Ex Parte 6,827,955 et al

Board of Patent Appeals and Interferences

Nov 17, 2010

95000311 (B.P.A.I. Nov. 17, 2010)

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.
95/000,311 10/24/2007 6,827,955 2664.035 1503
23405 7590 11/17/2010
HESLIN ROTHENBERG FARLEY & MESITI PC
5 COLUMBIA CIRCLE
ALBANY, NY 12203
EXAMINER
HUANG, EVELYN MEI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
11/17/2010 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

FORWARD FOODS, LLC,
Requester and Respondent

v.

PROTEIN BAR TECHNOLOGIES, LLC,
Patent Owner and Appellant
____________

Appeal 2010-008235
Reexamination Control 95/000,311
Patent 6,827,955 B2
Technology Center 3900
____________

Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL1

1 The one-month time period for filing a request for rehearing, as recited in
37 C.F.R. 41.79, and the two-month time period for filing an appeal, as
recited in 37 C.F.R. § 1.304 (see 37 C.F.R. § 1.983(b)(1)), both begin to run
from the “MAIL DATE” shown on the PTOL-90A cover letter attached to
this decision.
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Patent 6,827,955 B2

2
This is a decision on appeal by the Patent Owner from the Patent
Examiner’s rejections of claim 1-51 in an Inter Partes Reexamination of U.S.
Patent No. 6,827,955. The Board’s jurisdiction for this appeal is under 35
U.S.C. §§ 6(b), 134, and 315. We affirm.

STATEMENT OF THE CASE
The patent in dispute in this appeal is U.S. Patent No. 6,827,955 B2
(hereinafter, “the ‘955 patent”), which issued December 7, 2004. The
named inventor is David J. McCabe.
A request for Inter Partes Reexamination under 35 U.S.C. §§ 311-318
and 37 C.F.R. §§ 1.902-1.997 for the ‘955 patent was filed on October 24,
2007 by a Third-Party Requester (Request for Inter Partes Reexamination
Transmittal Form) on the basis of prior art said not to have been relied on in
any rejection of the claims during the application’s prosecution before the
Patent Examiner. The Third Party Requester is Forward Foods, LLC (Third
Party Requester’s Respondent Brief dated Dec. 26, 2009 (hereinafter,
“Respondent Br.”)). The Patent Owner and Appellant is Protein Bar
Technologies, LLC (Patent Owner’s Appeal Brief dated Oct. 13, 2009
(hereinafter, “App. Br.”)). This appeal is related to co-pending
Reexamination Control No. 95/000,310 of U.S. Patent No. 6,830,766. An
oral hearing was held September 29, 2010. A transcript of the hearing will
be entered into the record in due course.
According to Appellant, at the time the brief was filed, one or more
claims of the ‘766 patent were the subject of litigation pending as Protein
Bar Technologies, LLC (plaintiff) v. Forward Foods, LLC et al. (defendants)
in the United States District Court for the Middle District of Florida (Case
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No. 8:07 CV 00464-JSM-MSS) (App. Br. 2). Appellant stated that the case
is currently stayed pending the outcome of this reexamination (id.).
The claims of the ‘955 patent are drawn to high protein foodstuffs
comprising specific amounts of protein, “carbohydrates, polyols, and
glycerine in combination,” fat, non-polyol sweetener, and a flavoring agent.
The foodstuff comprises “at least two layers.” There are three independent
claims: claims 1, 37, and 43. No amendments were made to the claims
during the reexamination proceeding.
There are eleven rejections, each which is appealed by Appellant.
The rejections are as follows:
1. Claims 1-3, 5-12, 14-19, 37, 38, and 40-42 under 35 U.S.C.
§ 102(e) as anticipated by Manning2 (Answer 6).
2. Claims 20-24, 27-31, and 33-35 under 35 U.S.C. § 103(a) as
obvious in view Manning and Pure Protein3 (id. at 8).
3. Claims 37-42 under 35 U.S.C. § 103(a) as obvious in view of
Mody4 and Manning (id. at 9).
4. Claims 37-51 under 35 U.S.C. § 103(a) as obvious in view of
Mody and Pure Protein (id. at 11).
5. Claims 1-5, 7, 8, 10, and 15-19 under 35 U.S.C. § 102(b) as
anticipated by Balance Bar5 (id. at 13).

2 U.S. Patent 6,576,253 B2 issued June 10, 2003.
3 Netrition.com, Pure Protein Bars 1-7 available at
http://web.archive.org/20001207195400/http://www3.netrition.com/pure_pr
otein_bars_page.html (“Pure Protein”).
4 U.S. Patent 6,676,982 B2 issued Jan. 13, 2004.
5 Balance Bar Gold Caramel Nut Blast Wrapper (“Balance Bar”).
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6. Claims 37, 38, and 40-44 under 35 U.S.C. § 103(a) as obvious in
view of Balance Bar and Pure Protein (id. at 14-15).
7. Claims 1, 2, 5, 8, 9, 11-25, and 27-36 under 35 U.S.C. § 103(a) as
obvious in view of Pure Protein, Manning, Mody, and/or Balance Bar (id. at
16).
8. Claims 7, 10, and 37-41 under 35 U.S.C. § 103(a) as obvious in
view of Pure Protein and Manning (id. at 18-19).
9. Claims 25 and 26 under 35 U.S.C. § 103(a) as obvious in view of
Pure Protein and Mody (id. at 20).
10. Claim 42 under 35 U.S.C. § 103(a) as obvious in view of Pure
Protein and Balance Bar (id. at 21).
11. Claims 1-51 under 35 U.S.C. § 103(a) as obvious in view of
Manning, Mody, Pure Protein, Balance Bar, and Labrada6 (id. at 21-22).
Claim 1 is representative and reads as follows:
1. A high protein foodstuff comprising:
(a) more than about 25% by weight of protein;
(b) less than about 60% by weight of carbohydrates, polyols,
and glycerine in combination;
(c) less than about 18% by weight of fat;
(d) less than 20% by weight of a non-polyol sweetener;
(e) at least one flavoring agent; and
(f) wherein said foodstuff comprises at least two layers, at least
one of said layers comprising at least about 25% protein.

6 Dave Ramirez, LEAN BODY® Award-Winning Bars: Building Muscle On-
the-Go 1-5 available at
http://web.archive.org/web20010208123246/http://www.labrada.com/produc
ts/bars_research.html (“Labrada”).
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CLAIM INTERPRETATION
Legal Principles
The “Board gives claim language its broadest reasonable
interpretation consistent with the specification.” In re Buszard, 504 F.3d
1364, 1368 (Fed. Cir. 2007). During patent examination proceedings, claim
terms are given “the broadest reasonable meaning . . . in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in the applicant's
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). This
mode of claim construction applies even in reexaminations. In re Am. Acad.
of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007).

Findings of Fact (FF)
Each of claims 1, 37, and 43 is drawn to a foodstuff with “a non-
polyol sweetener.” The Examiner interpreted the phrase to include only
“non-nutritive sweeteners” and not sugars (Answer 37). The following
disclosures are found in the ‘955 patent:
1.
The sweeteners may be added to improve or alter the taste of
the high protein foodstuff. The sweeteners of the present
invention are preferably, non-nutritive sweeteners, and may
include sucralose, aspartame, saccharin, and acesulfame
potassium.
(Col. 4, ll. 41-45.)
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2.
In a second preferred embodiment the high protein foodstuff
may further comprise a coating. In order not to alter or dilute
the ratio of protein to other nutritional components in the core
bar, the coating may also contain a high ratio of protein.
Generally, the coating comprises three principal nutritive
elements: (a) protein, (b) fat, and (c) polyol. Polyols (also
known as sugar alcohols) are employed in place of simple
sugars and other true carbohydrates because the polyols are
slowly metabolized and do not cause a sharp rise in blood
glucose following their ingestion. . . . A sweetener is added to
improve the appeal of the product and a natural or artificial
flavoring agent may be added for the same purpose.
(Col. 3, ll. 29-43.)
3. “Preferable carbohydrates, for fast energy in the present invention may
include glucose, fructose, galactose, sucrose, lactose, and maltose. Other
carbohydrates may include starches, glycogen, fibers, cellulose, beta glucan,
pectin, and guar gum.” (Col. 4, ll. 20-24.)

Analysis
Although the Examiner acknowledged that sugars are non-polyol
sweeteners, the Examiner took the position that sugars were excluded from
this sweetener class because (Answer 37-38):
(1) sugars were not described as non-polyols in the ‘955 patent;
(2) the carbohydrates of component (b) of the claim include sugars;
and
(3) the polyols recited in component (b) of the claim are recited to be
“in place of” sugars.
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The Examiner’s interpretation is not the broadest reasonable
interpretation, taking into account the disclosure of the ‘955 Patent. For the
following reasons, we conclude that the term “non-polyol sweetener” is
properly interpreted to comprise sugar.
While the ‘955 patent does not disclose that sugar is a non-polyol
sweetener, there is no evidence that this silence alone would have been
recognized by the ordinary skilled worker as an attempt to exclude sugar
from this class. To the contrary, sweeteners are more generally recognized
as a broad class of compounds, including preferred non-nutritive sweeteners
(FF1) – a class that would include non-nutritive non-polyol sweeteners.
Thus, the ‘955 patent has expansive, rather than limiting definitions.
The fact that sugars are separately described and included twice in
claim 1 – in component (b) as a carbohydrate and in component (d) as a non-
polyol sweetener – does not compel a different conclusion. Carbohydrates
are said by the ‘955 patent to include sugars (“glucose, fructose, galactose,
sucrose, lactose, and maltose”) as well as other compounds (FF3).
Component (b) of the claims puts a limit on the total carbohydrate content
and component (d) (when the non-polyol is a sugar) puts a limit on the
amount of sugar that is present in the carbohydrate – indicating that the
remaining part of the carbohydrate is one of the “[o]ther carbohydrates”
(FF3). The claim informs the ordinary skilled worker how much of the
carbohydrate content is comprised of sugar.
The Examiner argued that the polyols recited in component (b) of the
claim are recited to be “in place of” sugars, and therefore sugar would be
excluded from the claim. This argument is not persuasive. First, the ‘955
patent disclosure quoted by the Examiner referred to the coating (FF2), not
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the bar. Claim 1 would be reasonably understood to be directed to the bar
layers (which are recited to have a coating in the dependent claims).
Secondly, the claim expressly requires carbohydrates. Certain sugars are
characterized in the patent as preferred carbohydrates (FF2). It would not be
reasonable to read “carbohydrates” as necessarily excluding sugars in view
of the preference for carbohydrates that are sugars.

ANTICIPATION REJECTIONS (Rejections 1 & 5)
Claims 1-3, 5-12, 14-19, 37, 38, and 40-42 stand rejected as
anticipated under 35 U.S.C. § 102(e) by Manning.
Claims 1-5, 7, 8, 10, and 15-19 stand rejected as anticipated under 35
U.S.C. § 102(b) by Balance Bar.
Issues
Does Manning describe a food bar with all elements of the claim in
the manner as required under 35 U.S.C. § 102?
Does Balance Bar describe a food bar that meets the claimed amount
of non-polyol sweetener?
Legal Principles
Because the hallmark of anticipation is prior invention,
the prior art reference – in order to anticipate under 35 U.S.C. §
102 – must not only disclose all elements of the claim within
the four corners of the document, but must also disclose those
elements “arranged as in the claim.”
Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008)
(citing Connell v. Sears, Roebuck & Co., 722 F.2d 1542, 1548 (Fed. Cir.
1983)).
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“Given the considerable difference between the claimed range and the
range in the prior art, no reasonable fact finder could conclude that the prior
art describes the claimed range with sufficient specificity to anticipate this
limitation of the claim.” Atofina v. Great Lakes Chem. Corp., 441 F.3d
991, 999 (Fed. Cir. 2006).

Findings of Fact (FF)
CLAIM 1 MANNING BALANCE BAR
(a) “more than about 25%
by weight of protein”
FF4. from about 0 to about
80 weight %, preferably
about 20 to about 60
weight %, with about 40
being most preferred
(col. 16, ll. 23-32)

FF5.
Examples 1-3: about 17%
protein
Example 5: 12.3% protein
(App. Br. 18; cols. 26-29)

FF6. “Low-, no- or high-
protein food bars . . . may
be produced”
(col. 16, ll. 23-32)
FF16. 30% protein
(Answer 13; Balance Bar,
Nutrition Facts)
(b) “less than about 60%
by weight of
carbohydrates, polyols, and
glycerine in combination”
FF7. Generally from about
0 to about 99 weight %,
preferably from 1 to about
60 weight %, with about 40
% being most preferred
(col. 16, ll. 1-10)
FF8. Example 3 comprises
50% carbohydrate and
includes sorbitol (polyol)
and glycerine (col. 28)
FF17. 46% carbohydrates,
including sugar, glycerin,
and maltitol syrup (id.)

(c) “less than about 18% by
weight of fat”
FF9. Generally from about
0 to about 60 weight %,
preferably from about 1 to
about 40 weight %, with
FF18. 14% fat (Answer 14)
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about 20 preferred
(col. 16, ll. 45-48)
(d) “less than 20% by
weight of a non-polyol
sweetener”
FF10. Carbohydrates
include, dextrose, sugar
alcohols (col. 15, ll. 54-66)
FF11. “Low- or no-sugar
food bars may be
produced”
(col. 16, ll. 1-10)
FF12. Sugar is listed as an
optional ingredient
(col. 18, l. 50)
FF13. Examples 3, 4, & 5
comprise 30%, 35%, and
about 37% sugar,
respectively
(App. Br. 18)
FF19. 34% sugar
(App. Br. 28; Balance Bar,
Nutrition Facts)
(e) “at least one flavoring
agent”
FF14. flavoring agents
(col. 18, ll. 39-41)

(f) “wherein said foodstuff
comprises at least two
layers, at least one of said
layers comprising at least
about 25% protein”
FF15. Manning describes
a food bar with a base and
top layer which is coated
on the top, bottom, and all
sides with an outside
coating (Manning, col. 19,
ll. 26-36 & Fig. 1), and
such food bar can comprise
“a series of two, three,
four, five, six or more
layers” (id. at col. 22, ll., 1-
5).

FF20. Core overlaid with
caramel peanut layer
(Answer 13; Balance Bar)

CLAIM 37
(a) “more than about 25%
by weight of protein”
FF4-FF6
(b) “less than about 20%
by weight of
carbohydrates, polyols, and
glycerine in combination”
FF7, FF8
(d) “less than 20% by
weight of a non-polyol
sweetener”
FF10-FF13

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Analysis
Rejection over Manning Patent
To anticipate under section 102, a prior art reference must describe all
elements of the claimed invention arranged as they are recited in the claim.
Net MoneyIn, 545 F.3d at 1369. In this case, claims 1 and 37 require “less
than 20% by weight of a non-polyol sweetener.” Appellant contends that the
claims are not anticipated because Examples 3, 4, and 5 of Manning describe
food bars comprising 30, 35, and 37 weight % sugar (FF13), amounts which
do not meet the corresponding limitation of the claims. The Examiner did
not challenge this fact, but rather took the position that sugar is not a non-
polyol sweetener, but rather is a carbohydrate as in element (b) of the claims
(Answer 42).
We must reverse because the Examiner’s claim construction is in
error. A non-polyol sweetener, as that term is properly interpreted, includes
sugar. Thus, as argued by Appellant, Manning’s Examples 3, 4, and 5
describe food bars with sugars that are more than “20% by weight of a non-
polyol sweetener,” and are outside the scope of claims 1 and 37 (component
(d); FF13). There are additional teachings in Manning of “low sugar” and
optional sugar bars (FF11 & FF12). Manning also broadly discloses ranges
of protein, carbohydrate, and fat content in other sections of the patent (FF4,
FF6, FF7, & FF9; see Table supra summarizing Findings of Fact) which
overlap or encompass the claimed ranges. However, anticipation requires a
description of the invention with all its elements arranged as in the claim,
not simply a disclosure of those elements “within the four corners” of the
prior art document. Net MoneyIN, Inc., 545 F.3d at 1369. In this case, the
food components described in Manning are not assembled as in the claim,
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but appear as broadly stated ranges without the specificity that persons of
ordinary skill in the art would have recognized as description of the claimed
invention with all its limitations. Atofina, 441 F.3d at 999. Consequently,
the rejection of independent claim 1 and 37, and dependent claims 2, 3, 5-12,
14-19, 38, and 40-42 is reversed.

Rejection over Balance Bar
Claim 1 is directed to a “foodstuff” with specific amounts of protein,
carbohydrate, fat, and non-polyol sweetener. The Examiner found all the
claim limitations met by Balance Bar (FF16-FF19), anticipating the claimed
invention (Answer 14).
The Examiner incorrectly interpreted “non-polyol sweeteners” to
exclude sugars. Balance Bar describes a food bar with 34% sugar (FF19), an
amount which exceeds the claimed limit of less than 20% by weight of a
non-polyol sweetener. Because Balance Bar does not described this
limitation of claim 1, we reverse the rejection of claim 1, and dependent
claims 4, 5, 7, 8, 10, and 15-19, which incorporate all of the claim 1
limitations.

OBVIOUSNESS REJECTIONS (Rejections 2-4 and 6-11)
Issues
1. Did the prior art enable food bars with two layers?
2. Did the prior art references describe a food bar with one layer
comprising “at least 25% protein”?
3. Were the cited prior art references properly combined?
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4. Was there sufficient evidence of a long-felt, unmet need to
establish nonobviousness of the claimed invention?

Findings of Fact
FF21. In Example 1, Manning described a food bar with a bottom rice crisp
layer and a caramel top layer (Manning, cols. 24-26). Thus, each layer had a
different flavor.
FF22. Mody discloses that the “protein content of the [food] bar may come
from one or more sources and, based on the weight of the total bar, should
be about 5-25% by weight.” (Mody, col. 3, ll. 21-23.)
FF23. Mody’s food bar comprised a core and topping layers (Mody, col. 6,
ll. 34-35; col. 7, ll. 18-25; & col. 8, ll. 29-32). Example 1 of Mody is a food
bar with a peanut core and a caramel top layer (id. at col. 6, l. 45 to col. 7, l.
23).
FF24. The Balance Bar is a triple layer bar comprised of 30% protein
(Balance Bar, Nutrition Facts).
FF25. In claim 3 of Mody, the nutritional food bar contains a core layer
with 4-20% protein by weight of the bar (id. at col. 9, ll. 4-17).
FF26. Manning teaches that it places the nutritional supplements in a food
bar form to make “desirable-tasting”, “easily chewable”, and “gentle on the
stomach” to address the difficulty pregnant women have with ingesting
nutritional pills that can be difficult to swallow and cause regurgitation
(Manning, col. 4, ll. 55-57 & col. 3, ll. 1-19).
FF27. Mody teaches candy bars are “not considered as providing adequate
nutrition, having too low a protein content, typically less than 3%” (Mody
col. 2, ll. 4-6).
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FF28. Mody describes a nutritional food bar comprising a mixture of
vitamins, minerals, proteins carbohydrates, and fats with an “attractive taste
and chew texture.” (id. at col. 2, ll. 20-31.)
FF29. Pure Protein describes a “high protein bar that is relatively low in
carbs and fats” (Pure Protein, p. 1).

1. Enablement issue
Legal Principles
In patent prosecution the examiner is entitled to reject
application claims as anticipated by a prior art patent without
conducting an inquiry into whether or not that patent is enabled
or whether or not it is the claimed material (as opposed to the
unclaimed disclosures) in that patent that are at issue. In re
Sasse, 629 F.2d 675, 681 (C.C.P.A. 1980) (“[W]hen the PTO
cited a disclosure which expressly anticipated the present
invention … the burden was shifted to the applicant. He had to
rebut the presumption of the operability of [the prior art patent]
by a preponderance of the evidence.” (citation omitted)). The
applicant, however, can then overcome that rejection by
proving that the relevant disclosures of the prior art patent are
not enabled. Id.
. . . . .
Under §103, however, a reference need not be enabled; it
qualifies as a prior art, regardless, for whatever is disclosed
therein. . . . On remand, the district court should reconsider
obviousness with respect to Sugimoto, but should do so without
reference to whether Sugimoto is enabled, as enablement of the
prior art is not a requirement to prove invalidity under §103.”
Amgen Inc. v. Hoechst Marion Roussel Inc., 314 F.3d 1313, 1355, 1357
(Fed. Cir. 2003; footnote omitted).
The applicant has the burden of coming forward with evidence
in rebuttal, when the prior art includes a method that appears,
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on its face, to be capable of producing the claimed composition.
This burden may be met by presenting sufficient reason or
authority or evidence, on the facts of the case, to show that the
prior art method would not produce or would not be expected to
produce the claimed subject matter.
In re Kumar, 418 F.3d 1361, 1368 (Fed. Cir. 2005).

Analysis
Appellant contends that the cited prior art is not enabled for
manufacturing multi-layer bars which would bind together. Citing
statements made in the ‘955 patent, Appellant contends that the inventors
recognized problems with the manufacture of multi-layer bars with high
protein content, including short shelf-life due to molding and difficulties in
binding multiple layers together (Rebuttal Br. 10, citing the ‘955 patent at
col. 1, ll. 32-36). Appellant also relies upon the statement in the ‘955 patent
that, because of such difficulties, “such bars have not been manufactured
with multiple layers, each layer having a different flavor.” (‘955 patent, col.
1, ll. 38-40.)
Three references were cited by the Examiner as teaching food bars
with at least two layers: Manning, Mody, and Balance Bar.
• Manning’s bars were described as comprising a protein content
from 0-80% by weight, with preferred amounts of 20-60% and 40%,
although its examples had 17% protein or less (FF4 & FF5). In Example 1,
Manning described a food bar with a rice crisp layer topped with a caramel
layer (FF21). Each layer had constituents and therefore a different flavor.
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• Mody described a bar with about 5-25% by weight protein (FF22).
Example 1 was of a bar with peanut core layer and a caramel top layer
(FF23). Each layer was therefore flavored differently.
• The Balance Bar is a triple layer bar with 30% by weight protein
(FF24).
Based on the prior art disclosure of three different food bars, each
comprised of least two layers, the Examiner reasonably found that persons
of ordinary skill in the art would have been enabled to also manufacture such
bars.7 “[W]hen the prior art includes a method that appears, on its face, to
be capable of producing the claimed composition,” the burden is properly
shifted to the Appellant to come forward with rebuttal evidence. Kumar,
418 F.3d at 1368. Since the cited prior art appear on their face to describe
an enabled method of making a multi-layered bar, the Examiner properly
shifted the burden to Appellant to show that they did not.

7 The Manning patent also claimed food bars and methods of making food
bars with bottom and top layers (see Manning claims 1 & 4). As Manning
is a U.S. patent, the Examiner properly presumed, on the basis of this
explicit disclosure, that Manning was enabled, shifting the burden to
Appellant to overcome the presumption. See Amgen Inc. v. Hoechst Marion
Roussel Inc., 314 F.3d at 1355 (the presumption of enablement was with
respect to a patent applied as an anticipatory reference; the presumption
arises because of a patent’s assumed validity and therefore would operate
under section 103, as well). While the claims do not recite the presence of
protein, the claims are open-ended and are directed to a “food bar.” Protein
is identified as a component of the food bar and therefore would be
encompassed by the open-ended Manning claims.

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Consequently, once the Examiner found that such bars were taught in the
prior art, the burden reasonably shifted to Appellant show that such bars
could not be manufactured without undue experimentation and that the
layers would not bind together. Id.
In sum, the Examiner’s findings were sufficient to shift the burden to
Appellant to provide arguments or rebuttal evidence as to why the prior art
lacked enablement for multi-layer bars.
Appellant contends the food bar’s high protein content would have led
to manufacturing problems (Rebuttal Br. 10; ‘955 patent, col. 1, ll. 31-32).
However, both Manning and Balance described multi-layer bars with a
protein content within, or at least overlapping, with the claimed “high
protein” bars comprising “more than about 25% by weight of protein” (FF4,
FF5, & FF16). Mody’s protein content of 20% (FF25) was very close to the
claimed lower limit of 25% by weight. Thus, multi-layer food bars having a
protein content matching, or very close to, the claimed protein content had
been described in the prior art. Appellant’s argument is therefore not
supported by the weight of the evidence.
The statement in the ‘955 patent that high protein multi-layer bars,
with each layer having a different flavor, had not been manufactured (‘955
patent, col. 1, ll. 38-40) is also not supported by the totality of the evidence.
Both Manning and Mody described the manufacture of two layered food
bars, where each layer had different food constituents imparting a different
flavor (FF21 & FF23).
In sum, in view of the strong case of obviousness established by the
multi-layer bars of Manning, Mody, and Balance Bar – with protein content
within, or overlapping with, the claimed range – Appellant’s statements
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about manufacturing difficulties and problems, unbuttressed by evidence,
are insufficient to overcome the obviousness rejection when considered in
view of all the evidence.

2. Recited amount of at least 25% protein in one layer
Analysis
Appellant contends that the prior art did not describe a food bar with
at least 25% protein in one layer.
Persons of ordinary skill in the art would have had reason to utilize
protein in food bars for its nutritional value (FF27). In this context,
Manning’s teaching of preferred amounts of 20-60% and 40% (FF4)
provided a reason to go beyond Mody’s teaching of 20% protein in the food
bar core layer (FF25). The purpose of both Manning and Mody was to
provide a food bar with a desirable and attractive taste (FF26 & FF28).
Increasing the protein content of Mody’s bar core would not have been
expected to destroy its taste appeal because Manning, who also teaches a
good tasting food bar (FF26), describes a food bar with even higher protein
amounts (FF4).

3. Whether the cited prior art references were properly combined?
Legal Principles
Although § 103 does not define what is meant by “prior art”,
this determination is frequently couched in terms of whether
the art is analogous or not, i.e., whether the art is “too remote to
be treated as prior art.” . . . .
Two criteria have evolved for determining whether prior art is
analogous: (1) whether the art is from the same field of
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endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor’s endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved.
In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992) (citing In re
Sovish, 769 F.2d 738, 741 (Fed. Cir. 1985)).

Analysis
Based on Pure Protein’s teaching of a high protein bar with “low
carbs” (FF29) and Manning’s of “low or no sugar” (FF6) bars, the Examiner
determined that persons of ordinary skill in the art would have had reason to
cut the carbohydrates in Mody’s food bar to make a “reduced calorie bar.”
(Answer 10 & 11.)
Appellant asserts that the low protein, high carbohydrate content of
Manning8 and Mody would have deterred their combination with Pure
Protein, which is said to be a high protein, low carbohydrate bar, because the
food bars are “opposite” with respect to these two components (App. Br. 21,
24, 26, and 32).
Each of Manning, Pure Protein, Mody, and Balance Bar involves food
bars and thus would have been considered pertinent and properly
combinable prior art, being “from same field of endeavor, regardless of the
problem addressed.” In re Clay, 966 F.2d at 659. Thus, while there might
be differences in the nutritional content between the different bars and the
purpose for which they are ingested, such differences would not have made
one reference any less pertinent to the claimed invention.

8 Appellant ignores statements in Manning that its bars could have low or no
sugar, but focused instead on the specific examples of 30%, 25%, and 37%
sugar.
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Appellant’s reading of Pure Protein is too narrow. Appellant’s own
patent recognized the “surge in popularity of low carbohydrate bars which
utilize glycerine in lieu of carbohydrates and sugars.” (’955 patent, col.1, ll.
26-28). The Examiner’s finding about the reason to reduce the carbohydrate
content of the prior art food bars is consistent with these statements in the
‘955 patent. Thus, persons of ordinary skill in the art would not have
restricted Pure Protein’s teaching about “low carb” bars (FF29) as limited to
bars with certain protein content, but would have viewed it as more
generally applicable to the food bar art. The Examiner therefore properly
determined the prior art provided a reason to reduce the sugar/carbohydrate
content of the food bars described in Manning, Mody, and Balance Bar.

4. Long-felt, unmet need
Legal Principles
In making an obviousness determination, we must consider any
relevant secondary considerations, including “long felt but unsolved needs.”
Graham v. John Deere Co., 383 U.S. 1, 17 (1966).
Objective evidence, as opposed to argument, “is necessary to establish
long-felt need. In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006).
Findings of Fact
30. Manning states that its food bars “have a shelf life of approximately six
to twenty-four months at normal room temperature.” (Id. at col. 8, ll. 1-2.)

Analysis
Citing the ‘955 patent specification, Appellant contends there was a
long-felt need, which they solved, for a food bar with high protein content,
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21
at least two layers, and which had a long shelf life with no molding problems
(Rebuttal Br. 10-11). Appellant contends that Examiner improperly failed to
consider these factual assertions made in the ‘955 patent and did not provide
credible evidence or sound reasoning to call those factual assertions into
question (id.).
Contrary to Appellant’s argument, the Examiner did provide evidence
and reasoning as to why Appellant’s assertion that a long-felt need was
solved by the inventors did not outweigh the evidence of obviousness. The
Examiner cited three prior art references – Manning, Mody, and Balance Bar
– for teaching two layered food bars. At least Manning and Balance Bar
described a bar with a protein content in the range characterized by
Appellant as “high protein” and Mody’s was close. Furthermore, Manning
described its bar as having a shelf life of about six to twenty-four months
(FF30). Thus, a high-protein, long shelf life multi-layered food bar had been
described in the prior art, providing a credible, fact-based reason for the
Examiner to shift the burden to Appellant to provide factual evidence that
the need for such a bar had not been met.
Apart from statements made in the ‘955 patent and in the Appeal and
Rebuttal Briefs, there is no objective evidence of a “long-felt need” and that
the inventors solved this need. As discussed above, the evidence in this
proceeding supports the Examiner’s determination that prior art enabled
persons of ordinary skill in the art to manufacture multi-layer, high protein
food bars with a long-shelf life. The “need” therefore had apparently
already been met by the prior art. Thus, while we have given the statements
in the ’955 patent weight, in view of the Manning, Mody, and Balance Bar
disclosures, we do not find these statements sufficient to dispel the
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presumption that the prior art was enabled for high protein, multi-layer food
bars with a long shelf life.

SUMMARY
The anticipation rejection 1 of claims 1 and 37, and dependent claims
2, 3, 5-12, 14-19, 38, and 40-42, under 35 U.S.C. § 102(e) in view of the
Manning patent is reversed.
The anticipation rejection 5 of claim 1, and dependent claims 4, 5, 7,
8, 10, and 15-19, under 35 U.S.C. § 102(e) in view of the Balance Bar is
reversed.
The obviousness rejections 2-4 and 6-11 of claims 1-51 under 35
U.S.C. § 103(a) are affirmed. Claims not separately argued fall with
independent claims 1 and 37. 37 C.F.R. § 41.37(c)(1)(iv).

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this Inter Partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See also 37 C.F.R. § 41.79.

ack

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