.
Appellant argues that none of the cited references teach at least two of
the mineral to protein ratios recited by claims 11 and 40. Appeal Br. 14, 23
(incorporating arguments for claim 11 when addressing claim 40). In
particular, Appellant argues that the Examiner calculates the amount of each
mineral based on weight of the final product rather than based on the amount
of protein in the final product to determine mineral to protein ratios. Id. at
15–16.
Appeal 2019–003057
Application 13/570,860

5
Appellant’s argument identifies error. The Examiner relies on Ward as
teaching mineral ratios and calculates, for example, potassium percentage by
multiplying the percent of potassium in the supplement (0–5% (Ward ¶ 18,
Table 1)) by the percent of supplement in the beverage (1.48% (id. ¶ 34)).
Ans. 6. The result of the calculation, however, only provides a range for
amount of potassium in the beverage by weight. The Examiner does not
calculate how much protein is in the beverage or whether the ratio of
potassium to protein overlaps claim 11 and 40’s recited ranges.
Appellant provides an alternative calculation of Ward’s mineral to
protein ratio and argues that, according to Appellant’s calculation, only
Ward’s magnesium range overlaps with claim 11 and 40’s recited ranges.
Appeal Br. 15–16; see also Reply Br. 3–4. The Examiner states that
Appellant’s calculated ranges overlap with those presently claimed. Ans. 18.
The Examiner’s position is not supported by the evidence because,
according to Appellant’s calculations, the ranges prior ranges overlap with
the claim 11 and 40 ranges for only one out of the four minerals (for
magnesium), in contrast to the requirement in claims 11 and 40 that at least
two of the minerals be within the recited ranges.
The Examiner’s reliance on Appellant’s calculation also lacks an
adequate evidentiary basis because Appellant’s calculation is speculative.
Appellant’s calculation is based on Ward Example 1. Appeal Br. 15–16.
Appellant calculates a mineral to protein ratio for Ward by dividing an
amount of a given mineral (7.38 grams of minerals multiplied by Ward’s
percentage for an individual mineral as provided by Ward Table 1) with 30
grams of protein (as in Ward ¶ 36). Id. Ward, however, indicates 7.38 grams
of minerals (specifically, the TRUCAL mineral formulation) in its
Appeal 2019–003057
Application 13/570,860

6
“product.” Ward ¶ 34. Ward then states that an “11-ounce serving” provides
30 grams of protein. Id. ¶ 36. We do not know, however, whether the 11
ounce serving necessarily includes the same 7.38 grams of minerals as the
“product.” It, therefore, appears based on the present record that neither the
Examiner nor the Appellant accurately calculated the prior art’s mineral to
protein ratio. This mutual error supports reversal because the Examiner has
the burden to establish obviousness in the first instance. See In re Oetiker,
977 F.2d at 1445.
We also agree with Appellant that the Examiner has not adequately
established that the references recognize mineral to protein ratios—or
meeting at least two mineral to protein ratios as recited in claims 11 and
40—as a result-effective variable. Appeal Br. 18–20; see also Reply Br. 5.
Germann suggests that milk salt balance should be adjusted for sterilization
(Germann 3:20–28), and Ward teaches that a milk mineral component
should be provided in a “therapeutically effective amount” and that mineral
complexes have a “relatively neutral taste.” See Ward ¶¶ 11, 16. The
Examiner, however, has not adequately explained how these very broad
teachings, or the references’ other teachings, would have led a person of
skill in the art to reach claim 11 and 40’s recited mineral to protein ratios.
Indeed, the Examiner appears to only contend that a person of skill in the art
would select dairy minerals “from the ranges disclosed in the prior art
references” (Ans. 7), and, as explained above, the Examiner has not
adequately established what mineral to protein ratios (if any) the cited
references disclose.
Because Appellant’s identify error in the Examiner’s rejection of
claims 11 and 40, we do not sustain those rejections. Because the
Appeal 2019–003057
Application 13/570,860

7
Examiner’s treatment of dependent claims does not cure this error, we also
do not sustain the Examiner’s rejection of the remaining claims on appeal.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11, 14–16,
18–20, 34–
37, 39, 40
103 Germann, Kimmel,
Ward
11, 14–16,
18–20, 34–
37, 39, 40
12, 13 103 Germann, Kimmel,
Ward, Pleysier
12, 13
38 103 Germann, Kimmel,
Ward, Kurokawa
38
Overall
Outcome
11–16, 18–
20, 34–40

REVERSED