11085696 (P.T.A.B. Sep. 13, 2013)

Ex Parte Petrofsky et al

Patent Trial and Appeal BoardSep 13, 2013

11085696 (P.T.A.B. Sep. 13, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/085,696 03/21/2005 Keith E. Petrofsky 1410-77248-US 4975 22242 7590 09/13/2013 FITCH EVEN TABIN & FLANNERY, LLP 120 SOUTH LASALLE STREET SUITE 1600 CHICAGO, IL 60603-3406 EXAMINER TRAN, LIEN THUY ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/13/2013 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 KEITH E. PETROFSKY, STEVEN P. GREINER, AMY L. MATUSHESKI, URAIWAN TANGPRASERTCHAI, and SAMIRA MIRAREFI ____________ Appeal 2012-008816 Application 11/085,696 Technology Center 1700 ____________ Before HUBERT C. LORIN, CATHERINE Q. TIMM, and BEVERLY A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1, 3-12, and 18-35. We have jurisdiction under 35 U.S.C. § 6. STATEMENT OF THE CASE Claim 1 is representative of the subject matter on appeal and is set forth below: Appeal 2012-008816 Application 11/085,696 2 1. A microwavable dough product comprising: about 0.05 weight percent to about 20 weight percent methylcellulose, based on the weight of the dough; about 0.05 weight percent to about 20 weight percent fiber, based on the weight of the dough; about 0.05 to about 20 weight percent functional surfactant, based upon the weight of the dough; and about 0.01 to about 5 weight percent hydrocolloid, based upon the weight of the dough, the fiber having a water holding capacity of at least about 100 percent and the methylcellulose, fiber, functional surfactant and hydrocolloid being present in relative amounts effective to provide a microwaved baked bread product with a penetration firmness of 2000 grams of force or less at 15 minutes after microwaving the dough. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Goedeken et al. (Goedeken) 6,660,311 B2 Dec. 9, 2003 De Man et al. (De Man) US 2007/0054024 A1 Mar. 8, 2007 THE REJECTION Claims 1, 3-12, and 18-35 are rejected under 35 U.S.C. §103(a) as being unpatentable over De Man in view of Goedeken. ISSUE Did the Examiner err in determining that the applied art suggests the claimed subject matter, and in particular, the aspect of claim 1 pertaining to a microwave dough product including “about 0.01 to about 5 weight percent hydrocolloid”? Appeal 2012-008816 Application 11/085,696 3 We answer this question in the affirmative and REVERSE. ANALYSIS Claim 1 recites, inter alia, “about 0.01 to about 5 weight percent hydrocolloid”. With regard to this claimed element, it is the Examiner’s position that: De Man et al disclose the fiber including hydrocolloids such as resistant starch, guar gum, xanthan gum, gum Arabic etc... They do not disclose the specific amount of the hydrocolloid. However, the amount of fiber in the dough can vary from .3-20%; paragraph 0024 disclose the amounts of fiber including 2.5,.5-1.5, .5-3.5 etc.. It would have been obvious to one skilled in the art to use the hydrocolloid fiber in amounts following the guideline the other fiber. It would have been obvious to substitute one fiber for another fiber. For example, it would have been obvious to substitute the 2.5% wheat fiber for 2.5% xanthan gum if one wants to substitute a soluble fiber for the insoluble fiber or if one wants the xanthan gum fiber more than the wheat fiber. Ans. 6. The Examiner also states that: Furthermore, De man does teaching [sic, teach] adding fibers that are hydrocolloid. As to the amount, De man et al do not specifically disclose the amount of fibers that are hydrocolloid; however, they do teach the amounts of fiber that can be added. For example, paragraph 0024 discloses exemplified amounts of fiber. One skilled in the can readily follow this guideline for the amount to use of other fiber. For instance, one can readily substitute 2.3% of wheat fiber for 2.3% of xanthan gum if one wants to substitute a soluble fiber for insoluble fiber. All the fibers as disclosed in paragraphs 0016-0021 are equally useable. Ans.. 7. Appeal 2012-008816 Application 11/085,696 4 Hence, it appears that it is the Examiner’s position that because De man teaches one can select a choice of fibers, and if one were to select as a choice, a fiber which happens to contain hydrocolloids, one would arrive at the claimed weight percent of hydrocolloid. However, as Appellants point out, De Man does not suggest any specific amount of hydrocolloid. Br. 13. Reply Br. 2-4. Appellants submit that therefore the Examiner’s assumption of inherency is based upon possibilities, probabilities, or speculation. We agree. The Examiner does not point to any specific example in De Man providing for amounts of a fiber (which happens to contain hydrocolloids), that would arrive at the claimed weight percent of hydrocolloid. The Examiner’s reference to paragraph [0024] of De Man, which refers to the preferred dosages of particular fibers, does not list xanthum gum or guar gum or gum Arabic. We understand that it is the Examiner’s position that one could substitute, for example, the wheat fiber listed therein with a xanthum gum (as stated supra); however, again, this lends credence to Appellants’ position that the Examiner’s assumption of inherency is based upon possibilities and probabilities. This coupled with the fact that the Examiner does not adequately explain that if one were to substitute 2.3% wheat flour with 2.3% of xanthum gum as proposed by the Examiner (Ans. 7.), whether this amount would provide for the claimed amount of “about 0.01 to about 5 weight percent hydrocolloid”, leads us to agreement with Appellants that the Examiner has not set forth a prima facie case.1 Inherency “may not be 1 Paragraph [0016] of the Specification discloses the kinds of materials that provide the hydrocolloid content, and amounts are not indicated therein. Example 2 on page 18 of the Specification indicates 0.17 wt% guar gum. A Appeal 2012-008816 Application 11/085,696 5 established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient.” Continental Can Co. USA, Inc. v. Monsanto Co., 948 F.2d 1264, 1269 (Fed. Cir. 1991), quoting In re Oelrich, 666 F.2d 578, 581 (CCPA 1981)). An inherent characteristic must be inevitable. See Oelrich, 666 F.2d at 581. We need not reach the merits of the Tangprasertchai Declaration since a prima facie case has not been met by the Examiner. However, we do note that the Tangprasertchai Declaration that is discussed in the Brief and Reply Brief, while not reflective of all the possible choices disclosed in De Man, as the Examiner points out on page 9 of the Answer, does indicate that examples made according to De Man each had to have water added to the recipe (more than provided for by the teachings of De Man) for a processable microwavable dough. Tangprasertchai Declaration, pp. 6-9. This undermines the Examiner’s inherency position by indicating that there are examples representative of De Man that do not produce processable microwavable doughs. CONCLUSIONS OF LAW AND DECISION The rejection is reversed. REVERSED cam gum blend is indicated in an amount of 0.55 wt% on page14 of the Specification.