Ex Parte Gutknecht et al

Patent Trial and Appeal Board

Apr 21, 2017

13341563 (P.T.A.B. Apr. 21, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
FFl 1003USU 7820
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
13/341,563 12/30/2011
78298 7590
Jay M. Brown
JAY BROWN LAW FIRM
P.O. Box 1407
Cary, NC 27512
Jon R. Gutknecht
04/21/2017 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 JON R. GUTKNECHT and JOHN B. OVITT1
Appeal 2016-000528
Application 13/341,563
Technology Center 1700
Before PETER F. KRATZ, CHRISTOPHER C. KENNEDY, and
MONTE T. SQUIRE, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1—12 and 14—21. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a process of making a cheese
product. E.g., Claim 1. Claim 1 is reproduced below from page 10 (Claims
Appendix) of the Appeal Brief:
1 According to the Appellants, the real party in interest is Franklin Foods
Holdings Inc. App. Br. 3.
Appeal 2016-000528
Application 13/341,563
1. A process of making a cheese product, comprising:
providing a concentrated milk composition including milk
protein, at a first temperature being at least about 20 degrees
Fahrenheit (°F) above a melting point of the concentrated milk
composition; and providing a plant fat composition including
plant fat, at a second temperature being at least about 20°F above
a melting point of the plant fat composition;
then combining a first amount of the concentrated milk
composition being at the first temperature together with a second
amount of the plant fat composition being at the second
temperature, thereby forming a homogeneous composition that
includes the milk protein and the plant fat, and that has an initial
pH, and that has a concentration by weight of water being within
a range of between about 49% and about 57%;
combining an amount of an edible acid together with the
homogeneous composition that includes the milk protein and the
plant fat, and directly setting the composition that includes the
milk protein and the plant fat by adjusting the initial pH to a
reduced pH being within a range of between about 4.9 and about
4.5, forming a homogeneous direct-set product that includes the
milk protein and the plant fat; and
combining a third amount of the homogeneous direct-set product
together with a fourth amount of a composition that includes a
milk composition having been inoculated with lactic acid -
producing mesophilic bacteria and subjected to culturing of the
mesophilic bacteria to form lactic acid.
ANALYSIS
Claims 1—12 and 14—21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brooks et al. (US 2008/0160133 Al, published July 3,
2008). The Appellants argue the claims as a group. We select claim 1 as
representative of the rejected claims. The remaining claims on appeal will
stand or fall with claim 1.
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Application 13/341,563
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejection. Accordingly, we affirm the rejection for reasons set forth below,
in the Final Action, and in the Examiner’s Answer. See generally Final Act.
2—7; Ans. 2—8.
The Examiner finds, inter alia, that Brooks “does not disclose wherein
the fat source and the protein source are combined and mixed after heating
each component separately to temperatures at least about 20°F above their
respective melting points.. . . Instead, Brooks et al. disclose combining a fat
source, a protein source and a source of moisture, heating the mixture to
temperatures above the melting point of the fat. . . and homogenizing the
mixture . . . .” Final Act. 3^4. The Examiner thus determines that a
difference between the claimed method and the method of Brooks is the
order in which the steps are carried out; i.e., claim 1 requires individually
heating the milk composition and the plant fat composition and then
combining them, while Brooks teaches combining the milk composition and
the plant fat composition and then heating them. See id. The Examiner
concludes that “the selection of any order of performing the process steps is
prima facie obvious in the absence of new or unexpected results.” Id. at 4.
The Appellants argue that the order in which process steps are carried
out “can be result-effective variables,” that Brooks does not recognize
“Appellant’s result-effective variables,” and that unexpected results support
a conclusion of nonobviousness. See App. Br. 5—8.
We are not persuaded by those arguments. The Appellants cite two
nonprecedential decisions of the PTAB in support of their position that the
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order in which process steps are carried out may be considered a result-
effective variable. See App. Br. 5—6. Although those cases are not binding
on this panel, we have reviewed those cases, and neither case persuades us
that the order of steps recited by claim 1 should be considered under a result-
effective variable analysis. In Ex parte Zaghouani, Appeal No. 2012-
009223 (PTAB July 1, 2013), it appears that the claim requirement that “the
subject has undergone insulin autoantibody seroconversion prior to said
administering step” (emphasis added) did not appear in the prior art. See
Zaghouani, slip op. at 10-12. An analysis contemplating reordering of steps
would have been inapposite because the prior art of record did not teach all
of the steps. See id. To the extent that the Appellants rely on Ex parte
Masters, Appeal No. 2007-0182 (BPAI Feb. 28, 2007), the Appellants
provide no pin cite or discussion of the case, see App. Br. 6, and it appears
to be a typical result-effective variable case in which the concentration of an
ingredient—not the order in which steps are performed—was at issue, see
Masters, slip op. at 4—5.
The Appellants’ claim 1 recites an order of steps: the milk
composition and the plant fat composition are “provided]” at elevated
temperatures (i.e., they are heated), and they are “then combin[ed] . . .
thereby forming a homogenous composition.” See claim 1. The Examiner
finds, and the Appellants do not dispute, that Brooks also teaches the steps at
issue, i.e., heating and combining to form a homogenized mixture, but that
Brooks teaches first combining, and then heating. See Final Act. 3^4. On
this record, we determine that case law concerning the order of steps in
process claims is more germane to the disputed issues in this case than is
case law concerning optimization of result-effective variables.
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As the Examiner explains, see Final Act. 4, the selection of any
particular order of performing known process steps typically is prima facie
obvious in the absence of new or unexpected results. See In re Burhans, 154
F.2d 690, 692 (CCPA 1946); see also In re Gibson, 39 F.2d 975, 976-77
(CCPA 1930) (selection of any order of mixing ingredients is prima facie
obvious). In the Appeal Brief, the Appellants do not meaningfully dispute
the Examiner’s determination that a difference between claim 1 and Brooks
is the order in which process steps are carried out, as described above. The
Appellants’ argument that “there is no prior art recognition in Brooks of
Appellant’s result-effective variables,” see App. Br. 7—8, is inapposite
because, as discussed above, we are not persuaded that the result-effective
variable analysis presented here is applicable, or that it outweighs the
Examiner’s determination of prima facie obviousness of the claimed subject
matter based on re-ordering the steps of Brooks that is at issue in the
rejection before us.
The Appellants also argue that unexpected results support their
position. See App. Br. 6—7. Although presented in the context of result-
effective variables, the argument is nevertheless relevant to the Examiner’s
analysis because the prima facie case set forth by the Examiner may be
rebutted by unexpected results. See Burhans, 154 F.2d at 692. The
Appellants’ argument, however, is unpersuasive. While the Appellants use
the word “unexpected,” they provide no persuasive evidence or technical
explanation suggesting that a person of ordinary skill in the art would have
considered the alleged benefits to have been unexpected. See App. Br. 6; cf.
In reKlosak, 455 F.2d 1077, 1080 (CCPA 1972) (“Thus it is not enough to
show that results are obtained which differ from those obtained in the prior
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Application 13/341,563
art: that difference must be shown to be an unexpected difference.”
(emphasis in original)).
Moreover, the Appellants have not shown that the compositions of
Brooks would not have possessed the same alleged benefits. See, e.g., In re
Baxter TravenolLabs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen
unexpected results are used as evidence of nonobviousness, the results must
be shown to be unexpected compared with the closest prior art.”). On the
contrary, Brooks teaches compositions that are homogenous, see Brooks
114, and that have “a creamy and firm texture comparable to a full fat
conventional case-in based cream cheese food product,” see Brooks at
Abstract. The benefits taught by Brooks appear to be the same as, or at least
similar to, the alleged unexpected benefits of the claimed process. See App.
Br. 6-7.
The Appellants also identify portions of the Specification suggesting
that “deviations from the steps of the processes” “may” reduce homogeneity
in the compositions (“a globular gel phase remaining separate from another
phase of the concentrated milk composition”). See App. Br. 7 (quoting
Spec. 137). However, the statements in the Specification are not persuasive
of unexpected results, particularly given that they merely suggest the
possibility of reduced homogeneity, which does not appear to be a problem
in the composition of Brooks in any event. See Brooks at Abstract, 114.
Accordingly, we are not persuaded that the claimed sequence of steps
produces unexpected results relative to other known sequences, such as that
of Brooks.
To the extent that the Appellants focus on new arguments in the Reply
Brief, see Reply Br. 2—3 (arguing that claim 1 requires “two separate heating
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Application 13/341,563
steps” that “may be [at] two different temperatures”), those arguments are
untimely, and the Appellants have not established good cause for failing to
present those arguments in the opening Appeal Brief. See 37 C.F.R.
§ 41.41(b)(2). Even if they were timely, they would be unpersuasive
because, as the Appellants concede, claim 1 does not require the first and
second temperatures to be different from each other. See, e.g., Reply Br. 3;
claim 1; Spec. 114 (“difference between the first and second temperatures”
may be “5°F or less”). Heating two different ingredients individually before
combining them inherently could be considered as two separate heating
steps. In other words, if you simply switched the order of the steps of
Brooks (heat then combine, rather than combine then heat), two heating
steps (i.e., one for each ingredient) would be necessary.
In any event, heating the compositions separately and then combining
them, as claimed, appears to simply be a rearrangement of the order of a
process disclosed by the prior art (heating and then combining instead of
combining and then heating). As set forth above, we are not persuaded that
new or unexpected results rebut the prima facie case of obviousness.
We affirm the Examiner’s rejection of claim 1.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 1—12 and 14—21.
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
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