Ex parte KUEHNER

Board of Patent Appeals and Interferences

Feb 17, 1998

08358353 (B.P.A.I. Feb. 17, 1998)

Application for patent filed December 19, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte HOLGER KUEHNER
__________
Appeal No. 97-2502
Application 08/358,3531
__________
HEARD: February 4, 1998
__________
Before WILLIAM F. SMITH, ELLIS, and TORCZON, Administrative
Patent Judges.
ELLIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 14
through 37. Claim 29 was withdrawn from appeal by the appellant
in the Reply Brief (Paper No. 17) filed April 3, 1997.
Accordingly, we will consider the issues as they apply to claims
14 through 28 and 30 through 37.
Appeal No. 97-2502
Application 08/358,353
On p. 3 of the Answer, the examiner states that claims 142
through 28 and 30 through 37 stand rejected under 35 U.S.C. §
103(a) over the applied prior art. However, on p. 5 of the
Answer, she treats claim 29 as if it were included in the
rejection. Moreover, when the appellant attempted to withdraw
claim 29 from appeal on p. 3 of the Reply Brief, the examiner
refused stating that claim 29 can not “be withdrawn at this
time.” Supplemental Answer, p. 1. Regardless of the examiner’s
original intention with respect to claim 29, the appellant’s
withdrawal of this claim from appeal resolves the issue. That
2
Claims 14 and 31 are illustrative of the subject matter on
appeal and read as follows:
14. A process for preparing a sterile milk pap comprising
mixing heated milk with a cereal product to swell the cereal
product during the mixture so that vegetative microbes are
destroyed to obtain a heat-treated mixture, degassing the heat-
treated mixture to obtain a degassed mixture to avoid oxidation
of the mixture, heating the degassed mixture under ultra-high-
temperature conditions to sterilize the degassed mixture to
obtain a sterilized, degassed mixture and then, cooling the
sterilized degassed mixture.
31. A sterile milk pap comprising, by weight, a sterile,
degassed mixture of between 50% and 80% milk and of between 5%
and 10% swollen cereal product.
The references relied on by the examiner are:
Stevens et al. (Stevens) 1,241,163 Sep. 25, 1917
Billerbeck et al. (Billerbeck) 3,506,447 Apr. 14, 1970
Dimler et al. (Dimler) 5,378,488 Jan. 03, 1995
Hall et al. (Hall), Milk Pasteurization, The Avi Publishing
Company, Inc., pp. 107, 117 (1968).
Claims 14 through 28 and 30 through 37 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Dimler in view of
Billerbeck, Stevens, and Hall.2
Appeal No. 97-2502
Application 08/358,353
is, contrary to the contention on p. 1 of the supplemental
Answer, the appellant is entitled to withdraw the claim from
appeal. Thus, although still pending in the application, claim
29 is not on appeal before this merits panel. Therefore, upon
return of this application to the corps, the examiner should
clarify the record as to the status of this claim.
3
Having carefully considered the entire record which
includes, inter alia, the appellant’s Brief (Paper No. 12), Reply
Brief (Paper No. 14) and supplemental Reply Brief (Paper No. 17),
as well as the examiner’s Answer (Paper No. 13), supplemental
Answer (Paper No. 16) and second supplemental Answer (Paper No.
19), we reverse the rejection with respect to the method claims,
claims 14 through 28, and affirm with respect to the product and
product-by-process claims, claims 30 through 37.
As an initial matter we note the appellant’s statement on p.
5 of the Brief that the claims do not stand or fall together. 37
CFR § 1.192(c)(7) and (8). As we understand it, the appellant
has grouped method claims 15 and 16 separate from method claims
14 and 17 through 28. In addition, the appellant has grouped the
product-by-process claims 29 and 30 together, and the composition
claims 31 through 37 together. Brief, pp. 3 and 9. Accordingly,
we will consider the issues as they apply to claims 14, 15, 16,
30 and 31, which are representative of each of the appellant’s
groups.
Appeal No. 97-2502
Application 08/358,353
4
Turning first to method claim 14, we find that it is
directed to a method of preparing a sterile milk pap which
requires the performance of a specific sequence of steps.
Although it appears that each of the claimed steps was known in
the art, the examiner has not provided any reasons, based on
factual evidence, as to why the specific sequence of events
described in representative claim 14 would have been obvious to
one of ordinary skill in the art at the time the application was
filed. Rather, the examiner’s overall position is that because
those of ordinary skill in the art routinely perform various
combinations of the claimed steps in the preparation of different
food products, the claimed sequence would have been prima facie
obvious. However, from a fair review of the applied prior art,
it is difficult to discern on which basis the examiner reached
this conclusion. We caution the examiner that a conclusion of
obviousness must be based on facts and not unsupported
generalities. In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 572
(CCPA 1970); In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Accordingly, we
reverse the rejection of claims 14 and 17 through 28.
Since dependent claims 15 and 16 manifestly require the same
specific sequence of preparatory steps as base claim 14, it
Appeal No. 97-2502
Application 08/358,353
At the oral hearing held February 4, 1998, counsel did not3
disagree that at the time of the present invention, the degassing
of food products was known and conventional in the art.
5
follows that the rejection of these claims is reversed for the
reasons discussed above.
As to the product claims, we find that representative claim
31 is directed to a sterile, degassed milk pap which comprises
between 50% and 85% milk and between 5% and 10% swollen cereal
product. Here, we concur with the examiner that the product
described in claim 31 would have been obvious over the applied
prior art. We direct attention to the Stevens patent which
discloses a sterile milk pap comprising milk and rice. The
composition described by Stevens differs from the composition
described in claim 31 in at least two significant aspects- (1)
the presence of oxygen, and (2) the amounts of milk and cereal
product required.
As to the oxygen content, i.e., degassing, such processing
does not alter the food product per se, but rather it merely
“avoid[s] oxidation of the product.” Specification, p. 2, lines
37-39. Moreover, the prior art of record indicates that removal
of oxygen from a food product; e.g., vacuum packaging, to avoid
oxidation of that product was conventional in the art at the time
the application was filed. So conventional, in fact, that3
Appeal No. 97-2502
Application 08/358,353
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Dimler does not even find it necessary to state the reason for
degassing the milk-based infant formula described in the patent.
Dimler, col. 2, lines 56-57.
As to the differences in the amount of milk and cereal
product present in the claimed and prior art compositions, we
find that Stevens discloses that the proportions of the
referenced constituents are determined by consumer preference.
Stevens, col. 1, lines 31-36. Depending on the desired
consistency, one of ordinary skill in the art would recognize
when to add more or less of the claimed ingredients. Thus, in
our opinion, the concentration of the ingredients in a milk pap
is merely a result effective variable, the optimization of which
is “ordinarily within the skill of the art.” In re Boesch, 617
F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980). Accordingly, we
conclude that the composition described in claim 31 would have
been obvious to those of ordinary skill in the art at the time
the application was filed.
As to claim 30, we find that the examiner has correctly
characterized the claim as being in a product-by-process format.
Answer, p. 5, para. 1. It is well established that with respect
to product-by-process claims, patentability depends on the
product and not on the process by which it is made. In re
Appeal No. 97-2502
Application 08/358,353
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Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir.
1985)(“[i]f the product in a product-by process claim is the same
as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process”). Here, we find no difference between the
compositions described in claims 30 and 31. Accordingly, for the
reasons discussed above with respect to claim 31, we hold that
the product of claim 30 would have been obvious to one of
ordinary skill in the art at the time the application was filed.
The decision of the examiner is affirmed in part.
No time period for taking subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
)
WILLIAM F. SMITH )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JOAN ELLIS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
RICHARD TORCZON )
Administrative Patent Judge )
Appeal No. 97-2502
Application 08/358,353
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