Ex Parte Bhattacharya et al

Patent Trials and Appeals Board

May 18, 2016

13129318 - (D) (P.T.A.B. May. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/129,318 06/24/2011
11632 7590
Hoffmann & Baron, LLP
6900 Jericho Turnpike
Syosset, NY 11791
05/18/2016
FIRST NAMED INVENTOR
Kalisadhan Bhattacharya
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1421-386 PCT/US 7721
EXAMINER
MOORE, WALTER A
ART UNIT PAPER NUMBER
1793
MAILDATE DELIVERY MODE
05/18/2016 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 KALISADHAN BHATTACHARYA,
PRAHANT SANATKUMAR CHHAYA, CHUNLI DU,
MEI HORNG ONG, NICOLE MING-HOOL PUGSLEY,
SHANTANU KRISHNARAO SAMANT, HUI CHIN TEE,
CHUI HOON (REBECCA) WONG,
and BRENDON JOHN WRIGHT
Appeal2014-001077
Application 13/129,318 1
Technology Center 1700
Before CHUNG K. PAK, CATHERIN Q. TIMM, and JEFFREY T. SMITH,
14dministrati-ve Patent Jitdges.
SMITH, Administrative Patent Judge.
1 The real Party in interest is identified Kraft Foods Global Brands LLC.
(App. Br. 3.)
Appeal2014-001077
Application 13/129,318
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Final Office Action
dated October 29, 2012 rejecting claims 1-3, 6-9, 11-12, 14, 16, and 18-
23.2 We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a confection with a shell and a liquid fat-
containing center fill. The claimed invention comprises a center and a shell,
with the shell contacting and substantially surrounding the center, wherein a
shell composition comprises less than or equal to 20 weight percent total fat,
based on the total weight of the shell composition and a center composition
comprises a bulk sweetener, and a fat having a slip melting point of 10 to
18°C, and a Brookfield viscosity of 4,000 to 12,000 millipascal-seconds.
Claim 1 is reproduced below:
1. A center-filled confection, comprising:
a center comprising a center composition; and
a shell comprising a shell composition comprising less
than or equal to 20 weight percent total fat, based on the total
weight of the shell composition;
wherein the shell contacts and surrounds the center;
wherein the center composition comprises
a bulk sweetener, and
a fat having a slip melting point of 10 to 18 °C, said fat
comprising a non-hydrogenated vegetable fat having a solid fat
content less than 5 weight percent at 20°C determined
according to AOCS CA-5A-40;
2 Claim 4 was cancelled in the amendment after the final rejection, which
was entered by the Examiner. (App. Br. 4; Advisory Action, mailed
February 4, 2013, p. 2).
2
Appeal2014-001077
Application 13/129,318
wherein the center composition has a Brookfield
viscosity of 4,000 to 12,000 millipascal-seconds measured at
40°C and 50 rotations per minute using HA/HB spindle 5; and
wherein the center composition comprises less than or
equal to 2 weight percent water by weight of said center
composition.
App. Br., Claims Appendix 1.
The Examiner maintains the following rejections from the Final
Office Action (Ans. 2-24): 3
I. Claims 1-3, 7-8, 11, 14, and 18-21 have been rejected under 35
U.S.C. § 103 as obvious overFomaguera, US 2007/0104828 Al published
May 10, 2007 in view of Jindra, US 6,528,104 Bl issued March 4, 2003,
Baba, EP 0 297 720 published January 4, 1989, Edwards, Toffee and
Caramels, The Science of Sugar Confection (2000), and Hyfoma,
Production Process Caramel (Feb. 2007).
II. Claim 6 has been rejected under 35 U.S.C. § 103 as obvious over
Fomaguera in view of Jindra, Baba, Edwards, and Hyfoma and further in
view of Cole, US 5,872,271 issued February 16, 1999.
III. Claim 9 has been rejected under 35 U.S.C. § 103 as obvious over
Fomaguera in view of Jindra, Baba, Edwards, and Hyfoma and further in
view of Krawczyk, US 5,505,982 issued April 9, 1996.
3 The Examiner has withdrawn the rejections of: claims 14 and 16 under 35
U.S.C. § 112, first paragraph; claim 22 under 35 U.S.C. § 112, second
paragraph; and claim 4 under 35 U.S.C. § 112, fourth paragraph. (Answer
24; Advisory Action 2).
3
Appeal2014-001077
Application 13/129,318
IV. Claim 12 has been rejected under 35 U.S.C. § 103 as obvious
over F omaguera in view of Jindra, Baba, Edwards, and H yfoma and further
in view of Firmin, US 1,769,215 issued July 1, 1930.
V. Claim 16 has been rejected under 35 U.S.C. § 103 as obvious over
Fomaguera in view of Jindra, Baba, Edwards, and Hyfoma and further in
view of Wadsworth, The Theobromine Content of Cacao-Beans and Cocoa
(1922).
VI. Claim 22 has been rejected under 35 U.S.C. § 103 as obvious
over Fomaguera in view of Jindra, Baba, Edwards, Hyfoma, Wadsworth,
Budwig et al., US 2007/0048431 Al published March 1, 2007, and Firmin.
VII. Claim 23 has been rejected under 35 U.S.C. § 103 as obvious
over Fomaguera in view of Jindra and Baba
DISCUSSION4
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we find that
Appellants have not identified reversible error in the Examiner's
determination that the applied prior art would have rendered the subject
matter recited in claims 1--4, 6-8, 11-12, 14, 16, and 18-23 obvious to one
of ordinary skill in the art within the meaning of 35 U.S.C. § 103(a).
Accordingly, we sustain the Examiner's§ 103(a) rejections of the above
4 In response to the seven appealed rejections, Appellants have presented 85
pages of argument in the principal brief. As acknowledged by the Examiner,
Answer 25, Appellants' arguments for the first rejection are repeated when
addressing rejections II-VII. We adopt the Examiner's discussion where
applicable.
4
Appeal2014-001077
Application 13/129,318
claims for the reasons set forth in the Final Action and the Answer. We add
the following.
The claimed invention comprises a shell contacting and substantially
surrounding a center, wherein a shell composition comprises less than or
equal to 20 weight percent total fat, based on the total weight of the shell
composition and a center composition comprises a bulk sweetener, and a fat
having a slip melting point of 10 to l 8°C, and a Brookfield viscosity of
4,000 to 12,000 millipascal-seconds. (Claim I .)According to the
Specification, paragraph 14, fats meeting the slip melting point requirement
include
non-hydrogenated vegetable fats, hydrogenated vegetable fats, non-
hydrogenated animal fats, hydrogenated animal fats, and
combinations thereof. In some embodiments, the fat comprises non-
hydrogenated vegetable fat. The non-hydrogenated vegetable fat can
have a solid fat content less than 5 weight percent, specifically less
than 4 \veight percent, more specifically less than 3 \veight percent,
still more specifically less than 2 weight percent, even more
specifically less than 1 weight percent, measured at 20°C according to
AOCS CA-5A-40. In a very specific embodiment, the non-
hydrogenated vegetable fat comprises 25 to 35 weight percent
palmitoleic acid, 40 to 50 weight percent oleic acid, and 5 to 15
weight percent linoleic acid. In some embodiments, the fat comprises
less than 1 weight percent of trans fat. Fats meeting the slip melting
requirement are commercially available and include, for example,
those sold as "F 8061 ", "F 8062 ", and "F 8063" by Fuji Vegetable
Oil.
The Specification states that there is no particular limitation on the flavor of
the center composition. Suitable flavors include chocolate. (Spec. 20.) The
Specification also discloses the center composition has a Brookfield
5
Appeal2014-001077
Application 13/129,318
viscosity ranging from 4,000 to 12,000 millipascal-seconds which is liquid
at or near the temperature at which it is consumed. (Spec. 21.)
The Examiner found, and Appellants do not dispute, that F omaguera
teaches a center-filled confectionery product comprising a shell composition
that contacts and surrounds a center confectionery composition. (Ans. 3;
Final Act. 6; Fomaguera i-fi-15, 6 and 28; App. Br. 21-33.) Regarding the
viscosity limitation of the claim, the Examiner found Fomaguera teaches the
center confectionery composition may be any confectionery material
including toffees and chocolates and may be flowable or a fluid. (Ans. 3;
Final Act. 6; Fomaguera i128.) The Examiner found, and Appellants do not
dispute, that the center-filled confectionery materials are known to contain
fat. (Ans. 3; Final Act. 6; App. Br. 21-33.) The Examiner recognized that
Fomaguera did not describe the melting point of the fat component of the
center confectionery composition. (Ans. 3; Final Act. 6.)
The Examiner found, and Appellants do not dispute, that Jindra
describes center-filled confectionery materials that employ, inter alia, low
melting point oils selected from natural, hydrogenated and/or partially
hydrogenated vegetable oils with low average melting points, as part of the
center filling to achieve the low water activity of the filling and to facilitate
dispersion of other components of the filling. (Ans. 3--4; Final Act. 6-7;
Jindra, col. 4; App. Br. 21-33.) Jindra discloses the center filled
confectionery material comprise edible oils including, inter alia, palm oil.
(Jindra, col. 4, 11. 39-43.) Jindra discloses the oils contained in the center
filled confectionery material are manipulated so that the filling will be
flowable and have smooth texture. (Jindra, paragraph bridging cols. 4--5.)
6
Appeal2014-001077
Application 13/129,318
The Examiner found Baba describes center-filled confectionery
materials comprising fat (laurin fat) derived from non-hydrogenated
vegetable oils having a low melting point. (Ans. 4--5; Final Act. 7-8; Baba
p. 2.) Baba discloses this fat, which can be derived from palm oil, is widely
used with various fatty food such as chocolate, because it has good stability
to oxidation and melts well in the mouth while providing cold mouth feel
and a plain taste. (Baba p. 2.)
The Examiner found that the cited prior art references, all drawn to
confectioneries, establish that having a fat with a low melting point is useful
in confectioneries. (Ans. 4--5) The Examiner determined it would have been
obvious to select a center-filled confectionery materials comprising a fat
with a specific slip melting point as recited in the claims on appeal. (Ans. 5)
Regarding the viscosity limitations recited in claim 1, the
Specification discloses that a Brookfield viscosity of 6,000 to 12,000
millipascal-seconds indicates the center composition is a liquid at or near
human body temperature. (Spec. i-f 9.) The Examiner found Fomaguera
teaches that the center confectionery composition may be modified to obtain
the desired viscosity. (Ans. 5; Final Act. 8-9; Fomaguera i-f 28.) The
Examiner determined it would have been within the skill of one of ordinary
skill in the art to have optimized, by routine experimentation, the viscosity
of the center composition as taught by modified F omaguera to achieve the
desired viscosity. (Id.)
To prevail in an appeal to this Board, Appellants must adequately
explain or identify reversible error in the Examiner's§§ 102(b) and 103(a)
rejections. See 37 C.F.R. § 41.37(c)(l) (iv) (2012); see also In re Jung, 637
7
Appeal2014-001077
Application 13/129,318
F.3d 1356, 1365---66 (Fed. Cir. 2011) (explaining that even ifthe examiner
had failed to make a prima facie case, it has long been the Board's practice
to require an appellant to identify the alleged error in the examiner's
rejections); In re Chapman, 595 F.3d 1330, 1338 (Fed. Cir. 2010), quoting
Shinseki v. Sanders, 556 U.S. 396, 409 (2009) ("the burden of showing that
the error is harmful normally falls upon the party attacking the agency's
determination.").
Rejections I and VII
Appellants argue the rejections fail to make a prima facie case of
obviousness because they do not establish the solid fat content of a non-
hydrogenated vegetable fat. (App. Br. 8, 24--25.) In support of this
argument, Appellants argue the rejections mischaracterize Jindra and Baba.
(App. Br. 8, 25-29.) Appellants argue Jindra does not teach chocolate as a
suitable filling material and therefore, the Examiner has mischaracterized
Jindra. (App. Br. 26.) Appellants also argue Baba teaches fractionated
laurin fat that is derived from a vegetable fat but not derived from a non-
hydrogenated vegetable fat and therefore, the Examiner is wrong to conclude
that Baba teaches any non-hydrogenated vegetable fat. (App. Br. 27-28.)
Appellants' arguments are not persuasive of reversible error. The
claimed invention is not limited solely to chocolate as the filling material.
The claimed invention specifies that the center composition comprises a
non-hydrogenated vegetable fat having a solid fat content less than 5 weight
percent. According to the Specification, there is no particular limitation on
the flavor of the center composition including, inter alia, chocolate flavored.
(Spec. 20.) It is not been disputed that Fomaguera teaches the center
8
Appeal2014-001077
Application 13/129,318
confectionery composition (filling) may be any confectionery material,
including toffees and chocolates, which may be flowable or in pliable state,
and Jindra describes any conventional fillings5 inserted inside chocolate
coating, which can include edible oils, such as partially hydrogenated palm
oil (implying that palm oil is partially non-hydrogenated) that allow the
fillings to be flowable and to be useful for facilitating the dispersion of other
components of the fillings. (Fomaguera i-fi-127-28; Jindra col. 3, 11. 37--40
and col. 4, 11. 1--45.) As indicated supra, Baba also discloses laurin fat,
which can be derived from palm oil (not described as hydrogenated), is also
widely used with various fatty food, such as chocolate, because it has good
stability to oxidation and melts well in the mouth while providing cold
mouth feel and a plain taste and can be used like the liquid fat. (Baba p. 2.)
Thus, we agree with the Examiner that one of ordinary skill in the art would
have been led to use edible oils, such as partially non-hydrogenated palm oil,
or laurin fat derived from palm oil with a conventional filling, such as
chocolate, in a center-filled confectionery product, with a reasonable
expectation of successfully obtaining the advantages stated in Jindra and/or
Baba. On this record, Appellants have not directed us to evidence that
establishes edible oils-such as partially hydrogenated palm oil---described
in Jindra or laurin fat derived from palm oil---described in Baba do not
5 According to the Specification, paragraph 1, confections combining a shell
and a fat-containing center filling were known and commercially available at
the time of the invention. Exemplarily confections include "Cadbury
CHOCLAIR confections, Perfetti ALPENLIEBE confections, and Werther's
ORIGINAL ECLAIR confections each combine a hard or chewy caramel
shell with a solid chocolate center." (Spec. i-f l .)
9
Appeal2014-001077
Application 13/129,318
encompass a non-hydrogenated vegetable fat having a solid fat content less
than 5 weight percent at 20°C determined according to AOCS CA-5A-40
and having a slip melting point of 10 to l 8°C. In fact, the Specification
discloses conventional non-hydrogenated vegetable fats (including a specific
non-hydrogenated vegetable fat comprising palmitoleic acid, oleic acid and
linoleic acid) as including those having a solid fat content less than 5 weight
percent measured at 20°C according to AOCS CA-5A-40 and a fat having a
slip melting point of 10 to 18°C. (Spec. ,-r 14.)
Appellants argue the rejection relies upon an improper assertion of
inherency with regard to the viscosity. (App. Br. 9, 29-34.) Appellants'
argument is not persuasive of reversible error. According to the
Specification, a center composition having a Brookfield viscosity of 4,000 to
12,000 millipascal-seconds is liquid at or near the temperature at which it is
consumed. (Spec. 21.) The Examiner's rejection is not premised solely
upon the basis of the inherency. The Examiner also asserted that it would
have been obvious to a person of ordinary skill in the art to arrive at the
claimed viscosity through routine experimentation. (Ans. 5; Final Act. 8-9.)
Further, Fomaguera discloses the center fill material has a wide range of
viscosities, from a flowable solid (gel) to a liquid. Jindra describes the
center fill material includes edible oils that allow the filling to be flowable.
Stated differently, Fomaguera and Jindra recognize that the viscosity of the
filling is a result effective variable. Consequently, we determine that it is
well within the ambit of one of ordinary skill in the art to employ
appropriate viscosity for a center filled confectionery such that the
composition is flowable within the meaning of 35 U.S.C. § 103(a). In re
Boesch, 617 F.2d 272, 276 (CCPA 1980) ([D]iscovery of an optimum value
10
Appeal2014-001077
Application 13/129,318
of a result effective variable in a known process is ordinarily within the skill
of the art."); In re Aller, 220 F .2d 454, 456 (CCP A 1955) ("[W]here the
general conditions of a claim are disclosed in the prior art, it is not inventive
to discover the optimum or workable ranges by routine experimentation.").
Appellants have not asserted that a flowable confectionery does not have a
viscosity that falls within the range required by the claimed invention.
Rejection II
Appellants argue Fomaguera, Jindra, Baba, Edwards, and Hyfoma
does not disclose the specific fatty acid composition of the fat as claimed.
Appellants argue that, when Cole is properly characterized, the combination
of references does produce the claimed palmitoleic acid content. Appellants
specifically argue Co le' s level of palmito leic acid in the fat has a maximum
of approximately 15%, which is far below the 25-35% palmitoleic acid
required in claim 6. (App. Br. 10, 36.)
We are unpersuaded by these arguments. The Examiner found Cole
teaches non-hydrogenated vegetable oils that are useful in confectioneries
(Final Act. 13; Ans. 9-10.) Cole teaches endogenous sunflower vegetable
oil provides varying amounts of palmitoleic acid exceeding at least about 4%
(Cole cols. 4--8.) The Examiner determined it would have been obvious to
have used the non-hydrogenated vegetable fat with the specific fatty acid
profile as taught by Cole, as the non-hydrogenated vegetable fat in the center
composition. (Final Act. 13; Ans. 9-10.)
Appellants have not explained why a person of ordinary skill in the art
would have found it unobvious to select a non-hydrogenated vegetable fat
11
Appeal2014-001077
Application 13/129,318
with the claimed fatty acid profile. Further, we note that the Appellants have
not directed us to any evidence to establish the criticality of the specific fatty
acid profile required by the appealed claims. The apparent lack of criticality
of the claimed the fatty acid profile supports the Examiner's overall
conclusion of obviousness. Cf In re Woodruff, 919 F.2d 1575, 1578 (Fed.
Cir. 1990) ("The law is replete with cases in which the difference between
the claimed invention and the prior art is some range or other variable within
the claims .... [I]n such a situation, the applicant must show that the
particular range is critical, generally by showing that the claimed range
achieves unexpected results relative to the prior art range.") (Citations
omitted); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general
conditions of a claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine experimentation.").
Rejections III-VI
Concerning the other obviousness rejections III-VII, in addition to
Fomaguera, Jindra, Baba, Edwards, and Hyfoma, the Examiner cited
additional references to address these claims Appellants limit their
substantial argument to the arguments made against representative claim 1
and the applied combination ofFomaguera, Jindra, Baba, Edwards, and
Hyfoma in the first ground of rejection presented by the Examiner. As such,
we shall also affirm the Examiner's rejections III-VII as all of these
rejections involve the same combination of Fomaguera, Jindra, Baba,
Edwards, and Hyfoma with additional applied references.
12
Appeal2014-001077
Application 13/129,318
Accordingly, we affirm the Examiner's prior art rejections of claims
1-3, 6-9, 11-12, 14, 16, and 18-23 under 35 U.S.C. § 103(a) for the reasons
presented by the Examiner and given above.
ORDER
The Examiner's prior art rejections under 35 U.S.C. § 103(a) are
affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection
with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 ).
AFFIRMED
13