14605480 - (D) (P.T.A.B. Jul. 9, 2019)

Ex Parte DE RUITER et al

Patent Trials and Appeals BoardJul 9, 2019

14605480 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/605,480 01/26/2015 110933 7590 07/09/2019 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 FIRST NAMED INVENTOR Bart DE RUITER 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. CQKER.4021 8520 EXAMINER COX, STEPHANIE A ART UNIT PAPER NUMBER 1791 MAIL DATE DELIVERY MODE 07/09/2019 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 BART DE RUITER, LAURA DRIESSEN, and JEREMY HUNTER Appeal2018-008818 Application 14/605,480 Technology Center 1700 Before CATHERINE Q. TIMM, JAMES C. HOUSEL, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Appeal2018-008818 Application 14/605,480 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134 from a rejection2 of claims 1-10. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. CLAIMED SUBJECT MATTER The claims are directed to a food item containing granola. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. Crunchy granola clusters comprising flakes from at least one grain, crisps from at least one grain, at least one dairy protein, a pregelatinized starch and soluble oat bran fiber, and syrup, wherein the at least one dairy protein, the pregelatinized starch, the soluble oat bran fiber, and the syrup form bonds that hold the clusters together. Claims Appendix (Br. 9). REFERENCES The prior art references relied upon by the Examiner in rejecting the claims on appeal are: Creighton Squire US 5,176,936 Jan. 5, 1993 US 2004/0028797 Al Feb. 12, 2004 1 The real party in interest is identified as the "The Quaker Oats Company." Appeal Brief of February 19, 2018 ("Br."), 2. 2 Final Office Action of October 17, 2017 ("Final Act."). In this opinion, we also refer to the Examiner's Answer of July 12, 2018 ("Ans.") and the Reply Brief of September 12, 2018 ("Reply Br."). 2 Appeal2018-008818 Application 14/605,480 REJECTIONS Claims 1-10 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Squire and Creighton. Final Act. 3. OPINION We review the appealed rejections for error based upon the issues identified by Appellants and in light of the arguments and evidence produced thereon. Cf Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to identify the alleged error in the examiner's rejections")). After having considered the evidence presented in this Appeal and each of Appellants' contentions, we are not persuaded that reversible error has been identified, and we affirm the Examiner's Â§ 103 rejection for the reasons expressed in the Final Office Action and the Answer. We add the following primarily for emphasis. Claim 13 In rejecting claim 1, the Examiner finds that "Squire discloses a crunchy granola cluster comprising flakes from at least one grain, crisps from at least one grain, a dairy protein, a pregalatinzed [ sic, pregelatinized] starch, and syrup." Final Act. 3 ( citing various portions of Squire). The Examiner also finds that Creighton describes the recited soluble oat bran fiber. Id.; Ans. 6 (citing Creighton at 5:13-30). Based on Creighton's 3 Appellants do not present separate arguments for claims 4--10 and they therefore stand or fall with claim 1. See Br. 7; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 3 Appeal2018-008818 Application 14/605,480 teaching "that the addition of fiber gives the cereal added nutrition benefits," the Examiner concludes that a skilled artisan would have included the soluble fiber in the granola cluster described in Squire. Final Act. 3--4. Appellants do not dispute the prior art teachings. Compare Br. 5-6, with Final Act. 3; compare Reply Br. 2-3, with Ans. 6. Appellants, however, argue that the Examiner erred because "Creighton never discloses the use of soluble fiber as a component in a binder of any kind, but instead only discloses it as an ingredient for fortification." Br. 6. Appellants' argument is not persuasive because "the patentability of apparatus or composition claims depends on the claimed structure, not on the use or purpose of that structure." Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 809 (Fed. Cir. 2002). In this case, each of the recited ingredients is known in the art, their application in food items (such as a granola food product) is known, and Appellants' argument does not structurally distinguish the recited granola product from the prior art. Moreover, as the Examiner points out and Appellants do not dispute, the prior art products having the recited ingredients are held together. Compare Ans. 6, with Reply Br. 2-3. Claim 1, reciting, "the at least one dairy protein, the pregelatinized starch, the soluble oat bran fiber, and the syrup form bonds that hold the clusters together" does not require a particular bonding function solely imparted by the soluble oat bran fiber. Even if the recited soluble oat bran fiber does impart such a function (which is not recited in claim 1 ), "the discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new 4 Appeal2018-008818 Application 14/605,480 to the discoverer." Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999). Appellants next argue that a skilled artisan would not have combined the references because they teach away from "the use of soluble fiber in a crunchy granola cluster." Br. 6. According to Appellants, "the aim of Squire is to produce a crisp and crunchy product, whereas Creighton teaches that products fortified with soluble fiber exhibit soft and uncrisp properties." Id. A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant. The degree of teaching away will of course depend on the particular facts; in general, a reference will teach away if it suggests that the line of development flowing from the reference's disclosure is unlikely to be productive of the result sought by the applicant. In re Gurley, 27 F.3d 551,553 (Fed. Cir. 1994). In this case, the Examiner finds that the stated goal of Creighton is to produce a product which includes "both insoluble and soluble dietary fiber" having certain parameters "especially crispness." Creighton 2:8-11 (cited in Ans. 7). Given Squire also aims to provide a crisp and crunchy product (Squire ,r 22; see also Br. 6), we are not persuaded that the Examiner reversibly erred in combining the references in support of the rejection. We are likewise not persuaded by Appellants' argument that adding soluble fiber to Squire would render Squire unsatisfactory for its intended purpose. Squire already discloses products having ingredients such as "oats" and "oat groats." Squire ,r,r 25, 28. Appellants' argument, unsupported by the evidence in the record, is not persuasive of reversible error. 5 Appeal2018-008818 Application 14/605,480 Appellants last argue that the recited granola food product results in a technical advantage in that it "does not become soggy in milk." Br. 6. Because this argument is not commensurate in scope with claim 1 - that is - it is not based on a limitation recited in the claim, we are not persuaded by it. In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (holding that unclaimed features cannot impart patentability to claims). Claims 2 & 34 Claim 2 depends from claim 1 and the limitation at issue here is "a glucose syrup having a DE between 25 and 30." The Examiner finds that Squire discloses a product having sugar and/or syrup such as glucose. Final Act. 4 (citing Squire ,r,r 38, 39). The Examiner finds that, given the identity of the prior art and recited products, it is within the ordinary skill to determine the DE of the sugar. Id. Appellants do not dispute that Squire discloses a product having glucose but argue that "it would be impossible for a skilled artisan to obviously modify or optimize the sugar formulations given in Squire or Creighton." Br. 7. We are not persuaded by Appellants' argument first and foremost because the argument is not supported by factual evidence. "Attorneys' argument is no substitute for evidence." Johnston v. IVAC Corp., 885 F.2d 1574, 1581 (Fed. Cir. 1989). Moreover, claim 2 recites a parameter of an ingredient known in the art (namely, glucose syrup), and such a recitation of the parameter does not structurally distinguish the prior art ingredient. See Atlas Powder Co., 190 4 Appellants do not present separate arguments for claim 3 and therefore stands or falls with claim 2. See Br. 7; see also 37 C.F.R. Â§ 4I.37(c)(1)(iv)(2013). 6 Appeal2018-008818 Application 14/605,480 F.3d at 1347 ("[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer."). We are therefore not persuaded that reversible error has been identified in the rejection of claim 2. 5 DECISION The Examiner's decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 5 A new ground of rejection has been entered for claims 2 and 3 in the Examiner's Answer. Ans. 4. We sustain the Examiner's rejection of claims 2 and 3 in the Final Rejection rendering it unnecessary to reach the new ground of rejection in the Examiner's Answer. 7