11936624 - (D) (P.T.A.B. Apr. 29, 2019)

Ex Parte Merrill

Patent Trials and Appeals BoardApr 29, 2019

11936624 - (D) (P.T.A.B. Apr. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 11/936,624 11/07/2007 20350 7590 05/01/2019 KILPATRICK TOWNSEND & STOCKTONLLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 Richard K. Merrill 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. 88835-718916 (008900US) 1180 EXAMINER DUBOIS, PHILIP A ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/01/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RICHARD K. MERRILL Appeal2018-006478 Application 11/936,624 Technology Center 1700 Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. Â§ 134(a) the final rejections of claims 1, 3, 7-10, 15, 16, 18, 20-26, 28, 29, 31-34, 36-38, 40-43, and 46- 50. We have jurisdiction over the appeal pursuant to 35 U.S.C. Â§ 6(b ). We REVERSE. Appellant's invention is directed to methods of making a powdered dairy composition (Spec. ,r 5). 1 Appellant identifies the real party in interest as Leprino Foods Co. (Appeal Br. 3). Appeal 2018-006478 Application 11/936,624 Claim 1 is illustrative ( emphasis added): 1. A method of making a powdered dairy composition, the method comprising: adding a sequestrant for calcium and rennet directly to milk to make treated milk, wherein the sequestrant for calcium is added as a powder or aqueous solution to the milk, and wherein the sequestrant reduces a free calcium ion concentration in the treated milk to a level that prevents aggregation of rennet hydrolyzed milk proteins in the treated milk into a curd coagulum; and forming the treated milk into a treated milk powder, wherein the treated milk powder comprises substantially no aggregation of the rennet hydrolyzed milk proteins. Appellant appeals the following rejections: 1. Claims 1, 3, 7, 8, 10, 15, 16, 38, 40, 41, 43, and 46-50 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Carr et al. (JP 2006- 528487 A, published Dec. 21, 2006, referencing the English language equivalent US 2007/0082086 Al, published Apr. 12, 2007, "Carr") in view of Silva et al. (US 6,183,802 Bl, issued Feb. 6, 2001, "Silva"). 2. Claim 9 is rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Carr in view of Silva and further in view of S. Caspe and L.G. Hadjopoulos, Sodium Hexametaphosphate as an Anticoagulant, Amer. Jour. Pharm. 175-79 (1942) ("Caspe"). 3. Claims 26, 28, 29, 31, 34, and 36 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Carr in view of Silva and further in view of Abboud et al. (US 2004/0213884 Al, published Oct. 28, 2004, "Abboud"). 4. Claims 18-25, 32, 33, 37, and 42 are rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Carr in view of Silva and further in 2 Appeal 2018-006478 Application 11/936,624 view of Merrill et al. (US 2006/0008555 Al, published Jan. 12, 2006, "Merrill"). FINDINGS OF FACT & ANALYSIS Rejections (1}-(4): 35 U.S.C. Â§ I03(a), Obviousness The Examiner's findings and conclusions regarding the combinations of Carr and Silva, and Carr, Silva, and one of Caspe, Abboud, or Merrill, are located on pages 3-9 of the Final Office Action and pages 3-9 of the Answer. It is well understood that "[ 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 Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The fact that a reference may be modified to reflect features of the claimed invention would not have made the modification, and hence the claimed invention, obvious unless the prior art, knowledge of a person having ordinary skill in the art, or the nature of the problem to be solved suggested the desirability of such modification. In re Mills, 916 F.2d 680, 682 (Fed. Cir. 1990). The Examiner finds, inter alia, that Carr discloses adding disodium phosphate sequestrant to a blended cheese mixture (Final Act. 3 ( citing Carr ,r 120)). The Examiner further finds that Carr's method of making treated milk powder by adding rennet and, optionally, monocationic salts of citrate and/or phosphate to whole milk discloses each step and limitation of claim 1 3 Appeal 2018-006478 Application 11/936,624 with the exception that it does not exemplify adding rennet and a calcium sequestrant directly to milk (Final Act. 3 (citing Carr ,r,r 53, 63, and 65)). The Examiner, however, finds that Silva teaches adding a powdered sequestrant to a cultured dairy ingredient (Final Act. 4 ( citing Silva claim 46)). The Examiner further finds that milk is the main ingredient in Silva's dairy base mix (Ans. 10 (citing Silva 3:21-29)). The Examiner concludes that it would have been obvious to add Silva's sequestrant to Carr's milk because Silva teaches that a sequestrant prevents premature protein coagulation during heating, pasteurization, or cooling of a dairy base mix and Carr teaches milk pasteurization (Final Act. 7 (citing Silva 5:64---68; see also Silva 6: 1-2; Carr ,r 55)). Appellant argues that Silva "only adds a sequestrant to the dairy base mix due to the presence of the highly acidic and calcium rich cultured dairy ingredient" (Appeal Br. 12). Appellant further argues Silva teaches that premature coagulation of milk proteins is caused by the cultured dairy ingredient's high content in calcium and propionic acid (id. at 11 (citing Silva 2:21-37)). According to Appellant, Silva "adds the calcium sequestrant to the dairy base mix for the express reason of neutralizing the cultured dairy ingredient to prevent premature coagulation" and that the amount of sequestrant added depends upon the amount of cultured dairy ingredient (Appeal Br. 11 (citing Silva 6: 11-12; 6:41--44)). Appellant concludes that one of ordinary skill in the art would not have been motivated to add Silva's sequestrant directly to Carr's milk because Carr lacks the 4 Appeal 2018-006478 Application 11/936,624 causative agent for premature coagulation, namely a highly acidic and calcium rich cultured dairy ingredient (Appeal Br. 11, 12). Appellant's arguments are persuasive. The Examiner has not provided findings or reasoning supported by adequate facts to explain why a person of ordinary skill in the art would have considered adding Silva's sequestrant for preventing coagulation of a cultured dairy ingredient directly to Carr's milk, which lacks such an ingredient (see Ans. 12). We note Silva teaches that this "extremely high ionic calcium level ingredient," which is absent in Carr's milk, "can raise calcium concentrations to levels that can cause premature coagulation" (Silva 2:29-33) ( emphasis added). To the extent the Examiner finds Carr teaches that "some amount of calcium remains" in milk after divalent cations are removed, the Examiner has not explained why the ordinary skilled artisan would have considered Carr's remaining calcium level sufficient to cause premature coagulation during milk pasteurization (Final Act. 4 ). Furthermore, Silva discloses that the dairy base product only contains about 0.05 to 0.3% of the cultured dairy ingredient comprising milk (Silva 4:47- 52; 5:38--40; claims 2, 16, 62, 80). Thus, we are not persuaded that one of ordinary skill in the art would have been motivated to combine the teachings of Carr and Silva. Therefore, the Examiner has not established a prima facie case of obviousness based upon articulated reasoning with rationale underpinnings. The identified deficiencies in the Examiner's reasoning for combining the teachings of Carr and Silva are not cured by the application of either Caspe, Abboud, or Merrill. 5 Appeal 2018-006478 Application 11/936,624 Therefore, we reverse Rejection (1 ), Rejection (2), Rejection (3), and Rejection (4). DECISION The Examiner's decision is reversed. ORDER REVERSED 6