Ex Parte Peterson et al

Patent Trial and Appeal Board

Jan 11, 2018

12599328 (P.T.A.B. Jan. 11, 2018)

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.
12/599,328 09/01/2010 Scott Peterson 8584-US-PCT 8812
30589 7590 01/16/2018
DUNLAP CODDING, P.C.
PO BOX 16370
OKLAHOMA CITY, OK 73113
EXAMINER
DEES, NIKKI H
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
01/16/2018 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):
docketing@dunlapcodding.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE
THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT PETERSON,1
Frank Welch, and Thomas Burkholder
Appeal 2017-004623
Application 12/599,328
Technology Center 1700
Before MARK NAGUMO, WESLEY B. DERRICK, and
JEFFREY R. SNAY, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Scott Peterson, Frank Welch, and Thomas Burkholder (“Nestec”)
timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2 of all
pending claims 11—28. We have jurisdiction. 35 U.S.C. § 6. We reverse.
1 The real party in interest is identified as Nestec S.A. (Appeal Brief, filed
12 May2016 (“Br”), 1.)
2 Office Action mailed 14 August 2015 (“Final Rejection,” cited as “FR”),
as modified by the Advisory Action 16 October 2015, entering amendments
filed 8 October 2015, and removing a rejection for indefmiteness.
Appeal 2017-004623
Application 12/599,328
OPINION
A. Introduction3
The subject matter on appeal relates to a freeze-dried aerated fruit or
vegetable composition that dissolves readily upon consumption but that is
physically stable, i.e., it resists fragmentation. According to
the '328 Specification, such readily dissolvable products “reduce the risk of
choking hazards for consumers with restricted or under-developed oral
motor skills or digestive functions.” (Spec. 1,11. 25—27.)
Claim 11 is representative and reads:
A freeze-dried, aerated fruit and/or vegetable composition
sized and shaped for consumption by a child, wherein the
composition is pasteurized, the composition comprising:
(a) at least one ingredient selected from the group
consisting of a fruit, a vegetable, and combinations thereof,
wherein the at least one ingredient is present in an
amount from 60% to 80% by weight of the composition
prior to freeze-drying;
(b) an emulsifier selected from the group consisting of a
citric acid ester of a monoglyceride and/or a diglyceride, a
distilled monoglyceride, a lactylated monoglyceride and/or
diglyceride, a polysorbate, caseinate, whey protein, egg
white protein, and combinations thereof; and
(c) a viscosity enhancer selected from the group consisting
of starch, carrageenan, pectin, and combinations thereof; and
3 Application 12/599,328, Freeze-dried, aerated fruit or vegetable
compositions and methods of making thereof filed 1 September 2010 as the
national stage under 35 U.S.C. § 371 of PCT/US08/63306 05/09/2008,
claiming the benefit of a provisional application filed 9 May 2007. We refer
to the “'328 Specification,” which we cite as “Spec.”
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Application 12/599,328
wherein the composition is formed into a plurality of drops
prior to freeze-drying, wherein
the drops have a weight in a range of
from 0.8 to 1.2 grams prior to freeze-drying, and
wherein
the composition is designed to be readily dissolvable upon
consumption so as to reduce the risk of choking hazards for
children with restricted or underdeveloped oral motor
skills or digestive functions,
the composition having
a hardness value of from 0.5 to 8 pounds force peak load,
a dissolvability in the range of from 0.1 to 8 pounds
force peak load, and
a viscosity of from 1000 to 100,000 cp as measured at
a 10 rpm speed of the spindle 6 in a Brookfield
viscometer before the composition is aerated.
(Claims App., Br. 20; some indentation, paragraphing, and emphasis added.)
The Examiner maintains the following grounds of rejection4,5:
A. Claims 11, 15—17, 20, 21, 25, and 28 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Peterson4 5 6 and Rubenstein.7
4 Examiner’s Answer mailed 2 December 2016 (“Ans.”).
5 Because this application was filed before the 16 March 2013, effective
date of the America Invents Act, we refer to the pre-AIA version of the
statute.
6 Ralph Dewey Peterson, Process for preparing dried fruit products,
GB1070060 (A) (1967).
7 Irving H. Rubenstein, Soft-frozen whipped aqueous extract concentrate of
coffee or tea, U.S. Patent No. 3,492,126 (1970).
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Application 12/599,328
Al. Claims 18, 19, 26, and 27 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Peterson, Rubenstein, and Beech-Nut.8
A2. Claims 22—24 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Peterson, Rubenstein, and
Kolstad.9
B. Claims 11—15, 17, and 20 stand rejected under
35 U.S.C. § 103(a) in view of the combined teachings of
Peterson and Kolstad.
Bl. Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) in
view of the combined teachings of Peterson, Kolstad, and
Beech-Nut.
B. Discussion
The Board’s findings of fact throughout this Opinion are supported by
a preponderance of the evidence of record.
The Examiner finds that Peterson describes a freeze-dried aerated
product comprising a fruit ingredient, but that the minimum amount of fruit
(82.9 w%) disclosed for the general composition is slightly more than the
maximum amount of fruit (80 w%) allowed by claim 11. (FR 3—4,110.)
Moreover, although the Examiner finds (id. at 4,112) that Peterson is silent
as to emulsifiers named in part b) of the claim, the Examiner finds (id. 113)
that Rubenstein teaches emulsifiers such as egg albumin and milk protein
8 Beech-Nut, Carrot, Apple & Mango (2006); Downloaded from
https://web.archive.Org/web/20060313015338/http://www.beech-nut.com/
on 11 March 2015.
9 Jeffrey J. Kolstad et al., Method for preparation ofpurified glycerides and
products, U.S. Patent No. 5,959,128 (1999).
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Appeal 2017-004623
Application 12/599,328
(Rubenstein col. 3,11. 33—39), as well as stabilizers such as carrageenan,
pectin, and starch named in part c) of the claim {id. at 11. 45—56).
The Examiner reasons that small variations of the amount of fruit
“would have been within the abilities of one of ordinary skill in the art
where it was desired, for example, to reduce costs by including less fruit in
the product.” (FR 3,110.) The Examiner reasons further that it would have
been obvious to use the milk protein or egg white protein taught by
Rubenstein as emulsifiers in order to obtain the desired stabile whipped
composition because that would have been the use of known materials for
their known use. {Id. at 4—5,114.) The Examiner concludes that because
the claimed and prior art products are identical or substantially identical
(FR 5,| 14), the burden is shifted to Nestec to demonstrate that the prior art
products do not necessarily or inherently possess the viscosity, hardness, and
dissolvability required by claim 11 {id. 115).
Nestec urges the Examiner erred harmfully by making multiple
modifications to the prior art and concluding that the resulting product
would be identical or substantially identical to the claimed product, rather
than relying on the “actual teachings of the prior art.” (Br. 8, 2d. full para.)
Nestec argues further that the Examiner finds that both Peterson and
Rubenstein (which is directed to soft-frozen food extracts for beverages;
id. at 1st full para.) “contain other distinctions in the compositions thereof
when compared to the claimed composition” {id. at last para.), and that the
hypothetical product produced upon modification “becomes further and
further dissimilar and distinct from the claimed invention” {id. at 9,11. 3 4).
Nestec concludes that the inherency argument is not based on a natural result
flowing from the combination of explicit teachings of the references, and
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Application 12/599,328
that “the rejection is based on a far-reaching POSSIBILITY that this
modified combination of the prior art methods would even produce a
product that meets these claim limitations regarding ingredients and
compositional values.” {Id. at 10.)
While we can understand why Nestec’s generalized arguments were
not persuasive to the Examiner, review of the rejections and the record
indicates that the weight of the evidence supports Nestec’s contention that
the Examiner’s conclusion of obviousness is not well-founded.
Peterson seeks to provide a fruit-dough that is “freeze-dried to
produce a storage-stable product, which closely resembles the fresh fruit in
odour, taste and texture, and which readily hydrates when eaten with milk or
cream alone, or in combination with ready-to-eat breakfast cereals.”
(Peterson 1,11. 47—54; emphasis added.) Peterson emphasizes that “[t]he
final freeze-dried slice . . . upon rehydration has a texture very much like
natural fresh banana. . . . [t]he internal starch and gum network gives the
slice structural rigidity and strength which retards the breakup of the
dehydrated product.” {Id. at 3,11. 17—29; emphasis added.) In other words,
the properties of the reconstituted freeze-dried banana (or other fruit) slice
sought to be provided by Peterson is distinct from—indeed, antithetical to—
the properties of the readily dissolvable-upon-consumption freeze-dried drop
recited in appealed claim 11.
The Examiner makes no findings regarding the additional references,
or the further limitations of the other rejected claims, that cure this
fundamental defect. In particular, the Examiner has not shown that the soft-
frozen coffee extract taught by Rubenstein shares sufficient relevant
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properties with the fruit dough prepared by Peterson that the routineer would
have been motivated to use the whipping aid that “contributes to the
formation and maintenance of a soft frozen product” (Rubenstein col. 3,
11. 33—34) or the stabilizers that “serve to promote the freezing of the
aqueous compound of the extract into fine uniform crystals” (id. at 11. 55—56)
in Peterson’s fruit doughs. Nor has the Examiner demonstrated that, more
likely than not, the freeze-dried product of the combination of Peterson and
Rubenstein, or the combination of Peterson and Kolstad, would have been
expected to be readily dissolvable as required by claim 11, rather than
having the “slice rigidity and strength which retards the breakup of the
dehydrated product” sought by Peterson.
C. Order
It is ORDERED that the rejection of claims 11—28 is reversed.
REVERSED
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