Ex Parte Bartkowska et al

Board of Patent Appeals and Interferences

Nov 12, 2010

10920536 (B.P.A.I. Nov. 12, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BEATA BARTKOWSKA and JEFFREY UNDERDOWN
____________

Appeal 2009-010770
Application 10/920,536
Technology Center 1700
___________

Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and
KAREN M. HASTINGS, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL1

Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3, 5-9, 11-14, 18-21, and 29 under 35 U.S.C. §

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

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Application 10/920,536

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103(a) as being unpatentable over Martin (US 5,486,372, issued January,
1996). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Exemplary Claim
Representative claim 1 reads as follows:
1. A frozen aerated product comprising water, 0.1 to 35 w/w%
sweetener, 0.05 to 1 w/w% emulsifier, milk solids not fat in an amount of
0.25 to 20 %w/w and 2 to 20 w/w% vegetable fat component of which up to
20% by weight of the fatty acids are polyunsaturated fatty acids, less than
15% by weight of the fatty acids are linoleic acid and up to 50% by weight
of the fatty acids are saturated fatty acids; said frozen aerated product being
characterised in that the amount of de-emulsified fat expressed as a
percentage of the total fat present is 30% to 60% by weight
wherein the frozen aerated product is made by a process that includes
homogenizing and pasteurizing a premix comprising water, the vegetable fat
component and the sweetener; cooling the pasteurised premix to a
temperature below 0°C and keeping the temperature below 0°C for at least
two hours; and then freezing and aerating the homogenised cooled premix to
form the frozen aerated product.
Analysis
Appellants mainly focus the arguments on claim 1, and do not set
forth separate, substantive arguments for dependent claims 5, 18, 19-21 and
29 on appeal. Accordingly, appealed claims 5, 18, 19-21 and 29, stand or
fall together with claim 1. To the extent Appellants separately argue claim 2
and the group of claims 6-9 (App. Br. 15, 16), we shall likewise separately
address these claims (appealed claims 3 and 11-14 stand or fall with claim 2
from which they all depend).
We have thoroughly reviewed each of Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
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that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of Martin. Accordingly,
we will sustain the Examiner’s rejections for essentially those reasons
expressed in the Answer, and we add the following primarily for emphasis.
Appellants argue that Martin does not teach the claimed vegetable fat
component with any reasonable degree of specificity (Br. 10-11; see also Br.
15 re claim 2). This argument is unavailing. As correctly explained by the
Examiner, an artisan would have used Martin’s explicitly listed high oleic
sunflower oil, based on a reasonable expectation of success, and it is
undisputed that such an oil satisfies the claimed fatty acid profile of claim 1
and of claim 2 (Ans. Para. bridging 7, 8; bottom of Ans. 16; no responsive
Brief has been filed).2
We further note that the fatty acid profile of claim 1 encompasses a
vegetable fat component with no polyunsaturated fats, with no linoleic acid
and/or with no saturated fatty acids since no lower limit is claimed for any of
these profile characteristics. Furthermore, contrary to Appellants’ assertions
that the claim requires a liquid triglyceride (e.g., Br. 20 “no specific
compositions taught by Martin . . . contain a triglyceride let alone a liquid
triglyceride”), there is no requirement for the vegetable fat of claim 1 to be a
liquid at room temperature (see, e.g., Martin, col. 7, ll. 32-34 which
exemplifies that vegetable oils may be “hardened”).

2 It is well established that “in a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.”’ Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976)
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Appellants’ contentions that none of the triglyceride oils recited in
claims 6-9 are explicitly disclosed by Martin (Br. 16) are of no persuasive
merit. Martin broadly teaches that a triglyceride oil/fat is an appropriate
ingredient for inclusion in its frozen aerated product and thus any known
such oil would have been prima facie obvious. Furthermore, Appellants
admit that such oils were known in the prior art for inclusion in frozen
aerated ice cream products (Spec. 2:10-25). Accordingly, the Examiner’s
position that it would have been prima facie obvious to use these
“commonly known vegetable oils” is reasonable (e.g., Ans. 6).
Appellants also argue that the Specification Examples and the
Declaration, filed October 14, 2008, demonstrate that claimed structural
differences result for the process step recited in claim 1 (Br. 12-14), and also
demonstrate unexpected results (Br. 17-23). It is well established that such
evidence must be commensurate in scope with the claims. See, e.g., In re
Marosi, 710 F.2d 799, 803 (Fed. Cir. 1983) (holding that Marosi has not
adduced evidence commensurate in scope with their product-by-process
claims). We are in complete agreement with the Examiner’s cogent analysis
of the Declaration evidence (Ans. 8-15), including that the proffered
evidence is not commensurate in scope with the claims in many aspects,
including the compositional ranges of the product claimed and the
temperature and times claimed in the product-by-process step (Ans. 10; see
also Ans. 8-15). We further agree with the Examiner that a product
produced by Martin’s process with 29.7% destabilized fat renders obvious a
product with 30% de-emulsified fat as claimed (Ans. para. bridging 14-15).3

3 As our reviewing court stated in In re Peterson, 315 F.3d 1325, 1329 (Fed.
Cir. 2003) (emphasis added):
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Under these circumstances, the Appellants have not shown reversible error
in the Examiner’s determination that the Appellants’ Declaration evidence
fails to demonstrate that products encompassed by Martin would not have
the same characteristics as claimed, and concomitantly fails to overcome the
prima facie case of obviousness.
Accordingly, the Examiner’s findings that the desired fatty acid
profile (of both claims 1 and 2), as well as the desired amount of de-
emulsified fat as recited in claim 1, would have naturally flowed from
following the explicit suggestion of Martin to use high oleic sunflower oil as
the triglyceride oil/fat in an amount up to 10%, are reasonable. Ex parte
Obiaya, 227 USPQ 58, 60 (BPAI 1985), aff'd mem., 795 F.2d 1017 (Fed.
Cir. 1986) (holding that the recognition of another advantage flowing
naturally from following the suggestion of the prior art cannot be the basis
for patentability when the difference would otherwise be obvious).
For the reasons stated above and in the Answer, we sustain the § 103
rejection of all appealed claims as being unpatentable over Martin.
The decision of the Examiner is affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1).

In cases involving overlapping ranges, we and our predecessor
court have consistently held that even a slight overlap in range
establishes a prima facie case of obviousness.… We have also
held that a prima facie case of obviousness exists when the
claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have expected
them to have the same properties. Titanium Metals Corp. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985).

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AFFIRMED

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