Ex Parte Eckstrom

Patent Trial and Appeal Board

Jun 19, 2018

13561688 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/561,688 07/30/2012
48940 7590 06/19/2018
FITCH EVEN TABIN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 2100
CHICAGO, IL 60603-3406
FIRST NAMED INVENTOR
Eleanore Brophy Eckstrom
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.
1410-102476-US 8119
EXAMINER
WILLIAMS, LELA
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
06/19/2018 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 ELEANORE BROPHY ECKSTROM
Appeal2017-008701
Application 13/561,688 1
Technology Center 1700
Before KAREN M. HASTINGS, JAMES C. HOUSEL,
and JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 1-23 under 35 U.S.C. § 103(a) as
being unpatentable over Barnard2 in view of Hine. 3
1 Appellant identifies the real party in interest as Kraft Foods Group Brands
LLC, which is owned by KFG Management Services, LLC, which is owned
by Kraft Heinz Foods Company. Appeal Brief (Appeal Br. 3) filed
December 15, 2016.
2 Barnard et al., US 2010/0112147 Al, published May 6, 2010 ("Barnard").
3 Hine et al., US 2004/0247758 Al, published Dec. 9, 2004 ("Hine").
Appeal2017-008701
Application 13/561,688
We have jurisdiction under 35 U.S.C. § 6(b). 4
We AFFIRM-IN-PART.
The subject matter on appeal relates to methods for preparing a
ready-to-bake batter (see, e.g., claims 1, 9, and 15). The inventor discloses
that making a cheesecake from scratch requires significant time and effort
that many consumers are unwilling or unable to expend. Spec. ,r 3.
According to the inventor, ready-to-use cheesecake products are available
but they sacrifice some degree of quality for convenience. Id. The inventor
further discloses that some cheesecake batters sacrifice flavor and texture for
shelf life and stability. Id. ,r 9. In view of this, the inventor discloses a
cheesecake batter having the quality and flavor of a baked-from-scratch
cheesecake that can be made in an easy and time-saving manner. Id. ,r 12.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief. Limitations at issue are italicized.
1. A method for preparing a ready-to-bake batter, the
method comprising the steps of:
combining cream cheese, cream, sweetener, and eggs to
form a mixture;
heating the mixture to a temperature in a range of about
140°F to about 155°F to create a heated mixture;
injecting an inert gas into the heated mixture when the
heated mixture has a temperature in a range of about 140°F to
about 155°F;
aerating the heated mixture; and
cooling the heated mixture to form a batter.
4 Our Decision refers to the Specification (Spec.) filed July 30, 2012, the
Final Office Action (Final Act.) notice emailed June 15, 2016, Appellant's
Appeal Brief (Appeal Br.) filed December 15, 2016, the Examiner's Answer
(Ans.) dated March 21, 2017, and Appellant's Reply Brief (Reply Br.) filed
May 22, 2017.
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Application 13/561,688
B. DISCUSSION
Appellant presents arguments for claims 1, 3, 5-8, and 20; claim 4;
claims 2, 9-19, 21, and 22; and claim 23. Appeal Br. 10-17. We address
the § 103 (a) of claims 1-23 below according to these four groups of claims.
Claims 1, 3, 5-8, and 20
The Examiner finds Barnard discloses a method of preparing a shelf
stable dairy product produced by mixing cream cheese, sweetener, and a
protein, heating the mixture to a temperature greater than about 140°F, and
aerating the heated mixture. Final Act. 2.
The Examiner finds Barnard does not disclose that the dairy product is
a ready-to-bake batter, as recited in claim 1. Id. at 3. The Examiner finds
Hine discloses a method of preparing a ready-to-bake batter in which cheese,
cream, sweetener, and egg are combined. Id. The Examiner concludes it
would have been obvious to modify the product of Barnard to be the batter
of Hine in order to produce a cheesecake product. Id.
Appellant contends it would not have been obvious to modify Barnard
in view of Hine because Barnard's aeration process would denature eggs and
their proteins due to the relatively high temperature used during aeration,
which might be suitable for Barnard's cream cheese composition but not for
one including eggs, which would be cooked in Barnard's packaging. Appeal
Br. 11-12, 15. In contrast, Hine cools its composition prior to aeration and
Hine teaches cooling ensures bacteriological safety during subsequent
operations and facilitates whipping. Appeal Br. 12-13, 16; Reply Br. 2--4.
In addition, Appellant argues it would not have been obvious to combine
Barnard and Hine because they are directed to different compositions that
are prepared and stored in different manners (i.e., Barnard's composition is
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Application 13/561,688
shelf-stable while Hine's should be kept cool or frozen). Appeal Br. 12-14;
Reply Br. 1, 3.
Appellant's arguments are unpersuasive. As stated by Appellant at
page 13 of the Appeal Brief, there is at least some degree of overlap in the
compositions of Barnard and Hine. Barnard discloses a dairy product that
may contain a dairy food base, a fat, and a hydrocolloid stabilizing system
that can include a blend of at least two gums ( e.g., gelatin or carrageenan).
Id. ,r,r 10, 14. Hine discloses a batter mix for a cheesecake-like product that
includes milk protein, gelling agents or stabilizers ( e.g., gelatin, carrageenan,
and other gums), cheese, cream, egg, fat, and sugar. Hine ,r,r 5, 14--15,
18-21. Thus, the compositions of Barnard and Hine both include milk
protein, gums that function as stabilizers, and fat. Moreover, Hine discloses
its batter mix is desirable for consumers who want a cheesecake-like product
but at a lower price. Id. ,r 5. Thus, Hine's disclosure would have provided a
reason for one of ordinary skill in the art to use its batter mix.
Appellant argues the proteins disclosed by Barnard are milk proteins
and Barnard does not disclose the use of eggs. Appeal Br. 10-11, 14; Reply
Br. 3. Appellant further contends that Hine teaches its composition should
include substantially no egg. Appeal Br. 12, 15; Reply Br 2. Nevertheless,
as the Examiner finds (Ans. 3), Barnard actually teaches that various protein
sources can be used in the dairy product and eggs are a well known source of
protein. Barnard ,r 29. Further, Hine discloses the use of eggs in the batter
mix. Hine ,r 19.
As for the processing of the batter mix, Hine discloses homogenizing,
pasteurizing, and adding acid to its batter mix. Hine ,r,r 23-28. After
homogenization, pasteurization, and acidification, Hine discloses its mix is
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Application 13/561,688
preferably cooled to ensure bacteriological safety during subsequent
operation and to carry out whipping (i.e., aeration) more readily. Id. ,r,r
28-29.
Barnard discloses "hot-temperature aerated dairy products having
shelf stable properties." Barnard ,r 1. Specifically, Barnard teaches that
dairy products are commonly aerated before packaging to give them a
desired texture and appearance. Id. ,r 2. According to Barnard, the
conventional aeration of a dairy product at the high temperatures required to
make a dairy product shelf stable does not produce an aerated cell structure
that is maintained. Id. As a result, dairy products were conventionally
aerated at lower temperatures but such a process requires costly aseptic
packaging for shelf-stability. Id. In view of this, Barnard discloses a dairy
product that is aerated at high temperatures (i.e., greater than about 140°F)
but maintains an aerated cell structure without requiring aseptic filling and
packaging. Id. ,r 10. Therefore, Barnard contemplates both cold aeration
( e.g., as disclosed by Hine) and hot aeration of dairy products.
As for processing at relatively high temperatures and concerns for
bacteriological safety, although Barnard discloses hot filling a product into
packaging after aeration and permitting the product to cool over about
twenty-four hours, Barnard also states "[i]f desired, of course, the product
can be cooled faster using conventional techniques." Barnard ,r 27. Thus,
Barnard contemplates faster cooling after aeration, which would limit the
amount of time a product (i.e., the batter mix of Hine) remains at a
temperature of about 140°F or more. Moreover, Hine contemplates some
degree of processing at relatively high temperatures by disclosing its
pasteurization process can be conducted at 70°C (i.e., 158°F) for 30 seconds
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or more. Hine ,r 25. Further, there is no evidence in the record that the hot
aeration process of Barnard would have been unsuitable from a
bacteriological safety standpoint or would have denatured the eggs of Hine's
batter mix, as asserted by Appellant. 5
In view of the above, the collective teachings of Barnard and Hine
would have suggested aerating the batter mix of Hine at a temperature of
greater than about 140°F, as disclosed by Barnard. As a result, a
preponderance of the evidence in the record supports the Examiner's
rejection of claim 1. Appellant does not present separate arguments for
claims 3, 5-8, and 20, which depend from claim 1. Appeal Br. 10-16.
For the reasons discussed above and those set forth in the Examiner's
Answer, we sustain the Examiner's§ 103(a) rejection of claims 1, 3, 5-8,
and 20.
Claim 4
Claim 4 depends from claim 1 and recites "wherein the cream cheese
and cream are each preheated prior to combining with the eggs."
The Examiner finds that although Hine does not expressly disclose
preheating its cream cheese and cream prior to combination with egg, such a
step would have been obvious to soften the texture of the cream cheese and
cream and thus, facilitate mixing the ingredients. Final Act. 4; Ans. 3--4.
Appellant asserts Barnard does not disclose the use of eggs and Hine
discloses cold mixing its ingredients. Appeal Br. 14. These arguments,
however, do not address the Examiner's rejection or otherwise identify a
reversible error in the Examiner's basis for rejecting claim 4.
5 "Attorney's argument in a "brief cannot take the place of evidence." In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
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Therefore, for the reasons discussed above and those set forth in the
Examiner's Answer, we sustain the Examiner's§ 103(a) rejection of claim
4.
Claims 2, 9-19, 21, and 22
Claim 2 depends from claim 1 and recites "wherein the aerating and
cooling steps are performed concurrently."
Independent claim 9 recites a method for preparing a ready-to-bake
batter comprising, among other things, "aerating and cooling the heated
mixture concurrently to form a batter." Claims 10-14 and 21 depend from
claim 9.
Appellant argues the Examiner's conclusion that the recitations of
claims 2, 9-14, and 21 would have been obvious is based upon an
assumption and do not follow the teachings of Barnard, which discloses
aerating a hot mixture, packaging the mixture, and then cooling the mixture.
Appeal Br. 16-17.
Appellant's arguments are persuasive. The Examiner finds that
Barnard discloses packaging its product at high temperature and permitting
the product to cool or cooling the product more quickly using conventional
techniques. Ans. 4--5. The Examiner finds that although Barnard does not
expressly disclose aerating and cooling concurrently, the Examiner
concludes it would have been obvious to do so because such a modification
would have reduced the cooling time for the product and provided a more
efficient process. Id. at 5.
A determination that an invention would have been obvious to one of
ordinary skill in the art under § 103 is a conclusion of law based on fact
Panduit Corp. v. Dennison Jvifg;. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987);
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see Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Here, Barnard,
does not disclose or suggest concurrently aerating and cooling its product.
In fact, Barnard discloses heating its mixture, aerating the mixture, and
packaging and cooling the mixture after aeration. Barnard ,r,r 26-27.
Therefore, Barnard's disclosure does not provide a factual basis or rational
underpinning to support the Examiner's conclusion of obviousness.
"' [R ]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness."' KSR Intern. Co. v. Teleflex Inc.,550 U.S. 398,418 (2007)
(quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
For the reasons discussed above, we do not sustain the Examiner's
§ 103(a) rejection of claims 2, 9-14, and 21.
Appellant argues claims 15-19 and 22 together with claims 2, 9-14,
and 21. Appeal Br. 16-17. However, claims 15-19 and 22 do not recite
concurrent aeration and cooling. Independent claim 15 recites a method for
preparing a ready-to-bake batter comprising, among other things, "aerating
and cooling the heated mixture in a scraped surface heat exchanger to form a
batter." Claims 16-19 and 22 depend from claim 15 and do not recite
concurrent aeration and cooling. Nor does Appellant's Specification define
a scraped surface heat exchanger as necessarily performing aeration and
cooling concurrently. For instance, paragraph 47 of the Specification states
"[t]he scraped surface heat exchanger 32 may be used to further aerate and
also cool the heated combined ingredients to create a cheesecake batter" but
does not indicate that aeration and cooling would be conducted concurrently
because they are performed by a scraped surface heat exchanger. As a
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result, claims 15-19 and 22 do not require concurrent aeration and cooling
and Appellant has not set forth arguments directed to the limitations of
claims 15-19 and 22.
Therefore, for the reasons discussed above and those set forth in the
Examiner's Answer, we sustain the Examiner's§ 103(a) rejection of claims
15-19 and 22.
Claim 23
Claim 23 depends from claim 1 and recites "wherein the mixture
includes at least about 10% eggs."
The Examiner finds that Barnard and Hine do not disclose the egg
content recited in claim 23 but considers egg content a result-effective
variable and it would have been obvious to optimize or determine the
workable ranges for egg via routine experimentation and arrive at the
content recited in claim 23. Final Act. 11.
Appellant asserts Barnard does not disclose or suggest the use of eggs
and Hine discloses eggs but prefers no eggs due to the pasteurization step
disclosed by Hine. Appeal Br. 17; Reply Br. 4. Thus, Appellant argues,
Hine does not disclose or suggest the egg content recited in claim 23.
Appeal Br. 17.
In response, the Examiner finds the amount of egg preferred by Hine
(i.e., less than 2% (Hine ,r 19)) is contingent upon conducting the
pasteurization step disclosed by Hine but Barnard does not require
pasteurization. Ans. 5. In view of this, the Examiner concludes it would
have been obvious to use any amount of egg that can be determined based
upon the ingredients used in a batter and because Appellant has not set forth
evidence demonstrating criticality for the claimed egg content. Id.
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Appellant's arguments are persuasive. The disclosures of Barnard and
Hine do not lend factual support to the Examiner's conclusion of
obviousness. Barnard does not disclose the use of eggs in its product and
Hine does not disclose using at least about 10% eggs, as recited in claim 23,
or that egg content is a result-effective variable. Indeed, Hine tends to lead
one in a different direction than the method recited in claim 23. See Hine
,r 19. Moreover, appellants are not required to demonstrate any criticality
unless a prima facie case of obviousness has been established. In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992). Here, the Examiner has not set forth
a prima facie a case of obviousness for claim 23.
For the reasons discussed above, we do not sustain the Examiner's
§ 103(a) rejection of claim 23.
C. CONCLUSION
On the record before us, we:
I. sustain the§ 103(a) rejection of claims 1, 3-8, and 20;
II. do not sustain§ 103(a) rejection of claims 2, 9-14, and 21; and
III. sustain the § 103(a) rejection of claims 15-19 and 22;
IV. do not sustain the§ 103(a) rejection of claim 23.
DECISION
The decision of the Examiner to reject claims 1-23 is affirmed-in-
part.
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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-IN-PART
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