Ex Parte 6830766 et al

Board of Patent Appeals and Interferences

Nov 17, 2010

95000310 (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.
95/000,310 10/24/2007 6830766 2664.036 1937
23405 7590 03/28/2011
HESLIN ROTHENBERG FARLEY & MESITI PC
5 COLUMBIA CIRCLE
ALBANY, NY 12203
EXAMINER
HUANG, EVELYN MEI
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/28/2011 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.

Patent of PROTEIN BAR TECHNOLOGIES, LLC,
Patent Owner and Appellant
____________

Appeal 2010-008237
Reexamination Control 95/000,310
Patent 6,830,766 B2
Technology Center 3900
____________

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

LEBOVITZ, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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Patent 6,830,766 B2

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This is a Request for Rehearing under 37 C.F.R. § 41.52 of the
Decision entered November 17, 2010 (“Dec.” or “Decision”), in the above-
identified inter partes reexamination of U.S. Patent No. 6,830,766.

STANDARD OF REVIEW
Appellant contends that the Board applied the improper standard of
review. According to Appellant:
Under Ex Parte Frye, BPAI Appeal 2009-006013
(February 26, 2010), an Examiner’s rejection is reviewed de
novo, so it is improper for the Board merely to rely on the
Examiner’s position of prima facie obviousness.
(Req. Reh’g. 2.)
We do not agree with Appellant’s characterization of Ex parte Frye,
94 USPQ2d 1072 (BPAI 2010). Frye emphasized that the Board’s role in an
appeal is “‘to review adverse decisions of examiners upon application for
patents.’” (Id. at 1075, quoting from 35 U.S.C. § 6(b) (2006)).
Procedurally, Frye stated that the Board “reviews the obviousness rejection
for error based upon the issues identified by appellant, and in light of the
arguments and evidence produced thereon.” (Id.) Frye noted that:
Filing a Board appeal does not, unto itself, entitle an appellant
to de novo review of all aspects of a rejection. If an appellant
fails to present arguments on a particular issue — or, more
broadly, on a particular rejection — the Board will not, as a
general matter, unilaterally review those uncontested aspects of
the rejection. . . Thus, the Board will generally not reach the
merits of any issues not contested by an appellant. . . . For
example, if an appellant contests an obviousness rejection only
on the basis that a cited reference fails to disclose a particular
limitation, the Board need not review the other, uncontested
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findings of fact made by the examiner underlying the rejection,
such as the presence of uncontested limitations in the prior art.
(Frye at 1075-76.)
Thus, Frye explicitly stated that an appellant is not entitled to de novo
review of all aspects of a rejection. Ex parte Frye was an appeal by an
applicant for a patent, not a patent owner in an inter partes reexamination
proceeding as is the case here. Nonetheless, as the patent owner in a
reexamination proceeding “may appeal from the final rejection . . . by the
primary examiner to the Board of Patent Appeals and Interferences” by the
same procedures as in a regular appeal, the standard articulated in Ex parte
Frye is applicable here. 35 U.S.C. §§ 134 and 314. Accordingly, contrary
to Appellant’s argument, we did not merely accept the Examiner’s position
of prima facie obviousness, but properly reviewed the aspects of the
Examiner’s rejection for error based on the issues identified by Appellant as
explained in the Decision and further emphasized below
ARGUMENTS
A. Appellant contends that we erred in finding that “the cited prior
art” disclosed a multi-layer food bar with at least 25% protein in one layer
(Req. Reh’g. 3).
As acknowledged by Appellant, we recognized there was no express
disclosure in Manning or Mody of a single layer with at least 25% protein,
but we agreed with the Examiner’s determination that this value would have
been obvious to the ordinary skilled worker. We wrote:1

1 All references to Findings of Fact (“FF”) and publications are to those that
appear in the Decision.

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Persons of ordinary skill in the art would have had reason to
utilize protein in food bars for its nutritional value (FF26). In
this context, Manning’s teaching of preferred amounts of 20-
60% and 40% (FF12) provided a reason to go beyond Mody’s
teaching of 20% protein in the core (FF27). The purpose of
both Manning and Mody was to provide a food bar with a
desirable and attractive taste (FF10 & FF24). 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, comprises even higher protein
amounts (FF12).
(Dec. 24.)
Appellant has not pointed to a factual error or a defect in our
determination, but simply argues that the asserted “at least 25%” limitation
is not found in either the Manning or Mody publication (Req. Reh’g. 3-4).
This argument has no merit because the rejection is based on 35 U.S.C. §
103, not § 102. Unlike § 102 which requires that the claimed invention be
described, expressly or inherently, in the cited prior art (In re Crish, 393
F.3d 1253, 1256 (Fed. Cir. 2004)), § 103 involves determining whether the
prior art would have reasonably suggested2 the claimed invention to the
ordinary skilled worker. Appellant’s argument is therefore not directed to
the correct standard of obviousness applied by the Examiner and in our
Decision.

2 “Often, it will be necessary . . . to look to interrelated teachings of multiple
[references] . . . and the background knowledge possessed by a person
having ordinary skill in the art, all in order to determine whether there was
an apparent reason to combine the known elements in the fashion claimed.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “[T]his analysis
should be made explicit,” and it “can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed new invention does.” Id.
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Appellant argues that we identified Finding of Fact 32 of Mody as
supporting the “at least about 25% protein limitation,” but contends that the
latter fact does not disclose the protein content of the food bar’s layer (Req.
Reh’g. 3-4).
Finding of Fact 32 was cited for disclosing two layers: a core and
coating. The protein content of Mody’s bar was summarized in Findings of
Fact 25 and 27 from Mody and 12 from Manning. (Dec. 22.) A reason was
provided as to why the skilled worker would have combined the publications
to have arrived at the protein content limitation (supra at 3-4). Appellant
has not identified an error in either the factual findings or reasoning set forth
in the Decision.
Appellant contends that in reaching our Decision, we ignored “the
manufacturing difficulties, well known in the art at the time of the invention,
of multi-layer bars having a single layer of 25% or more of protein.” (Req.
Reh’g. 4.) We do not agree. The manufacturing argument made by
Appellant was addressed on pages 17-20 of the Decision and found to be
unpersuasive.
As far as the Balance Bar publication, Appellant contends the Board
did not demonstrate that the publication disclosed 25% protein in a single
layer (Req. Reh’g. 4).
We reversed the anticipation rejection over the Balance Bar
publication (Dec. 29-30), but affirmed the obviousness rejection of the same
publication combined with Pure Protein (id. at 30-31). Appellant did not
appear to argue the 25% limitation in the briefs (e.g., App. Br. 29-30) nor
did Appellant identify where this argument was previously made.
Consequently, under the principles enunciated under Ex parte Frye, we were
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not obliged to review the Examiner’s determination with respect to this
limitation. As such argument was not made in the briefs, we consider it to
be a new argument which is not permitted in a request for rehearing under
37 C.F.R. § 41.52(a), except under specific circumstances which have not
been established here.
Appellant also contends that the discussion in the Decision about the
25% limitation only relied on the combination of Manning and Mody, and
thus the other obviousness rejections should be reversed (Req. Reh’g. 5).
Obviousness rejections 3, 7, and 11 (Dec. 3-4) involved the Manning
and Mody publications. Obviousness rejections 2, 4, 6, and 8-10 involved
different combinations of publications (id.). As to the latter rejections,
Appellant did not expressly argue in the Appeal or Rebuttal Briefs that the
“at least 25% protein” limitation was not met (see e.g., App. Br., pp. 18 and
23). Consequently, we were not obliged to review the Examiner’s
uncontested findings or determination with respect to this limitation. As
such argument was not made in the briefs, it is a new argument which is not
permitted in a request for rehearing under 37 C.F.R. § 41.52(a), except under
specific circumstances which have not been established here.
B. Appellant contends the Board’s obviousness determinations were
based on findings of fact that misapprehend the teachings and combinability
of the cited prior art.
(1) Appellant contends we misapprehended inherent difficulties in
formulating a multi-layer, high protein, low sugar food bar (Req. Reh’g. 6).
In our Decision, we addressed Appellant’s argument that prior art was
not enabled for manufacturing multi-layer bars in which the protein layers
would bind together (Dec. 17-20 & 24). We particularly noted that
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Appellant did not provide objective evidence to substantiate its assertions
about manufacture difficulties (id. at 18). Arguments of counsel cannot take
the place of evidence lacking in the record. Estee Lauder, Inc. v. L'Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997). Accordingly, we found arguments
of counsel outweighed by the evidence relied upon by the Examiner.
On pages 6-7 of the Request, Appellant presented a list of reasons as
to why undue experimentation was necessary to arrive at “the presently
claimed high protein foodstuff.” This appears to be simply a re-argument of
points made in their briefs. 37 C.F.R § 41.52(a) specifically states that the
“request for rehearing must state with particularity the points believed to
have been misapprehended or overlooked by the Board.” We did not
overlook or misapprehend Appellant’s argument, but addressed it on pages
18-20, 24, and 28 of the Decision. We concluded that Appellant’s
statements about manufacturing problems and lack of enablement were not
supported by adequate evidence.

(2) Appellant contends:
a de novo review of Manning would show that Manning teaches
away from the combination, because it teaches that when
glycerine and polyols are used, the amount of carbohydrates,
protein, and/or fat are no longer within the ranges recited in the
claims of the patent on appeal.
(Req. Reh’g. 8.)
As stated already, an appellant is not entitled to de novo review of all
aspects of a rejection. Frye, 94 USPQ2d at 1075. In the Decision, we
addressed why it would have been obvious to the ordinary skilled worker to
have combined Manning with the other cited publications (Dec. 16-17, 21,
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& 24). Appellant’s “teaching away” argument does not identify any point
misapprehended or overlooked in the Decision as required for a proper
rehearing request under 37 C.F.R. § 41.52(a).
Appellant also contends that “Manning teaches away from the present
invention, because it fails to recognize the binding problem that results in
food bars when high amounts of protein (like in the presently claimed
invention) are used.” (Req. Reh’g. 8.) We addressed Appellant’s
manufacturing arguments in the Decision, and particularly with respect to
Manning (Dec. 16-17). Appellant has not identified a point overlooked or
misapprehended in the Decision.
C. Appellant contends that the “Board Erred in Applying the
Presumption of Validity and Enablement to the Entire Disclosure of the
Cited Prior Art Patents, Rather than to Just the Claims Thereof.” (Req.
Reh’g. 8.)
This argument is not persuasive. Our discussion of an enablement
presumption was limited to Manning’s claims (Dec. 19). However, we also
gave another independent reason as to why the Examiner’s position was
reasonable:
Moreover, more generally and independently, “when 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 Manning appears on its face to
describe an enabled method of making a multi-layered bar, the
Examiner properly shifted the burden to Appellant to show that
it did not.
(Id.)
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Thus, it is evident that we did not apply a presumption of enablement
to the prior art, but rather found that Appellant had the burden of providing
evidence to rebut the Examiner’s determination that the prior art was
enabling for producing food bars with the claimed ingredients. We
considered Appellant’s arguments, but found they did not outweigh the
Examiner’s evidence that Manning was enabled for making multi-layer bars
with the claimed amounts of protein.
Appellant repeatedly argued in this proceeding about the need for
“undue experimentation” and “problems” associated with binding protein
layers having a “high” protein content. However, none of these arguments
was buttressed by objective evidence or expert testimony. On the other
hand, the prior art described food bars with multiple layers comprising
protein. The protein content of these multilayered bars was disclosed as
being greater than 25% for the whole bar, e.g., preferably from 20-60% and
40% in Manning and 30% in the Balance Bar (FF12, FF38). There is no
objective evidence in the record that allocating at 25% protein to any one
layer would have been problematic or something to be avoided in the
manufacturing process. High-protein bars were also known in the prior art
(FF14, FF22, FF34). Weighing the facts relied up by the Examiner versus
Appellant’s unsupported arguments, we properly determined that the
Examiner’s case was supported by a preponderance of the evidence before
us.

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.
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DENIED

bim
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FOR PATENT OWNER:

HESLIN ROTHENBERG FARLEY & MESITI, P.C.
5 COLUMBIA CIRCLE
ALBANY, NY 12203

FOR THIRD PARTY REQUESTER:

STROOCK & STROOCK & LAVAN, LLP
180 MAIDEN LANE
NEW YORK, NY 10038-4982