Ex Parte da Silva et al

Patent Trial and Appeal Board

Oct 30, 2018

13825231 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/825,231 06/05/2013 Celso Jose da Silva
38550 7590 11/01/2018
CARGILL, IN CORPORA TED
P.O. Box 5624
MINNEAPOLIS, MN 55440-5624
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.
N00105US01 6386
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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):
patent_docketing@cargill.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CELSO JOSE DASILVA, LUCIANO FACHIN,
ERIVELTON PEIXOTO, FERNANDA CARVALHO,
ANA ELISA ROMANI DE PONTES,
FERNANDA ZACCARELLI DA VOLI, and SEBASTIAO MENDES
Appeal 2017-011393
Application 13/825,231 1
Technology Center 1700
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellants seek our review of the
Examiner's rejections of claims 16, 22, 24, and 26-33. Appeal Br. 6.
We have jurisdiction. 35 U.S.C. § 6.
We affirm.
1 Appellants identify Cargill, Incorporated as the real party in interest.
Appeal Br. 3.
Appeal 2017-011393
Application 13/825,231
BACKGROUND
The subject matter on appeal is directed to a fat replacer composition
used to replace some or all fat in a food product such as ice cream. Spec.
1:5-8.
Claim 16 is illustrative of the appealed subject matter, and is copied
below from the Claims Appendix to the Appeal Brief:
16. A fat replacer composition for total or partial substitution of fat
in food products comprising:
(a) a low DE maltodextrin, present in a concentration of between
60% and 90% by weight in relation to the total weight of the
composition;
(b) an emulsifier, present in a concentration of from about 4% to
40% by weight in relation to the total weight of the composition; and
( c) a stabilizer, present in a concentration of from about 1 % to 15%
by weight in relation to the total weight of the composition;
wherein the emulsifier consists of mono and diglycerides, and wherein
the stabilizer consists of guar gum and carboxymethylcellulose.
Appeal Br. 18.
2
Appeal 2017-011393
Application 13/825,231
REJECTIONS
The Examiner maintains the following rejections under 35 U.S.C.
§ I03(a) on appeal:
I. Claims 16, 22, 24, 26, and 28-33 as unpatentable over
Bateman, 2 in view of Lipsch 3 and Highman, 4 as evidenced by
Park 5
'
II. Claim 27 as unpatentable over Bateman, in view of Lipsch and
Highman, as evidenced by Park, along with Abboud. 6
OPINION
Rejection I
For this rejection, Appellants present arguments only directed to
independent claim 16. We, therefore, select this claim as representative and
decide the rejection of claims 16, 22, 24, 26, and 28-33 on the basis of claim
16 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Relevant to this appeal, the Examiner finds, and Appellants do not
dispute, that Bateman discloses a fat substitute composition containing a low
DE maltodextrin, and emulsifier, and a stabilizer - each in overlapping or
fully encompassed amounts as those recited in claim 16. Non-Final Act. 7 3.
2 US 5,695,806, issued December 9, 1997.
3 WO 93/24019, published December 9, 1993.
4 US 2003/0185941 Al, published October 2, 2003.
5 Cryoprotective Effects of Sugar, Polyols, and/or Phosphates on Alaska
Pollack Surimi, 53(1) J. FOOD SCI. 1 (1988).
6 US 5,658,609, issued August 19, 1997.
7 Non-Final Office Action dated December 19, 2016.
3
Appeal 2017-011393
Application 13/825,231
The Examiner finds that Bateman does not disclose the specifically
recited emulsifier and stabilizer. Id. To address these differences, the
Examiner relies on Lipsch, finding that "Lipsch discloses emulsifiers as
monoglycerides and diglycerides in a zero fat dessert with the emulsifiers as
fat substitutes," and "also teaches that stabilizers are known to include guar
gum, [ carboxymethylcellulose, i.e.,] CMC, and xanthan gum among other
types of stabilizers." Id. The Examiner additionally finds that "Highman
discloses a stabilizer system that consists of guar gum and CMC in a
nutritional beverage." Id.
Based on this disclosure, the Examiner determines that it would have
been obvious for the skilled artisan to modify the emulsifier of Bateman for
the animal product / triglyceride-free emulsifier disclosed in Lipsch for the
purpose of allowing vegetarian or vegan consumers to consume food
products containing the fat replacer composition. Id. Regarding the
stabilizer, the Examiner determines that it would have been obvious to
substitute Bateman's stabilizer with one that "consists of guar gum and
carboxymethylcellulose" as recited in claim 16, and provides three reasons:
1) Highman discloses that a stabilizer system limited to these two
stabilizers is "able to provide stability to a nutritional
composition;"
2) Lipsch discloses a variety of stabilizers including guar gum and
CMC that were known in the art, therefore, selecting these
stabilizers "would have been based on the preference of one of
ordinary skill in the art absent a showing otherwise;" and
3) because guar gum and CMC were known in the art to be
stabilizers, it would have been an "obvious engineering choice" to
select these known materials for their intended use as stabilizers.
4
Appeal 2017-011393
Application 13/825,231
Id. at 3--4.
Appellants make three primary contentions against this rejection,
namely: 1) the Highman reference is non-analogous art; 2) the Examiner
engaged in impermissible hindsight; and 3) Highman teaches away. Appeal
Br. 7-15; Reply Br. 3-9. We have fully considered Appellants' arguments
but are unpersuaded that Appellants have identified reversible error in the
Examiner's rejection. In re Jung, 637 F.3d 1356, 1365---66 (Fed. Cir. 2011).
Therefore, we sustain the obviousness rejection of claims 16, 22, 24, 26, and
28-33 based on the findings of fact, conclusions of law, and rebuttals to
arguments expressed by the Examiner in the Non-Final Action dated
December 19, 2016 and the Examiner's Answer. We add the following.
We begin by observing that most of Appellants' arguments are
directed to the Examiner's reliance on Highman's disclosure of the recited
stabilizer- that which "consists of guar gum and carboxymethylcellulose."
However, the Examiner did not solely rely on Highman to determine that it
would have been obvious to arrive at the claimed stabilizer. Non-Final Act.
3--4. Rather, the Examiner also found that Lipsch teaches guar gum and
carboxymethylcellulose as suitable stabilizers. Id. While we recognize that
Lipsch does not limit the stabilizer to only guar gum and
carboxymethylcellulose as does Highman, the Examiner determined that the
skilled artisan would have been motivated to select these two stabilizers
either via "preference" or "obvious engineering choice" because they were
well known in the art. Significantly, this determination goes unaddressed by
Appellants. See generally Appeal Br. Because Appellants do not challenge
the full scope of the Examiner's reasoning for why the skilled artisan would
have been motivated to select the recited stabilizer system, Appellants'
5
Appeal 2017-011393
Application 13/825,231
arguments limited to Highman's teachings are not persuasive of reversible
error for this reason alone.
Notwithstanding this deficiency in Appellants' arguments, we also
find Appellants' argument that Highman is non-analogous art to the claimed
invention - and is, therefore, not properly combinable with Bateman -
lacking in persuasive merit. Appeal Br. 7-11. Specifically, Appellants urge
that Highman is directed to "beverages," whereas the claim invention's field
of endeavor relates to "food" products. Id. As set forth below, this
purported difference, 8 however, does not reveal error in the Examiner's
finding that Highman is analogous art. Non-Final Act. 10; Ans. 7-8.
First, we note that our reviewing court counsels us to construe the
scope of analogous art broadly. Wyers v. Master Lock Co., 616 F.3d 1231,
1238 (Fed. Cir. 2010) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398,
402 (2007)). Whether a prior art reference is analogous to the claims at
issue is a question of fact. In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992).
Two criteria are relevant in determining whether prior art is
analogous: "(1) whether the art is from the same field of
endeavor, regardless of the problem addressed, and (2) if the
reference is not within the field of the inventor's endeavor,
whether the reference still is reasonably pertinent to the
particular problem with which the inventor is involved."
8 Highman discloses infant formulas and nutritional beverages, and
expressly states that "the term 'infant formula' is intended to refer to the
well[ -]established understanding as defined in the United States Infant
Formula Act" as set forth in 21 C.F.R. §§ 106, 107. Highman ,r,r 3, 10.
"Infant formula means a food which purports to be or is represented for
special dietary use solely as a food for infants .... " 21 C.F .R. § 106.3
( emphasis added). Thus, because Highman discloses an infant formula that
is used as a "food," Highman's disclosure is not limited to beverages as
Appellants urge.
6
Appeal 2017-011393
Application 13/825,231
Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010)
(quoting In re Clay, 966 F.2d at 658-59).
Applying these principles, and the "analogous art" test, we find that
Highman is, at the very least, reasonably pertinent to the problem with
which the inventor was involved. Here, Highman discloses that the rice
protein used in its nutritional formula is naturally insoluble in water "due in
part to the protein complexing with fiber." Highman ,r 19. In order to
minimize the insolubility, Highman discloses that guar gum and
carboxymethylcellulose are used as a stabilizer blend which "help[s] create a
more stable emulsion upon powder reconstitution." Id. ,r 48. Highman
discloses a ready-to-feed nutritional beverage containing water, the
stabilizer, and the insoluble organic rice protein. Id., claim 1.
Appellants' Specification discloses the use of stabilizers, including
hydrocolloids, to "enable the maintenance of a homogeneous dispersion of
two or more immiscible substances in a foodstuff." Spec. 10:7-11.
According to the Specification, hydrocolloids such as guar gum and CMC
are useful for the identical purpose as that disclosed in Highman -
stabilizing emulsions. Spec. 10: 19-32. One of the "food products"
disclosed in the application is ice cream. Spec. 1 :5-8. As set forth in the
Specification's Example 1 - a "[f]at replacer system in ice cream" -
several formulations were used. Namely, "common ingredients like water,"
"milk powder," and "whey milk," as well as differing concentrations of
"vegetable fat, Lygome and [fat replacer composition] EP1031." Id. at
11 :20-32. The Specification discloses that the milk powder and whey milk
are added to water, "followed by the stabilizer mixed into the sugar." Id. at
12: 1--4. After heating and pasteurization, the mixture is allowed to "cool
and mature for 24 hours to beat the ice cream." Id. at 12:4---6.
7
Appeal 2017-011393
Application 13/825,231
Thus, the skilled artisan would have found Highman "reasonably
pertinent to the particular problem with which the inventor [ of this
application was] involved" - the use of known stabilizers for the purpose of
stabilizing emulsions of a liquid (e.g., water) and an insoluble (e.g., rice
protein) or immiscible (e.g., vegetable fat) substance. Highman ,r,r 19, 48;
Spec. 11:29-12:9; In re Clay, 966 F.2d at 659.
We are likewise unpersuaded by Appellants' arguments that the
Examiner engaged in impermissible hindsight by providing "no sufficient
explanation or reason why a person of ordinary skill in the art would
combine Bateman with Highman" (Appeal Br. 12-13), and that Highman
teaches away (id. at 13-15). These arguments are not persuasive of
reversible error in the rejection because, again, the Examiner does not solely
rely on the teachings of Highman to determine that the recited stabilizer, in
the recited amounts, would have been an obvious modification to Bateman.
Non-Final Act. 3--4.
For these reasons, and those provided by the Examiner, we are of the
opinion that Appellants have failed to identify reversible error in the
Examiner's rejection of claims 16, 22, 24, 26, and 28-33. We, therefore,
sustain the Examiner's rejection of these claims.
Re} ection II
Claim 27 depends from claim 16 and requires the fat replacer
composition to be "in the form of a powder." Appeal Br. 18.
The Examiner finds that Bateman does not expressly recite that the fat
replacer composition is in the form of a powder, but relies on Abboud to
address this difference. Non-Final Act. 7-8. Specifically, the Examiner
finds that Abboud discloses that the composition is in the form of a powder,
8
Appeal 2017-011393
Application 13/825,231
and determines that it would have been obvious to the skilled artisan to
modify the form of Bateman's composition to be a powder so it "can be
readily added to foods and [] can be simpler to measure and store than liquid
forms." Id.
Appellants first rely on the patentability arguments already provided
for claim 16, but for the reasons expressed above, those arguments are
unpersuasive. Appellants additionally assert that "Abboud does not disclose
a fat replacement composition ... where the entire composition is in the
form of a powder." Appeal Br. 16. Specifically, Appellants contend that
only part of Abboud's composition is a powder, with the remaining part in
the form of "an unhydrated mixture of vegetable fiber, starch, and gum." Id.
(citing Abboud 2:1-8, 15-20; 4:15-21).
This argument is unpersuasive because Appellants' own Specification
identifies a fat replacement composition known in the prior art where "[ t ]he
final replacer is a powder." Spec. 3:14--21 (citing US 5,409,726). It is well-
settled that the background knowledge attributable to one of ordinary skill in
the art includes what was admittedly known in the art at the time of the
invention. Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570
(Fed. Cir. 1988) ("A statement in a patent that something is in the prior art is
binding on the applicant and patentee for determinations of anticipation and
obviousness."); In re Fout, 675 F.2d 297,301 (CCPA 1982) ("It is not unfair
or contrary to the policy of the patent system that appellants' invention be
judged on obviousness against their actual contribution to the art." (footnote
omitted)); In re Nomiya, 509 F.2d 566, 570-571 (CCPA 1975) (holding that
admitted prior art in the specification may be used in determining the
patentability of a claimed invention).
9
Appeal 2017-011393
Application 13/825,231
Furthermore, Abboud discloses that certain components of the
unhydrated mixture of vegetable fiber, starch, and gum - which Appellants
aver is not a "powder" - may actually be in powder form. Specifically,
Abboud teaches that "[ t ]he vegetable fiber used in the present invention is an
insoluble fiber which can be any edible fiber material, including powdered
cellulose." Abboud 3:66-4: 1. See also id. at 4:43--44 (referring to "the
mixture of vegetable powder, starch and gum"). Additionally, the inulin
starch present in Example 9 is in a "powder." Id. at 10:1-13.
Moreover, in the Reply Brief, Appellants do not contest the
Examiner's additional findings set forth in the Answer regarding where
Abboud discloses the complete fat replacer composition is in powder form.
Ans. 12 (citing "Abboud claim 1; abstract; col. 9, lines 1-25; col. 10, lines
1-31").
For these reasons, and those provided by the Examiner, we sustain the
Examiner's rejection of claim 2 7.
DECISION
The Examiner's final decision to reject claims 16, 22, 24, and 26-33
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).
AFFIRMED
10