Ex Parte Enz et al

Patent Trial and Appeal Board

May 30, 2013

10369213 (P.T.A.B. May. 30, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JEFFREY ENZ, JEAN LOUISE WEBER, LISA KOPAS-LANE,
VICTOR HUANG, and JALAYNE MARTIN
__________

Appeal 2012-006891
Application 10/369,213
Technology Center 1700
__________

Before DEMETRA J. MILLS, ERIC GRIMES and
JEFFREY N. FREDMAN, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge MILLS.

Opinion Dissenting filed by Administrative Patent Judge FREDMAN.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for new matter and obviousness. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2012-006891
Application 10/369,213

STATEMENT OF CASE
Claim 1 is representative.
1. A refrigerated, unbaked dough product comprising:
a) a leavened dough;
b) a high moisture non-emulsified filling at least partially enrobed in
the leavened dough comprising
i) water present as about 35% to about 60% by weight of the
filling, and
ii) gelling agent or thickening agent,
iii) fat, when present, as no more than 15% by weight of the
filling,
said filling having a water moisture to fat content ratio when fat is present
greater than or equal to 1.8, wherein the filling has an uncooked 20º C. G'
value of at least about 4,000 pascals, and a 80º C. G' value of at least about
1000 Pa; and wherein the water activity of the filling is at least 0.85;
said dough product being at a temperature from about 0 °C. to about 10º C.,
and being disposed within a container at a pressure greater than one
atmosphere.

Cited References

Hahn et al. US 6,280,782 Issued Aug. 28, 2001

Grounds of Rejection
Claims 1-26 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-26 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hahn in view of applicant's admission of prior art.

FINDINGS OF FACT
The Examiner‟s findings of fact are set forth in the Answer at pages 4-
10. The following facts are highlighted.
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1. The Specification pages 15-16 states that,
For illustrative purposes only, the following exemplary
process of preparing a filling in accordance with the present
invention is provided. Any dry components, e.g., sugar or
the gelling agent, to be utilized in the filling can be mixed
together. The fat is then added, and advantageously may be
heated to a temperature at which the fat will flow to aid in
mixing. If a liquid sweetener is to be included in the filling,
it is desirably added next and also may be heated to aid in its
incorporation into the filling. Any other flavors and/or
additives desirably included in the filling may then be added
along with other liquid ingredients and the filling mixed
until uniform.

2. Hahn, describing his “non-emulsion based fillings” (Hahn,
col. 5, ll. 26-27) for dough products, states (id. at col. 12, ll. 24-40),
Thus, for illustrative purposes only, the following exemplary
process of preparing a filling in accordance is provided.
Any dry components, e.g., sugar or the viscosity
controlling agent, to be utilized in the filling can be mixed
together. The fat is then added, and advantageously may be
heated to a temperature at which the fat is more fluid to aid
in mixing, and the combination mixed until substantially
uniform. If a liquid sweetener is to be included in the
filling, it is desirably added next and also may be heated to
aid in its incorporation into the filling. Any other flavors
and/or additives desirably included in the filling may then be
added along with other liquid ingredients and the filling
mixed until uniform.

3. Hahn discloses (col. 7, ll. 17-20) that,
“for illustrative purposes only, the fat is desirably included
in the filling in an amount of from about 20% to about 60%,
more preferably from about 30% to about 50%, and most
preferably from about 35% to about 45%.”
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Discussion
Written Description - New Matter
ISSUE
The Examiner concludes that
Regarding the amendment filed on 7/30/09, the addition
of the limitation of “nonemulsified filling” is not supported in
the original disclosure. In the response of that date, applicant
refers to page 1 line 14; however, that page discloses “non-
emulsified filling” in patent no. 6280782 [Hahn], not with
regard to the instant invention. The specification teachings
regarding the instant invention, as well as the examples, do not
disclose that the filling is non-emulsified. There is no evidence
or disclosure supporting the concept that applicant had
considered this as part of their invention at the time the
application was filed. Furthermore, it is noted that page 1, line
14 of the specification specifically recites a “non-emulsion
based” filling of US PAT 6280782, not a “non-emulsified
filling” as claimed. A negative limitation cannot be added to the
claim unless it is specifically disclosed in the specification. A
“non-emulsion based” filling would appear to differ from a
“non-emulsified filling”, or at the least, is not defined or
explained as the same thing. In either instance, appellant does
not provide support for the instantly-claimed feature.

(Ans. 4-5.)

Appellants argue that

It is well known that two liquids, such as water and
oil/fat, will not naturally or automatically combine to form an
emulsion. Merely combining water and oil/fat will provide two
distinct layers, with the oil/fat floating on top of the water,
which is not an emulsion but is a non-emulsion; such a
composition is non-emulsified. Special mixing techniques need
to be used to form an emulsion with the drops or globules of the
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dispersed phase throughout the continuous phase. Usually,
high shear mixing is needed to disperse the one liquid into the
other liquid. Without the suspension of small globules of one
liquid (i.e., the dispersed phase) in a second liquid (i.e., the
continuous phase), it is not emulsion but is a non-emulsion.
Throughout the application, various examples of mixing
the fat and water are provided. See, for example, the Examples,
particularly page 19, lines 9-16 and lines 31-37; page 20, lines
19-26; page 21, lines 15-17; and page 21, line 35 to page 22,
line 1. In these examples, the filling is prepared using regular
mixing to uniformity, which does not result in an emulsion. The
skilled artisan would recognize that the examples were prepared
under conditions that will not form an emulsion.
Additionally, as evidenced by page 1, lines 14-15 of the present
application, Applicants (now Appellants) recognized that U.S.
Patent 6,280,782 taught non-emulsion, moisture containing
fillings. The language used in the present application to
describe the mixing operation for making the filling is identical
to that of U.S. Patent 6,280,782 (see col. 12, lines 24- 40 of
„782 patent and compare with page 15, line 28 - page 16, line 7
of present application). In the „782 patent the filling is
expressly described as being a non-emulsion. Because the
physical operations and lack of emulsifier are identical in the
two disclosures and because the specification of the „782 patent
is incorporated by reference in the present application (see page
22, lines 16-17 of present application), reciting the filling as a
non-emulsified filling in the pending claims is fully supported
by the express teaching of the present specification and by the
literal incorporation by reference of this term.

(App. Br. 9-10.)

The issue is: Is the claim language “non-emulsified filling” new
matter to the application or supported by the original disclosure?

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PRINCIPLES OF LAW
“Section 132 prohibits the introduction of new matter into the
disclosure of an application. Section 112, first paragraph, requires that claim
language be supported in the specification. . . . [A] rejection of an amended
claim under § 132 is equivalent to a rejection under § 112, first paragraph,
for lack of support.”“ In re Rasmussen, 650 F.2d 1212, 1214 (CCPA 1981).
The examiner “„bears the initial burden . . . of presenting a prima facie
case of unpatentability.‟ In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir.
1992). Insofar as the written description requirement is concerned, that
burden is discharged by „presenting evidence or reasons why persons skilled
in the art would not recognize in the disclosure a description of the invention
defined by the claims.‟ . . . If . . . the specification contains a description of
the claimed invention, albeit not in ipsis verbis (in the identical words), then
the examiner . . ., in order to meet the burden of proof, must provide reasons
why one of ordinary skill in the art would not consider the description
sufficient.” In re Alton, 76 F.3d 1168, 1175 (Fed. Cir. 1996).

ANALYSIS
We find that the Examiner has not carried the burden of showing that
a skilled artisan would not recognize possession of a “non-emulsified
filling” in the Specification. The original disclosure at page 15, l. 28 to page
16, l. 7 (FF1) is very similar to the disclosure for preparing a non-emulsion
based filling in Hahn at col. 12, lines 24-40 (FF2). The claimed subject
matter need not be described in haec verba to satisfy the description
requirement. It is not necessary that the application describe the claim
limitations exactly, but only so clearly that one having ordinary skill in the
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pertinent art would recognize from the disclosure that appellants invented a
composition including that limitation. In re Herschler, 591 F.2d 693, 700
(CCPA 1979).
Here, the Specification describes a method of making a filling that is
virtually identical to the method described in Hahn for making a non-
emulsion based filling. We agree with Appellants that the Specification
shows that one having ordinary skill in the pertinent art would recognize that
appellants had possession of a dough including that limitation. The
Examiner has not provided an adequate basis for concluding that the
disclosure in the Specification of preparing a dough filling which is similar
to the process of preparing a non-emulsion based filling in Hahn is
insufficient to support claims to a non-emulsified filling. The new matter
rejection is reversed.

Discussion Obviousness

ISSUE
The Examiner finds that Hahn discloses each element claimed except
the G’ values and the water activity. (Ans. 5-6.) The Examiner finds that
Hahn et al disclose liquid is present in amount of about 35%
and the fat can be about 20% which mean[s] it can be less than
20%. …. In any event, it would have been obvious to use a
little less fat to lessen the fat content without detrimental effect
to the function of the fat. Hahn discloses on col. 7 lines 18-20
that the fat is desirably included in amount of about 20; there is
no absolute critical requirement that the fat has to be include in
this amount.

(Ans. 6-7.)
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In addition to other arguments, Appellants argue that “the pending
claims require that the filling have no more than 15% by weight fat. Hahn
indicates that about 20-60% fat can be present in the filling.” (App. Br. 11.)
Appellants argue that
because the filling in the pending claims has fat at a level of no
more than 15%, and Hahn teaches having fillings with about
20-60% fat, and there is no motivation to modify these
teachings, Appellants contend a prima facie case has not been
established.

(App. Br. 12.)

The issue is: Does the cited prior art suggest the fat content claimed?

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).
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When determining whether a claim is obvious, an Examiner must
make “a searching comparison of the claimed invention – including all its
limitations – with the teachings of the prior art.” In re Ochiai, 71 F.3d 1565,
1572 (Fed. Cir. 1995).
ANALYSIS
We do not find that the Examiner has presented a prima facie case of
obviousness on the evidence before us. In particular, we do not find that the
examiner has provided evidence in the prior art, Hahn, to support the
claimed fat content.
Pending claim 1 indicates that the fat, when present, is no more than
15% by weight of the filling. Hahn discloses at col. 7, ll. 17-20 that, “for
illustrative purposes only, the fat is desirably included in the filling in an
amount of from about 20% to about 60%, more preferably from about 30%
to about 50%, and most preferably from about 35% to about 45%.” (FF3.)
Appellants argue that the pending claims recite “no more than 15%” whereas
the Hahn reference teaches “about 20-60%”. Appellants argue that there is
no suggestion in Hahn to have no more than 15% fat because Hahn teaches
much higher levels of fat in general, i.e., about 20-60% fat.
We agree with Appellants and do not find that the Examiner has
provided a showing that the prior art would have suggested a fat content of
no more than 15% by weight of the filling, as claimed. Hahn discloses that
higher amounts of fat – at least about 20% – are desirable, and the Examiner
has not pointed to any basis in Hahn for lowering amounts of fat to no more
than 15%. Although the Examiner reasons that it would have been obvious
to decrease the amount of fat in Hahn’s filling “to lessen the fat content
without detrimental effect to the function of the fat” (Ans. 6), the Examiner
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has not provided evidence or technical reasoning to show that Hahn’s filling
could be modified to have a fat content of 15% or less without detrimental
effect on its desirable qualities. The obviousness rejection is reversed.

CONCLUSION OF LAW
The new matter and obviousness rejections are reversed.

REVERSED

lp

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1

DISSENTING OPINION
FREDMAN, Administrative Patent Judge
I respectfully dissent from the Majority‟s analysis of the new matter
issue and obviousness issues.
New Matter
In my opinion, the Examiner‟s new matter rejection is consistent with
both Hyatt v. Dudas, 492 F.3d 1365 (Fed. Cir. 2007) and Ariad
Pharmaceuticals, Inc. v. Eli Lilly and Co., 598 F.3d 1336 (Fed. Cir. 2010).
The Examiner here finds that “the addition of the limitation of „non-
emulsified filling‟ is not supported in the original disclosure” (Ans. 4). The
Majority contends that “the Examiner has not carried the burden of showing
that a skilled artisan would not recognize possession of a „non-emulsified
filling‟ in the Specification” (Maj. Opinion at 6).
In my view, the Majority opinion turns the burden of a written
description rejection on its head. Rather than recognize a burden on
Appellants to provide an actual description in their Specification which
inherently or expressly teaches a “non-emulsified filling,” the Majority
instead imposes a burden on the Examiner to perform an experimental
comparison, before a written description rejection can be written.
The Majority incorrectly places the burden of demonstrating new
matter on the Examiner, rather than on Appellants. In Hyatt, the Federal
Circuit found that “[w]hen no such description can be found in the
specification, the only thing the PTO can reasonably be expected to do is to
point out its nonexistence.” Hyatt, 492 at 1370.
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While Appellants state that “general support for the feature of the
filling being „non-emulsified‟ is in the specification as originally filed”
(App. Br. 9), I do not find any identification by Appellants of any specific
support, either express or inherent, for the phrase “non-emulsified filling” in
the Specification.
Appellants contend that in the “examples, the filling is prepared using
regular mixing to uniformity, which does not result in an emulsion” (App.
Br. 10). Appellants do not, however, provide any evidence to support this
finding that the regular mixing used repeatedly in the Specification will not
result in an emulsion. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
(“Attorney‟s argument in a brief cannot take the place of evidence.”). In
contrast, I would take official notice that even shaking a vinaigrette type
salad dressing by hand for 10 seconds will form a temporary emulsion, so
the Examiner reasonably disputes Appellants‟ contention that two minutes of
stirring followed by two minutes of low and high speed mixing using a
blending machine as described in the Specification necessarily fails to form
an emulsion (see Spec. 19, ll. 9-16).
While I find that it is not necessarily obvious to mix in a way which
would avoid forming an emulsion, even if it were obvious to avoid forming
an emulsion, “a description that merely renders the invention obvious does
not satisfy the [written description] requirement.” Ariad, 598 F.3d at 1352.
The Majority also relies upon the similarities in the Specification‟s
mixing method and that of Hahn to support the conclusion that the instant
mixing does not result in an emulsion (see Maj. Opinion 7). These teachings
do not, however, provide the identical conditions of mixing which
demonstrate that the Specification‟s process necessarily results in a non-
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emulsified filling. Comparing Example 1 of the Specification to Example 1
of Hahn demonstrates notable differences. Example 1 of the Specification
combines different ingredients than Hahn including a mixture of water and
the emulsifiers Hydroxypropyl Methylcellulose K4M and glycerol with a
final mix including all components at low and high speed for one minute
each (see Spec. 19, ll. 9-16). However, Example 1 of Hahn does not add
emulsifiers, adds the other ingredients in a different sequential order and
mixes for a single minute at an unspecified speed (see Hahn, col. 14, ll. 36-
47).
Consequently, there is no evidence or reason to believe that the
method of the Specification necessarily results in an non-emulsified mixture.
Since I contend that Hyatt places the burden of production regarding new
matter upon Appellants, the absence of such evidence, along with the
absence of any specific teaching or suggestion in the Specification that the
filling is or should be non-emulsified, supports my conclusion that the
phrase “non-emulsified” represents new matter.
In conclusion, I would affirm the Examiner‟s written description
rejection.
Obviousness
The Majority does “not find that the Examiner has provided a
showing that the prior art would have suggested a fat content of no more
than 15% by weight of the filling, as claimed” (Maj. Opinion at 9).
In my view, the issue with regard to obviousness is whether the
skilled artisan would have expected the amounts of fat used in claim 1 and in
Hahn to have the same properties. See In re Peterson, 315 F.3d 1325, 1329
(Fed. Cir. 2003) (“We have also held that a prima facie case of obviousness
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exists when the claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have expected them to
have the same properties”).
Hahn expressly teaches that “the fat is desirably included in the filling
in an amount of from about 20% to about 60%” (Hahn, col. 7, ll. 17-19). The
Specification teaches that “[p]referably, fat is present as 0.1-20%” (Spec. 10,
l. 31; see Ans. 9). Thus, consistent with Hahn and the Specification, the
ordinary artisan would have reasonable expectations that 15% fat and 20%
fat would share the same properties.
Here again, I dispute the placement of the burden of production by the
Majority onto the Examiner. The Examiner has reasonably satisfied the
requirements of Peterson, demonstrating that the ranges are close, “about
20%” in Hahn and “15%” in claim 1. Based on Hahn alone, the artisan
expects no change from 20% to 60%, a 300% difference in fat content, so it
is reasonable for the Examiner to find that the 10-20% difference in fat
content between “about 20%” to “15%” would have been expected by the
artisan to also share similar properties. This is particularly clear since the
Specification teaches that “[p]referably, fat is present as 0.1-20%” (Spec. 10,
l. 31).
Here again, Appellants resort to argument rather than evidence, failing
to rebut the Examiner‟s prima facie case of obviousness with a showing that
selection of 15% fat results in a critical or substantive or even minor
difference when compared to the “about 20%” fat amount disclosed in Hahn.
Finally, Appellants argue that “[a]lthough the broad ranges of the
ingredients of Hahn and their levels may be arguably close to that presently
claimed, the ingredients and their levels are indeed different, do not overlap,
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and form a different physical composition. Thus it cannot be assumed that
the elastic modulus is the same” (App. Br. 13).
I do not find this argument persuasive in the absence of evidence
demonstrating that the elastic modulus of Hahn differs in a non de minimis
amount from that of the claimed product. Given Appellants
acknowledgement of the close values of the prior art, I would find the
Examiner has reasonably established a prima facie case of obviousness. See
In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced
by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently
possess the characteristics of his claimed product.… Whether the rejection is
based on „inherency‟ under 35 U.S.C. § 102, on „prima facie obviousness'
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the
same, and its fairness is evidenced by the PTO‟s inability to manufacture
products or to obtain and compare prior art products.). Appellants have
provided no evidence which rebuts the Examiner‟s position, only argument.
In conclusion, I would affirm the Examiner‟s obviousness rejection.