Ex Parte Albus

Patent Trial and Appeal Board

Sep 13, 2017

14064870 (P.T.A.B. Sep. 13, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/064,870 10/28/2013 James F. Albus JFA3USA 4221
270 7590 09/15/2017
HOWS ON fr HOWS ON T T P
EXAMINER
350 Sentry Parkway
Building 620, Suite 210
LEBLANC, KATHERINE DEGUIRE
Blue Bell, PA 19422 ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
09/15/2017 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docketing@howsoniplaw.com
ckodroff@howsoniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES F. ALBUS
Appeal 2017-001189
Application 14/064,870
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant requests our review under 35 U.S.C. § 134(a) of a final
rejection of claims 1-11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a process for treating cocoa cake. App. Br. 3-6.
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A process for treating cocoa cake comprising the steps
of:
pregrinding pressed or expelled cocoa cake using mechanical
pregrinding means, there by producing a preground raw
cocoa cake;
Appeal 2017-001189
Application 14/064,870
introducing a blend comprising said preground raw cocoa cake
and water into a recirculating jet mill;
introducing superheated steam into the recirculating jet mill,
bringing said superheated steam into direct contact with
the preground raw cocoa cake and water blend within
said recirculating jet mill, thereby grinding the preground
raw cocoa cake in the mill using steam as the grinding
medium, and drawing off fine ground particles of cocoa
powder along with steam from the jet mill while
recirculating coarse particles;
separating a major part of said fine ground particles from steam
exiting from the mill for use as cocoa power; and
passing the steam remaining after the separation step through a
desuperheater and thence to means for separation of
remaining particulate matter from the steam.
App. Br. 15 (Claims Appendix).
The Examiner sets forth the rejection of claims 1-11 under 35 U.S.C.
§ 103(a) as unpatentable over Walker (US 1,167,956, issued Jan. 11, 1916)
in view of Albus (US 2009/0242672 Al, published Oct. 1, 2009), Chalin
(US 3,868,469, issued Feb. 25, 1975), and McDermet (US 1,800,740, issued
Apr. 14, 1931) in the Final Office Action entered October 28, 2015 (“Final
Act.”), and maintains this rejection in the Answer entered August 25, 2016
(“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejection of
claims 1-11 under 35 U.S.C. 103(a) for the reasons set forth in the Final
Action, the Answer, and below.
2
Appeal 2017-001189
Application 14/064,870
Claims 1-9 and 11
Appellant argues claims 1-9 and 11 as a group on the basis of claim 1,
to which we limit our discussion. App. Br. 9-13; 37 C.F.R.
§ 41.37(c)(l)(iv).
Walker discloses a process of making cocoa powder from cake cocoa
that involves breaking up cake cocoa in a “breaking up machine” while
uniformly heating it to a preferred temperature of from 120°F to 135°F via a
steam-jacket disposed on the machine. Walker 1,11. 11-12, 83-97. Walker
discloses cooling cocoa particles thus produced by introducing the particles
into pipes through which cool air flows. Walker 2,11. 1-17. Walker
discloses that the cocoa particles become suspended in the cool air and rub
against each other as they flow through the pipes, which reduces and refines
the particles. Walker 2,11. 45-57. Walker discloses sieving the particles
“[ajfter the cooling and refining” to separate fine from coarse particles, and
discloses returning cocoa unsuitable for sieving back to the breaker machine.
Walker 2,11. 69-74; 5,11. 14-16.
The Examiner finds that Walker does not disclose a recirculating jet
mill in which superheated steam directly contacts processed material, and
the Examiner relies on Albus for suggesting use of such an apparatus for
treating cocoa. Final Act. 3. Albus discloses that jet mills effectively reduce
particulate solid material to extremely fine particle sizes “by causing the
particles to collide with one another while traveling at high velocity in a
stream of gas, usually air or steam.” Albus 1,2. Albus discloses that a
typical jet mill comprises a conduit arranged to form a closed loop through
which a stream of air or superheated steam (a gas stream) circulates at high
velocity. Albus 4, 25. Albus discloses that operation of such a jet mill
3
Appeal 2017-001189
Application 14/064,870
involves introducing particulate raw material into the gas stream, which
feeds the material to a grinding chamber, where particles of the material
“collide with one another to effect pulverization.” Albus ^ 4. Albus
discloses that the jet mill then feeds the particles from the grinding chamber
to a classifier that separates fine particles from larger particles. Albus 4,
6. Albus discloses that after passing through the classifier, heavier particles
return to the grinding chamber, while fine particles exit the conduit along
with the gas stream and are subsequently separated from the gas. Id.
The Examiner finds that one of ordinary skill in the art would have
been led at the time of Appellant’s invention to regrind the coarse particles
produced from Walker’s process using the recirculating jet mill disclosed in
Albus to produce appropriately-sized fine particles. Final Act. 4; Ans. 6-7.
The Examiner further relies on Chalin’s disclosure of mixing ground
cocoa cake with an aqueous alkaline solution and cooking/pressurizing the
mixture at a temperature of 150°F-230°F to improve the color of the cocoa
and obtain an infinite variety of shades and tones. Final Act. 4; Chalin
Abstract, col. 2,11. 58-63, col. 3,11. 45-52. The Examiner finds that one of
ordinary skill in the art would have been led at the time of Appellant’s
invention to add an aqueous alkaline solution as disclosed in Chalin to
Walker’s cocoa cake during or after the breaking and heating process to
impart a desired color to the cocoa. Final Act. 4.
Appellant argues that although one of ordinary skill in the art might
have perceived Albus’ jet mill to be suitable for grinding cocoa, the skilled
artisan would not have expected Albus’ jet mill to work as “a suitable
4
Appeal 2017-001189
Application 14/064,870
substitute for Walker’s breaking up machines” because the superheated
steam of Albus’ jet mill would heat cocoa to a temperature far outside
Walker’s preferred range of 120°F-135°F. App. Br. 12-13.
However, the Examiner’s rejection is not based on substituting Albus’
jet mill for Walker’s breaking up machine. Rather, as set forth above, the
Examiner finds that one of ordinary skill in the art would have been led to
process course cocoa particles produced by Walker’s breaking up machine
in a recirculating jet mill as disclosed in Albus to produce appropriately-
sized fine particles, instead of recirculating the coarse particles back to
Walker’s breaking up machine as disclosed in Walker. Final Act. 4; Ans.
6-7. Thus, the Examiner’s rejection is based on combining Albus’ jet mill
with Walker’s breaking up machine, rather than substituting Walker’s
breaking up machine for Albus’ jet mill. Appellant’s arguments, therefore,
do not address the combination presented by the Examiner. In addition,
Appellant does not dispute that one of ordinary skill in the art reasonably
would have expected that coarse cocoa particles produced in Walker’s
breaking up machine could be successfully processed in Albus’ jet mill
using superheated steam to produce extremely fine particles. App. Br. 7-14.
Furthermore, as the Examiner points out (Ans. 10), Chalin’s
disclosure of cooking and pressurizing ground cocoa cake in an aqueous
alkaline solution at a temperature of 150°F-230°F would have suggested to
one of ordinary skill in the art that ground cocoa cake could be heated to the
temperature of superheated steam (greater than 212°F1) without
1 Although Appellant asserts that the temperature of superheated steam is
“higher than 212°C,” superheated steam actually has a temperature greater
than 212°F (greater than 100°C). App. Br. 8.
5
Appeal 2017-001189
Application 14/064,870
detrimentally affecting the cocoa. Consequently, one of ordinary skill in the
art reasonably would have expected that coarse cocoa particles produced by
breaking cocoa cake while heating to 120°F-135°F in Walker’s breaking up
machine could be successfully reduced to extremely fine particles by
subsequently treating them in Albus’ loop jet mill using superheated steam
as the operating medium, as recited in claim 1. In re Kubin, 561 F.3d 1351,
1360 (Fed. Cir. 2009) (“Obviousness does not require absolute predictability
of success ... all that is required is a reasonable expectation of success.”)
(emphasis omitted, citing In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988))
Appellant further contends that “even if it would have been obvious to
utilize Albus’ jet mill as a substitute for the mechanical grinding apparatus
in Walker’s cocoa process,” it would not have been obvious to utilize
superheated steam as the grinding medium,” and directly contact cocoa cake
with superheated steam, because doing so would raise the temperature of the
cocoa cake far above Walker’s preferred range. App. Br. 8-9. Appellant
asserts that one of ordinary skill in the art, therefore, would have opted for
air or a cooler gas as an operating medium in Albus’ jet mill rather than
superheated steam. App. Br. 8-9, 12.
However, as discussed above, Chalin’s disclosure of cooking and
pressurizing ground cocoa cake in an aqueous alkaline solution at a
temperature of 150°F-230°F would have suggested that cocoa could
withstand the temperature of superheated steam (greater than 212°F) without
any detrimental effect on the cocoa. Consequently, one of ordinary skill in
the art would have had a reasonable expectation that superheated steam
could be successfully used as the operating medium in Albus’ jet mill to
6
Appeal 2017-001189
Application 14/064,870
yield extremely fine particles from coarse cocoa particles produced in
Walker’s breaking up machine. Kubin, 561 F.3d at 1360.
Appellant further argues that Walker’s process differs from the
process disclosed in Chalin because Walker’s process does not treat cocoa
with an aqueous alkali solution. Reply Br. 3—4. Appellant contends that
Chalin, therefore, “cannot be properly relied upon as rendering obvious a
significant departure from Walker’s 120°F-135°F preferred temperature
range.” Id. However, as discussed above, the Examiner’s rejection is not
premised on departing from Walker’s preferred temperature range, but
instead is based on producing coarse cocoa particles in Walker’s breaking up
machine at Walker’s preferred temperature, and subsequently treating the
coarse particles in Albus’ jet mill using superheated steam. As also
discussed above, Appellant does not question that coarse cocoa particles
produced in Walker’s breaking up machine could be successfully processed
in Albus’ jet mill with superheated steam.
Appellant further argues that the Examiner erroneously finds that
Walker discloses using steam as a grinding medium. App. Br. 10.
However, as the Examiner explains in the Answer, “Walker does not
specifically teach using superheated steam as a direct grinding means,” but
discloses that a steam jacket on Walker’s breaking up machine heats cocoa
cake while it is being broken in the machine. Ans. 8. As discussed above,
the Examiner relies on Albus’ disclosure of using superheated steam in a jet
mill to reduce solid material to extremely fine particles.
Appellant also argues that Walker does not disclose a process
involving drawing off fine particles of cocoa powder along with steam from
a recirculating jet mill, and separating a major part of the fine particles from
7
Appeal 2017-001189
Application 14/064,870
the steam, as the Examiner asserts. App. Br. 11. However, the Examiner
clarifies in the Answer that Albus discloses such process steps. Ans. 8-9.
Specifically, as discussed above, Albus discloses that particles pass from the
grinding chamber through the classifier of Albus’ jet mill, and after leaving
the classifier, heavier particles return to the grinding chamber, while fine
particles exit the conduit along with the gas stream. Albus ]fl| 4, 6. Albus
further discloses that the fine particles are then separated from the gas
stream. Albus]} 6. Accordingly, the combined disclosures of Walker and
Albus would have suggested treating coarse cocoa particles produced in
Walker’s breaking up machine in Albus’ jet mill, and would have further
suggested separating fine cocoa particles from superheated steam that exits
the jet mill with the particles, as disclosed in Albus and recited in claim 1.
Therefore, Appellant’s arguments are unpersuasive of reversible error
in the Examiner’s rejection of claims 1-9 and 11 under 35 U.S.C. § 103(a),
and we accordingly sustain the rejection.
Claim 10
Claim 10 depends from claim 1 and recites that the temperature in the
jet mill is maintained at a level sufficiently high that sterilization of the
preground raw cocoa cake is carried out during grinding in the jet mill.
Appellant argues that the 120°F to 135°F temperature range disclosed
in Walker is unsuitable for sterilization. App. Br. 13-14. However,
Appellant’s argument again does not address the suggestion stemming from
the combined disclosures of Walker, Albus, and Chalin of processing coarse
cocoa particles produced in Walker’s breaking up machine in Albus’ jet mill
using superheated steam to produce extremely fine particles.
8
Appeal 2017-001189
Application 14/064,870
As the Examiner points out, Appellant’s Specification indicates that
heat from superheated steam used to process material in a steam-operated jet
mill functions to sterilize the material. Final Act. 5; Spec. ^ 34.
Accordingly, although Albus does not mention sterilization, processing
coarse cocoa particles produced from cocoa cake in Walker’s breaking up
machine in Albus’ jet mill using superheated steam as the operating medium
would have nonetheless sterilized the finely ground particles produced in the
jet mill. The fact that Appellant recognized this sterilizing function, which
would have naturally flowed from following the suggestions stemming from
the combined disclosures of the applied prior art, does not impart
patentability to the process of claim 10. PAR Pharm., Inc. v. TWI Pharm.,
Inc., 773 F.3d 1186, 1195 (Fed. Cir. 2014) (concept of inherency, when
applied to obviousness, is present “when the limitation at issue is the ‘natural
result’ of the combination of prior art elements”); Ex parte Obiaya, 227
USPQ 58, 60 (BPA1 1985) (“The fact that appellant has recognized another
advantage which would flow naturally from following the suggestion of the
prior art cannot be the basis for patentability when the differences would
otherwise be obvious.”)
Appellant’s arguments are therefore unpersuasive of reversible error
in the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a), and we
accordingly sustain this rejection.
DECISION
In view of the reasons set forth above and in the Final Action and the
Answer, we affirm Examiner’s rejection of claims 1-11 under 35 U.S.C.
103(a).
9
Appeal 2017-001189
Application 14/064,870
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
10