Ex Parte Burkholder et al

Patent Trial and Appeal Board

Jun 21, 2018

15052111 (P.T.A.B. Jun. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/052, 111 02/24/2016 Thomas BURKHOLDER
30589 7590 06/25/2018
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
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.
555910.132
(8584-US-CNT3)
CONFIRMATION NO.
6297
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/25/2018 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@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS BURKHOLDER, 1
Scott Peterson, and Frank Welch
Appeal2017-006409
Application 15/052, 111
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Nestec S.A. ("Nestec") timely appeals under 35 U.S.C. § 134(a) from
the Final Rejection2 of all pending claims 1 and 5-20. We have jurisdiction.
35 U.S.C. § 6. We reverse.
1 The applicant under 3 7 C.F .R. § 1.46, and hence the appellant under
35 U.S.C. § 134, is the real party in interest, identified as Nestec S. A.
("Nestec") (Appeal Brief, filed 9 November 2016 ("Br."), 1).
2 Office Action mailed 17 June 2016 ("Final Rejection"; cited as "FR").
Appeal2017-006409
Application 15/052, 111
A. Introduction 3' 4
OPINION
The subject matter on appeal relates to processes of preparing freeze
dried aerated shelf-stable fruit or vegetable products that are "readily
dissolvable upon consumption at such a rate as to transfer flavor to the
consumer's taste buds." (Spec. 2 [0003].) Three properties are said to
influence strongly customer preferences for the final product: hardness,
dissolvability, and viscosity [of the intermediate product just before freeze-
drying]. (Id. at 4 [0016].) The '111 Specification defines the term
"hardness" as "the peak stress prior to fracturing a material."
(Spec. 3 [0009].) The term "dissolvability" is defined as "the change in
hardness of a product in going from a dry to a wet state." (Id. at 2 [0008].)
Viscosity is defined generally as "a measure of the resistance of a substance
to flow" (id. at 3 [001 OJ), and is said to "aid[] in holding the shape of a
substance through aeration and deposit" (id.). The Specification reveals that
3 Application 15/052, 111, Freeze-dried aerated fruit and/or vegetable
compositions and methods of making thereof, filed 24 February 2016, as a
continuation of 13/633,378, filed 2 October 2012, now abandoned, which is
a division of 12/650,820, filed 31 December 2009, now abandoned, which is
a continuation-in-part of 12/599,328, filed 9 November 2010, issued as U.S.
Patent No. 9,968,124 on 15 May 2018, which is the national stage under
35 U.S.C. § 371 of PCT/US08/63306, filed 9 May 2008, which claims
benefit of 60/916,95 6, filed 9 May 2007. We refer to the
"'111 Specification," which we cite as "Spec."
4 We note with appreciation that N estec informs us (Br. 1, § II), of related
appeals in application 12/599,328 (Appeal 2017-004623; 16 January 2018
(rev'd); issued as U.S. Patent No. 9,968,124 on 15 May 2018) and in
application 13/475,411 (awaiting hearing).
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Application 15/052, 111
it is further desired that the product be readily dissolvable so that
"consumers with restricted or under-developed oral motor skills or digestive
functions" will experience reduced risk of choking hazards.
(Id. at 2 [0003].)
The Specification teaches that it is known that increasing aeration can
improve dissolvability of freeze-dried products, but that the increased
aeration can also reduce the hardness of the end-product, reducing the
physical stability of the product. (Id. at 2 [0003].)
These problems are said to be overcome by adding certain emulsifiers
to a food product (e.g., a fruit or vegetable puree), heating the mixture and
then aerating the heated mixture, forming drops of the mixture, and freeze
drying the drops. The product has specified ranges of hardness and
dissolvability values, and, prior to freeze drying, a specified range of
viscosity. (Id. at 5 [0022].)
Claim 1 is representative and reads:
A method of providing a shelf stable fruit and/or vegetable
product comprising the steps of:
adding an emulsifier to at least one ingredient and
mixing the emulsifier and the at least one ingredient to
form an emulsifier-containing blend, wherein
the at least one ingredient is selected from the group
consisting of a fruit, a vegetable, and combinations thereof,
and wherein
the emulsifier is selected from the group consisting of
lactic acid esters of monoglycerides, lactic acid esters of
diglycerides, citric acid esters of monoglycerides, citric
acid esters of diglycerides, distilled monoglycerides, and
combinations thereof;
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Application 15/052, 111
thermally processing the emulsifier-containing blend by
heating the blend;
admixing a gas with the heated, emulsifier-containing
blend and aerating same to form an aerated product;
forming the aerated product into a plurality of drops
having a weight in a range of from 0.8 to 1.2 grams; and
freeze drying the plurality of drops to form the shelf stable
fruit and/or vegetable product, wherein
the product is designed to be readily dissolvable upon
consumption so as to increase child development by having
a developmentally appropriate size, shape, and dissolution
characteristics, and wherein
the product is designed to reduce the risk of choking
hazards for children with restricted or underdeveloped oral
motor skills or digestive functions, whereby
the product has
a hardness value of from 0.5 to 8 pounds force peak load,
a dissolvability in the range of from 0.1 to 8 pounds
force peak load, and
a viscosity of from 1000 to 100,000 cp as measured at
a 10 rpm speed of the spindle 6 in a Brookfield
viscometer before the product is aerated, and wherein
the at least one fruit and/or vegetable ingredient is
present in an amount from 60% to 80% by weight of the
product prior to freeze-drying.
(Claims App., Br. 23; some indentation, paragraphing, and emphasis added.)
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Application 15/052, 111
The Examiner maintains the following grounds of rejection5' 6, 7 :
A. Claims 1, 5, 7, 8, 11-13, and 15-19 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Peterson8 and Kolstad. 9
Al. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Peterson, Kolstad, and Jager. 10
A2. Claims 9 andlO stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Peterson, Kolstad, and
Beechnut. 11
A3. Claims 6 and 20 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Peterson, Kolstad, and
Rudolph. 12
5 Examiner's Answer mailed 13 January 2017 ("Ans.").
6 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
7 A rejection of claims 14 and 20 under 35 U.S.C. § 112(b) was withdrawn
upon entry of an amendment under 3 7 C.F .R. § 1.116 cancelling claim 14
and amending claim 20. (Ans. 9; Advisory Action mailed 28 September
2016.)
8 Ralph Dewey Peterson, Process for preparing dried fruit products,
GB 1,070,060 (1967).
9 Jeffrey J,. Kolstad et al., Method for preparation of purified glycerides and
products, U.S. Patent No. 5,959,128 (1999).
10 Martin Jager et al., Encapsulated multifunctional biologically active food
component, process for its production and its use, U.S. Patent
No. 6,841,181 B2 (2005).
11 Beech Nut, Carrot, Apple & Mango (2006), downloaded from
https://web.archive.org/web/2006031301533 8/http://www.beech-nut.com/
on March 11, 2015.
12 Martin J. Rudolph et al., Edible product with live and active probiotics,
WO 01/62099 Al (2001).
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Application 15/052, 111
B. Discussion
The Board's findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds four major differences between the process
described in Peterson and the claimed process. First, Peterson requires a
higher content of fruit puree (82.9 to 95 wt%) than the 60-80 wt% required
by claim 1. The Examiner reasons that, "[ t ]he adjustment of the amount of
fruit to include in the composition would have been within the abilities of
one of ordinary skill in the art where it was desired, for example, to reduce
costs by including less fruit in the product." (FR 4, i-f 10.) Second, Peterson
teaches adding the emulsifier to the blend after thermally processing the
blend. The Examiner holds that "any order of performing steps is
considered prima facie obvious in the absence of convincing arguments or
evidence that the claimed order is critical to the invention." (Id. at 5, i-f 11.)
Third, Peterson is silent as to emulsifiers comprising lactic- or citric-acid
esters of glycerides. (Id. at 6, i-f 13.) The Examiner finds that Kolstad
teaches such lactic acid esters as foam stabilizers for aerated food products,
and concludes that it would have been obvious to use them in the process
disclosed by Peterson for their disclosed purpose of stabilizing foam.
(Id. at i-f 15.) Fourth, the Examiner concludes that the silence of Peterson
(and the remaining references) is of no moment because the products
obvious in view of the combined teachings of Peterson and Kolstad are
identical or substantially identical to those resulting from the claimed
process. The Examiner therefore holds that the burden is on Nestec to
"prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product." (Id. at 7, i-f 16-17.)
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Application 15/052, 111
Nestec urges the Examiner made multiple modifications to the
teachings of Peterson before combining the additional teachings of the other
references. (Br. 13, 1st full para.) In so doing, Nestec argues, the Examiner
failed to account for the presence of additional components of the prior art
compositions, other than to assert that "adjustment of these components
'would have required no more than routine experimentation."' (Id. at 2d full
para.) In summary, in Nestec's words, "the rejection is based on a far-
reaching POSSIBILITY that this modified combination of the prior art
methods would even produce a product that meets these claim limitations
regarding ingredients, compositional values and functional characteristics."
(Id. at 15, last para.)
The Examiner responds by citing several copending applications 13
assigned to Nestec and relating to similar subject matter "as evidence ...
that there can be wide variations in the composition yet arrive at similar
properties and support the position that the prior art applied against the
claims can reasonably possess the claimed properties." (Ans. 10, 2d full
para., bold emphasis omitted.) While copending applications may serve to
demonstrate the potential breadth of the claimed subject matter, such a
showing does little to demonstrate that the product would, more likely than
not, have resulted from a prior art process, or from a purportedly obvious
variant of a prior art process.
13 Three of these applications are on appeal, awaiting hearings. We note,
with appreciation, that Nestec brought at least one of these appeals to our
attention in the principal Brief on appeal. (Br. 1, § II, identifying then-
pending appeals.)
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Application 15/052, 111
The rejections appear to be based on the premise that it would have
been obvious to modify the process of making the freeze-dried, aerated,
thermally processed fruit puree disclosed by Peterson by changing the
amounts of the fruit, the order of processing steps and adding an emulsifier
taught by Kostad, because the ultimate product would be the same or
substantially the same.
As Nestec does not deny, it is possible that the same or substantially
the same products might be obtained by modifying the process of Peterson.
However, the Examiner has not come forward with a preponderance of the
evidence showing, more likely than not, that the processes of Peterson,
modified as suggested by the Examiner, would have been expected to yield
products that are the same or substantially the same as products made by the
claimed process. As Nestec urges (Reply14 5, 3d full para.), Peterson's
product is designed to be rehydrated in milk or water (e.g., "in combination
with ready-to-eat breakfast cereals" (Peterson 1, 11. 50-52), whereas the
claimed product, in the words of claim 1, "is designed to be readily
dissolvable upon consumption" (Claims App., Br. 23). 15 Thus, the
"intended uses" of the products appear to be distinct, and the Examiner has
not explained satisfactorily why the products would have been regarded by
the routineer as being substantially the same. Moreover, the Examiner has
not shown that, in light of the applied prior art, products substantially the
14 Reply Brief filed 8 March 2017 ("Reply").
15 We made similar findings in our Opinion (page 6) in appeal 2017-004623
(PTAB 16 January 2018) in the continuation-in-part parent application
12/599,328, explaining the reversal of rejections of similar product claims
based on Peterson and a different reference.
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Application 15/052, 111
same would have been desired. In summary, the underlying premise of the
rejection, on its own terms, has not been established. 16
The Examiner does not make findings regarding the remaining
references that cure the defects of Peterson and Kolstad.
We therefore reverse the appealed rejections.
C. ORDER
It is ORDERED that the rejection of claims 1, and 5-20 is reversed.
REVERSED
16 The focus of product properties as indicia of the obviousness of the
underlying claims to a product of making those products has not been
challenged by Nestec.
9