Ex Parte Otte et al

Patent Trial and Appeal Board

May 31, 2016

11690369 (P.T.A.B. May. 31, 2016)

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.
11/690,369 03/23/2007 Dietmar Otte OTTE ET AL - 1 3637
25889 7590 06/01/2016
COLLARD & ROE, P.C.
1077 NORTHERN BOULEVARD
ROSLYN, NY 11576
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
06/01/2016 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 DIETMAR OTTE, KARL-HEINZ JOHNEN,
and MARC MUELLER
____________

Appeal 2015-000650
Application 11/690,369
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
January 3, 2014 decision finally rejecting claims 17–34 (“Final Act.”). We
have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.

1 Appellants identify the Real Party in Interest as Zentis GmbH & Co. KG
(Appeal Br. 1).
Appeal 2015-000650
Application 11/690,369

2
CLAIMED SUBJECT MATTER
Appellants’ invention is directed to ready-to-eat food product which
comprises fruit (Spec. ¶ 2). The food product contains (a) an inedible container
having a bottom, (b) fresh, whole fruit or fresh fruit pieces, and (c) an aqueous
preparation applied to the fruit which wholly or partially fills the interstices
between the fruit/fruit pieces (Abstract, Spec. ¶ 50). Details of the claimed food
product are set forth in representative claim 17, which is reproduced below from
the Claims Appendix:
17. A food product comprising the components:
(a) an inedible container having a bottom;
(b) at least one of fresh whole fruit and fresh fruit pieces
arranged at the bottom of the container; and
(c) an aqueous preparation applied to the fresh whole
fruit or the fruit pieces in a liquid state, said aqueous
preparation completely or partially filling interstices between
the fresh whole fruit or the fruit pieces in the container, said
aqueous preparation comprising:
(i) one or more of a compound selected from the
group consisting of sugars, sugar alcohols,
sweeteners, fructo oligosaccharides,
polydextrose and other roughage and mixtures
thereof in a total amount of more than 25% by
weight relative to the total amount of aqueous
preparation; and
(ii) one or more galactomanannes as a thickening
agent for binding liquid from the fruit or fruit
pieces during a shelf life of the food product;
wherein the aqueous preparation in the food product at a
point in time when the aqueous preparation is added to the fresh
whole fruit or the fruit pieces is thus less thickened as compared
with a certain time thereafter when liquid from the fresh whole
fruit or the fruit pieces has transferred into the aqueous
preparation.

Appeal 2015-000650
Application 11/690,369

3
REJECTIONS

I. Claims 17–23, 29, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuhns.2
II. Claims 17–23, 29, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuhns in view of Igoe3 and Fennema4
III. Claims 24–28, 31, and 32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Kuhns in view of Igoe, or alternatively, over Kuhns in
view of Fennema and Igoe.
IV. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) over
Kuhns and Applicants’ Admitted Prior Art (AAPA) or, alternatively, Kuhns in
view of Igoe and AAPA.
V. Claims 17–23, 29, and 30 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muggride.5
VI. Claims 24–28 and 32 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Muggride in view of Brown6 and Igoe.
VII. Claim 31 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muggride in view of Igoe.
VIII. Claims 33 and 34 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Muggride in view of Fuglsang.7

2 Kuhns et al., U.S. Patent Pub. 2004/0208976 A1, published October 21, 2004.
3 Igoe et al, Dictionary of Food Ingredients, Third Edition, pp. 9, 18, and 69–
70 (1996).
4 Fennema, Food Chemistry, Third Edition, p. 187 (1996).
5 Muggride et al., U.S. Patent Pub. 2004/0009267 A1, published January 15, 2004.
6 Brown et al., US-H-0,000,561, published December 1988.
7 Fuglsang et al., U.S. Patent Pub. 2002/0094367 A1, published July 18, 2002.
Appeal 2015-000650
Application 11/690,369

4
DISCUSSION
Rejections (I)–(IV)
The Examiner has the initial burden of establishing a prima facie case
of obviousness based on an inherent or explicit disclosure of the claimed
subject matter under 35 U.S.C. § 103. In re Oetiker, 977 F.2d 1443, 1445
(Fed. Cir. 1992) (“[T]he examiner bears the initial burden, on review of the
prior art or on any other ground, of presenting a prima facie case of
unpatentability”). To establish a prima facie case of obviousness, the
Examiner must show that each and every limitation of the claim is described
or suggested by the prior art or would have been obvious based on the
knowledge of those of ordinary skill in the art. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988).
Kuhns, which is the primary reference for each of Rejections (I)–(IV),
discloses a food sauce which is created by creating a first intermediate
product from a Unit Operation A and mixing that first intermediate product
with another intermediate product formed by a Unit Operation B (Kuhns,
FIG. 1, step 70, ¶¶ 17–23). Once the two intermediate products are mixed,
fresh fruit is added (Kuhns. FIG. 1, step 80). Gum thickening agents are
added during production of the first intermediate product (FIG. 1, step 30,
¶ 19).
For each of Rejections (I)–(IV), the Examiner finds that the limitation
in claim 17 which recites: “one or more galactomanannes as a thickening
agent for binding liquid from the fruit or fruit pieces during a shelf life of the
food product” is taught by Kuhns because it teaches the use of the same
binder in the same amounts, and it would, therefore, be expected, to function
in the same way as the claimed binder (Final Act. 5).
Appeal 2015-000650
Application 11/690,369

5
However, as explained in detail by Appellants (Appeal Br. 14–17,
Reply Br. 14–16), the process described by Kuhns to prepare its product
results in the water-binding capability of the gum thickening agent (which
corresponds to the claimed galactomanannes) being exhausted before the
fruit or fruit pieces are added. Because by the time the fruit is added to the
Kuhns composition, the galactomanannes have no further water binding
capability, they cannot “bind[] liquid from the fruit or fruit pieces during a
shelf life of the food product.” Accordingly, the preponderance of the
evidence does not support the Examiner’s finding that Kuhns discloses a
composition which contains “galactomanannes as a thickening agent for
binding liquid from the fruit or fruit pieces.”
Therefore, we reverse the obviousness rejections over Kuhns.
The Examiner’s findings that Igoe and Fennema disclose the use of
guar gum (Final Act. 7–8) do not address the argument raised by Appellants
that the process used to make the Kuhns product would not result in the
presence of galactomanannes for binding liquid from the fruit or fruit pieces.
Accordingly, we also reverse the obviousness rejections over Kuhns in view
of Igoe and Fennema.

Rejections (V)–(VIII)
Muggride is directed to a frozen, fruit-filled pie (Abstract).
Appellants make two principal arguments distinguishing Muggride from the
claims on appeal.
First, Appellants argue that because Muggride’s pie has an edible pie
crust, the fruit in the pie is not “arranged at the bottom of the [inedible]
Appeal 2015-000650
Application 11/690,369

6
container” (Appeal Br. 34–35). However, as noted by the Examiner (Ans.
19), the claims on appeal do not exclude the presence of an intermediate
edible layer (such as a pie crust) between the fruit/fruit pieces and the
inedible pie pan. Moreover, the claim language at issue recites that the
fruit/fruit pieces are “arranged at the bottom of the [inedible] container.”
The claims do not recite that the fruit/fruit pieces are in contact with the
bottom of the inedible container, only that they are “arranged at” the bottom
of the container. It is well established that “the PTO must give claims their
broadest reasonable construction consistent with the specification. . . .
Therefore, we look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.” In re ICON Health
& Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “[A]s applicants may
amend claims to narrow their scope, a broad construction during prosecution
creates no unfairness to the applicant or patentee.” Id.
Appellants have not pointed out anything in the Specification which
would limit the meaning of “arranged at” to “in contact with” (see, e.g.,
Reply Br. 16–17). Thus, we determine that Appellants have not shown
reversible error in the Examiner’s finding that Muggride discloses a food
product with fruit/fruit pieces “arranged at the bottom of the [inedible]
container.”
Second, Appellants argue that Muggride does not disclose or suggest
“one or more galactomanannes which are thickening agents for binding
liquid from fruit or fruit pieces during a shelf life of the food product”
(Appeal Br. 34–36). Appellants contend that because Muggride’s pie is
frozen during storage, it is “structurally unable to let its guar gum bind liquid
from the fruit during a shelf life of the frozen pie” (Appeal Br. 35).
Appeal 2015-000650
Application 11/690,369

7
However, as explained by the Examiner (Ans. 19–20), and not disputed by
Appellants, the galactomanannes in Muggride’s pie is capable of binding
liquid from the fruit or fruit pieces during the shelf life of the product.
Appellants argue that because Muggride’s pie is designed to be stored
in frozen state, the fruit would not excrete water during storage, and thus the
galactomanannes could not bind such liquid (Reply Br. 17). However,
Appellants do not dispute that the galactomanannes in the pie of Muggride
are capable of binding any liquid from the fruit during shelf life (for example
if the pie slightly defrosts during transport after purchase by the consumer
and before being put back into a freezer). Thus, we determine that
Appellants have not shown error in the Examiner’s findings which support
the obviousness rejection of claim 17 over Muggride, which we therefore
affirm. Moreover, because Appellants do not present separate, substantive
arguments with respect to the rejections of the dependent claims over
Muggride in combination with Brown and Igoe (see Appeal Br. 39–43), the
dependent claims fall with claim 17.

CONCLUSION
We REVERSE the rejection of claims 17–23, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Kuhns.
We REVERSE the rejection of claims 17–23, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Kuhns in view of Igoe and
Fennema.
We REVERSE the rejection of claims 24–28, 31, and 32 under
35 U.S.C. § 103(a) as being unpatentable over Kuhns in view of Igoe, or
alternatively, over Kuhns in view of Fennema and Igoe.
Appeal 2015-000650
Application 11/690,369

8
We REVERSE the rejection of claims 33 and 34 under 35 U.S.C.
§ 103(a) over Kuhns and Applicants’ Admitted Prior Art (AAPA) or,
alternatively, Kuhns in view of Igoe and AAPA.
We AFFIRM the rejection of claims 17–23, 29, and 30 under
35 U.S.C. § 103(a) as being unpatentable over Muggride.
We AFFIRM the rejection of claims 24–28 and 32 under 35 U.S.C.
§ 103(a) as being unpatentable over Muggride in view of Brown and Igoe.
We AFFIRM the rejection of claim 31 under 35 U.S.C. § 103(a) as being
unpatentable over Muggride in view of Igoe.
We AFFIRM the rejection of claims 33 and 34 under 35 U.S.C. § 103(a)
as being unpatentable over Muggride in view of Fuglsang.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED