Ex Parte Kim et al

Patent Trial and Appeal Board

Oct 16, 2017

13413366 (P.T.A.B. Oct. 16, 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.
13/413,366 03/06/2012 Dennis Ann Kim 1410-98956-US 7448
48940 7590 10/17/2017
FITCH EVEN TAB IN & FLANNERY, LLP
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
PRAKASH, SUBBALAKSHMI
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/17/2017 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 DENNIS ANN KIM, LISA A. DIERBACH,
ANDREW E. MCPHERSON, ALLISON R. BULL, and
TRACY JOELLA SANBORN
Appeal 2016-008550
Application 13/413,366
Technology Center 1700
Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1, 2, 5—8, 11—13, 18, 19, and 21—23. We have
1 In this decision, we refer to the Specification filed March 6, 2012
(“Spec.”), Final Office Action mailed March 17, 2015 (“Final Act.”), the
Appeal Brief filed December 22, 2015 (“Appeal Br.”), the Examiner’s
Answer mailed July 14, 2016 (“Ans.”), and the Reply Brief filed
September 14, 2016 (“Reply Br.”).
2 Appellants identify the real party in interest as Kraft Foods Group Brands
LLC, which is owned in its entirety by KFG Management Services, LLC.
Appeal Br. 3. KFG Management Services LLC is owned in its entirety by
the Kraft Heinz Foods Company. Id.
Appeal 2016-008550
Application 13/413,366
jurisdiction under 35 U.S.C. § 6(b). For the reasons set forth below, we
affirm-in-part.
Whey proteins have become widely used in food products. Spec. 12.
In low-fat products, whey flavor protein notes, such as cardboard, bam, and
green flavor characteristics, are more noticeable and may interfere with the
desired flavor profile of the product. Id. at 2, 11. The subject matter on
appeal relates to the use of thaumatin in whey-containing food products to
reduce or otherwise mask undesirable whey flavors notes in such food
products. Spec. 11. Claim 1, reproduced below from the Claims Appendix
of the Appeal Brief, is illustrative of the claims on appeal.
1. A whey containing composition comprising:
whey; and
about 0.01 ppm to about 1 ppm thaumatin,
wherein the whey and the thaumatin are present in a ratio
from about 1,200,000:1 to about 4000:1, and
the thaumatin is the only sweetener added.
Appeal Br. 33 (Claims Appendix).
DISCUSSION
The Examiner maintains the rejection of claims 1, 2, 5—8, 11—13, 18,
19, and 21—23 under 35 U.S.C. § 103(a) as unpatentable over Hamisch3
(DE 199 38 601 Al, published February 15, 2001) (“Hamisch”) in view of
Merolli, Flavor Enhancement: Taking a Closer Look, (2013), accessed
October 5, 2017 at
https://www.naturalproductsinsider.com/articles/1997/02/flavor-
3 We refer to the English-language translation of Hamisch submitted by
Appellants with the Response filed December 19, 2014.
2
Appeal 2016-008550
Application 13/413,366
enhancement—taking-a-closer-look.aspx4 (“Merolli”), and further in view of
Schulz-Collins et al., Acid- and Acid/Rennet-curd Cheeses Part A: Quark,
Cream Cheese and Related Varieties, Cheese Chemistry, Physics and
Microbiology, 3rd ed. 301—303 (2004) (“Schulz-Collins”). Final Act. 2—6;
Ans. 2—7.
Upon consideration of the evidence relied upon in this appeal and
each of Appellants’ contentions, we affirm the Examiner’s rejection of
claims 1, 2, 5—8, 11—13, 18, 19, 21, and 22 under 35 U.S.C. § 103(a) for the
reasons set forth in the Final Office Action, the Answer, and below, but
reverse the Examiner’s rejection of claim 23 under 35 U.S.C. § 103(a), for
the reasons set forth in the Appeal Brief and below.
Appellants argue the claims in three separate groups: (1) claims 1,2,
5—8, 11, 18, 19, 21, and 225 (Group 1); (2) claims 12 and 13 (Group 2); and
(3) claim 23 (Group 3). We address each group of claims in our discussion
below.
Group 1: Claims 1, 2, 5—8, 11, 18, 19, 21, and 22
The Examiner finds that Hamisch discloses using thaumatin for
harmonizing flavor enhancers and aromas, reducing sour, bitter, and metallic
taste, and improving “mouth-feel” for food products, such as cheese and
low-fat quark, a type of German cheese. Final Act. 3; Hamisch 1 (1 57) and
2—3 (114, 7, 8 (Example 1)). Schulz-Collins teaches that low-fat quark,
4 Food Product Design merged with Natural Product Insider in 2015.
5 Although Appellants include claims 3, 4, 9, 10, and 20 in the listing of
claims for Group 1, those claims were previously canceled. Amendment and
Request for Continued Examination filed February 28, 2014, 3—7; Appeal
Br. 33—35 (Claims Appendix).
3
Appeal 2016-008550
Application 13/413,366
such as skim quark, contains about 2% (or 20,000 ppm) whey protein.
Schulz-Collins 301 (right col.), 303 (Table 2) (where skim quark contains
greater than 12% by weight total protein of which no more than 18.5% by
weight of the total protein is whey protein). As the Examiner finds, Hamish
teaches that adding 2 ppm or less of thaumatin to low-fat quark improves
“mouth-feel” of the quark. Final Act. 3 (citing Hamisch 3 (Example 1)).
Additionally, the Examiner finds that Merolli discloses that thaumatin
at levels ranging from 0.1 ppm to 0.5 ppm enhances both sweet and savory
flavors, smooths sharp and bitter notes of aggressive flavors, and masks
bitter and metallic aftertaste. Final Act. 4 (citing Merolli 4 (| 5)).
Appellants present three principal arguments regarding the rejection
of claims 1, 2, 5—8, 11, 18, 19, 21, and 22: (1) the combined references do
not describe or suggest a level of about 0.01 ppm to about 1 ppm of
thaumatin, where thaumatin is the only sweetener added; (2) the Examiner
fails to provide sufficient motivation for modifying Hamisch to use about
0.01 ppm to about 1 ppm thaumatin based on Merolli; and (3) the evidence
of record, which demonstrates that the inventors proceeded contrary to
accepted wisdom and achieved unexpected results, is sufficient to rebut any
prima facie case of obviousness. Appeal Br. 20.
Appellants’ arguments are not persuasive of reversible error.
Contrary to Appellants’ first argument, Merolli teaches using thaumatin in
foods in an amount of about 0.1 to 0.5 ppm to enhance sweet and savory
flavors, smooth sharp and bitter notes of aggressive flavors, and mask bitter
and metallic aftertaste. Merolli 4 (| 5). Merolli teaches that thaumatin acts
synergistically with high intensity sweeteners, but also teaches that using
thaumatin, a known sweetener, “can reduce their usage levels.” Id.', see also
4
Appeal 2016-008550
Application 13/413,366
Declaration under 37 C.F.R. § 1.132 executed by Lisa A. Dierbach and
Andrew E. McPherson on February 28, 2014, 12 (hereinafter “the Dierbach
Declaration”) (admitting that thaumatin is a known sweetener that has been
used as a substitute for sucrose and other sugars). Thus, a preponderance of
the evidence supports the Examiner’s finding that Merolli teaches using
thaumatin as the only sweetener in food in an amount of 0.1 ppm to about
0.5 ppm, which overlaps the range of thaumatin recited in the appealed
claims.
Likewise, we are not persuaded that the Examiner has not provided a
sufficient motivation for modifying Hamisch to use about 0.1 ppm to
0.5 ppm thaumatin based on Merolli. The Examiner finds that Hamisch
teaches using thaumatin for reducing sour, bitter, and metallic taste as well
as for improving “mouth-feel,” and for providing an overall better flavor to
various food products, including cheese and low-fat quark, which as
evidenced by Schulz-Collins contains about 20,000 ppm (or 2%) by weight
whey protein. Final Act. 3; Hamish 1 (| 57) and 2—3 flflf 7—8); Schulz-
Collins 303 (Table 2). As the Examiner finds, Merolli, like Hamisch,
teaches that thaumatin enhances both sweet and savory flavors, smooths
sharp and bitter notes of aggressive flavors, and masks bitter and metallic
aftertaste. Merolli 4 (| 5). According to Merolli, these effects are achieved
when thaumatin is used at levels ranging from 0.1 ppm to 0.5 ppm, which
overlaps the range of thaumatin recited in the appealed claims. Id. As
discussed above, Merolli teaches that thaumatin acts synergistically with
high intensity sweeteners, but also teaches that thaumatin “can reduce their
usage levels.” Id. Accordingly, a preponderance of the evidence supports
the Examiner’s determination that one of ordinary skill in the art would have
5
Appeal 2016-008550
Application 13/413,366
been motivated, based on Merolli, to add thaumatin, without any additional
sweeteners, in an amount of 0.1 to 0.5 ppm, to Hamisch’s low-fat quark to
achieve an overall better flavor. See Ans. 9; Final Act. 3^4.
Moreover, despite Appellants’ argument (Appeal Br. 23), including
thaumatin as the only sweetener in Hamisch’s low-fat quark would not
render Hamisch unsatisfactory for its intended purpose. Hamisch’s
objective is to use thaumatin for the harmonization of flavor and for the
reduction of sweeteners. Hamisch 1 (| 54). Although Hamisch teaches that
thaumatin and sweeteners have a synergistic effect, Hamisch also teaches or
at least suggests that due to the advantages that result from using thaumatin,
it’s possible to minimize or reduce other additives. Id. at 2 (| 6).
Finally, we have reviewed the Dierbach Declaration and the examples
in Appellants’ Specification, but do not find them persuasive. Contrary to
the contentions in the Dierbach Declaration (| 15), based on Merolli, one of
ordinary skill in the art would have expected that using 0.1 ppm to 0.5 ppm
thaumatin in a whey-containing composition would mask undesirable whey
flavor notes (e.g., vinegar, garlic/rubbery, green grass, cheesy/rancid, etc.)
given that Merolli teaches that thaumatin at such levels would enhance both
sweet and savory flavors, smooth sharp and bitter notes of aggressive
flavors, and mask bitter and metallic aftertaste. Compare Merolli 4 (| 15)
with Dierbach Decl. 7—10 and Attachment A, Kimberlee (K.J.)
Burrington, Technical Report: Sensory Properties of Whey Ingredients,
Dairy Research Institute 1—8, 3 (Table 1) (2002). Moreover, as well-stated
by the Examiner, the examples in Appellants’ Specification, for example
Examples 4 through 7, demonstrate that using 1 ppm, 2 ppm, and 4 ppm
thaumatin in whey-containing compositions similarly reduced or masked
6
Appeal 2016-008550
Application 13/413,366
unfavorable whey flavor notes. Ans. 9; Spec. Tflf 37—64. Thus, the evidence
of record is insufficient to show that adding thaumatin in the range recited in
the claims, about 0.01 ppm to about 1 ppm, is critical or produces an
unexpected result.
In view of the foregoing, we affirm the Examiner’s prior art rejection
of claims 1, 2, 5—8, 11, 18, 19, 21, and 22 for the reasons set out by the
Examiner and given above.
Group 2: Claims 12 and 13
Clam 12, reproduced below from the Claims Appendix of the Appeal
Brief, recites:
A whey containing food product comprising:
fat, but in an amount no more than about 4 wt.% of the food
product;
whey;
about 0.01 ppm to about 1 ppm thaumatin to mask flavor notes
imparted to the composition from whey, wherein the food
product is in a form selected from the group
consisting of cream cheese, processed cheese, cottage cheese,
dry cheese powder and sour cream,
wherein the whey and the thaumatin are present in a ratio from
about 1,200,000:1 to about 4000:1, and
the thaumatin is the only sweetener added.
Claim 13 depends from claim 12, and requires that the thaumatin is in
the range of about 0.1 ppm to about 1 ppm.
Appellants argue that there is no evidence that the quark in Hamisch
has fat and that such fat is in an amount of no more than about 4 wt.% of the
7
Appeal 2016-008550
Application 13/413,366
food product or that quark in Hamisch is equivalent to cream cheese,
processed cheese, dry cheese powder, and sour cream. Appeal Br. 30.
Appellants’ argument is not persuasive of reversible error. Hamisch
teaches using thaumatin in low-fat food products, such as cheese, for
reducing sour, bitter, and metallic taste as well as for improving “mouth-
feel,” and for providing an overall better flavor to various food products
(Hamish 1 (| 57), 2—3 flflf 7—8), 4 (Ex. 6), and 5 (118)). The prior art’s
disclosure of low-fat cheese would reasonably have suggested to a person of
ordinary skill in the art cheese having fats of no more than 4 wt.%. Thus, we
sustain the rejection of claims 12 and 13.
Group 3: Claim 23
Claim 23, reproduced below from the Claims Appendix of the Appeal
Brief, recites:
A whey containing cream cheese comprising:
cream cheese curd;
whey protein concentrate;
fat, but no more than about 10% fat;
about 0.01 ppm to about 1 ppm thaumatin to mask flavor notes
imparted to the cream cheese from the whey protein concentrate;
and
a ratio of whey from the whey protein concentrate to the
thaumatin from about 1,200,000:1 to about 4000:1,
wherein the thaumatin is the only sweetener added.
Appellants argue that none of the references describe or suggest using
thaumatin in a food product containing cream cheese curd, whey protein
concentrate, and the claimed amount of fat. Appeal Br. 31.
8
Appeal 2016-008550
Application 13/413,366
The Examiner finds that Hamisch specifically discloses cheese as a
food in which thaumatin is used for the purpose of flavor and aroma
harmonization. Ans. 11; Hamisch 1 (| 57), 2—3 (| 7). The Examiner
interprets “cheese” as including cream cheese curd as recited in claim 23.
However, on this record the Examiner has not provided adequate factual
evidence to support this interpretation. Thus, the Examiner has not met the
initial burden of setting forth a prima facie case of obviousness for claim 23
under 35 U.S.C. § 103 over Hamisch, Merolli, and Schulz-Collins.
Accordingly, we do not sustain the rejection of claim 23.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 2, 5—8,
11—13, 18, 19, and 21—23 under 35 U.S.C. § 103(a) over Hamisch, Merolli,
and Schulz-Collins is affirmed for claims 1, 2, 5—8, 11—13, 18, 19, 21, and
22, and reversed for claim 23.
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
9