Ex Parte She

Patent Trial and Appeal Board

Jul 3, 2017

13525963 (P.T.A.B. Jul. 3, 2017)

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.
13/525,963 06/18/2012 Manjuan Jenny She 12164-US-NP 8822
69099 7590 07/06/2017
Nestle Purina Petcare Global Resources, Inc
Checkerboard Square
Intellectual Property Patents
ST. LOUIS, MO 63164
EXAMINER
DICUS, TAMRA
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
07/06/2017 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):
purinapatentmail@purina.nestle.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MANJUAN JENNY SHE 1
Appeal 2016-003719
Application 13/525,963
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
JANE E. INGLESE, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s Final
Rejection of claims 1 and 3—19. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
Appellant’s invention relates generally to beverages and particularly
to methods for making milk-like beverages having a milk-like appearance
and consistency. (Spec. 12). Independent claim 1 is reproduced below:
1 According to Appellant, the real party in interest is Nestec, S.A. See
Appeal Br. 3.
Appeal 2016-003719
Application 13/525,963
1. A method for making a lactose-free milk-like beverage
composition comprising creating a homogeneous aqueous
mixture of
(1) one or more caseinates in amounts sufficient to produce a
final composition containing from about 1 to about 10%
caseinates,
(2) whey protein in amounts sufficient to produce a final
composition containing from about 1 to about 10% whey
protein,
(3) one or more fats in amounts sufficient to produce a final
composition containing from about 2 to about 10% of one or
more fats,
(4) one or more hydrocolloids in amounts sufficient to produce
a final composition containing from about 0.01 to about 1 % of
one or more hydrocolloids, and
(5) one or more emulsifiers in amounts sufficient to produce a
final composition containing from about 0.1 to about 10% of
one or more emulsifiers;
heating the aqueous mixture to a temperature of from about 118
to about 127°C and maintaining such temperature for from
about 8 to about 14 minutes; and
cooling the heated aqueous mixture to a temperature of from
about 20 to about 35°C, wherein the composition does not
contain lactose.
Appellant appeals the Examiner’s rejection under 35 U.S.C.
§ 103(a) of claims 1 and 3—19 as unpatentable over the combination of
Parthasarathy et al.2 (WO 2010/114627A1, Pub. Oct. 7, 2010) and
2 The Examiner refers this reference as “Partha.” (Final Act. 2—6).
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Appeal 2016-003719
Application 13/525,963
Whitaker et al. (US 2,663,642 issued Dec. 22, 1953). (App. Br. 8—19;
Final Act. 2—6).
OPINION3
Upon consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellant, we determine
that Appellant has identified reversible error in the Examiner’s
determination that the teachings of Whitaker would have suggested heating
Parthasarathy’s aqueous mixture to a temperature of from about 118 to about
127°C and maintaining such temperature for from about 8 to about 14
minutes as required by independent claim 1. Accordingly, we reverse the
Examiner’s § 103(a) rejection of the above claims for the reasons set forth in
the Briefs. We add the following.
The Examiner has the burden of establishing a prima facie case of
obviousness regarding the subject matter recited in the claims on appeal. In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (“[T]he [patent] examiner
bears the initial burden, on review of the prior art or on any other ground, of
presenting a prima facie case of unpatentability.”); see also In re Jung, 637
F.3d 1356, 1365—66 (Fed. Cir. 2011) (explaining that while “the applicant
must identify to the Board what the examiner did wrong, . . . the examiner
retains the burden to show [unpatentability]”).
3 We limit our discussion to independent claim 1.
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Appeal 2016-003719
Application 13/525,963
According to the Examiner Parthasarathy teaches a method for
making a lactose-free milk-like beverage composition comprising creating a
homogeneous aqueous mixture that comprises all the method steps required
by the claimed invention except for heating the aqueous mixture to a
temperature of from about 118 to about 127°C and maintaining such
temperature for from about 8 to about 14 minutes as required by independent
claim 1. (Final Act. 2—3). The Examiner found Whitaker describes thermal
treatment steps for concentrating and pasteurization of milk by heating for
10 to 30 minutes. The Examiner specifically states:
Whitaker teaches time and thermal treatment steps including a
preheated step of milk at 143 degrees F (approx. 60 degrees C) (i.e. all
fractions of the milk have been heated including the protein fraction),
and known holding temperatures of from 10 to 30 minutes. See 1:20—
45, 5:40-70, and 6:14—35, 7:60-74. Whitaker teaches a concentration
and pasteurization heating steps at 127 degrees F and 156 degrees F
(approx. 70 degrees C) in Example 1 (i.e. all fractions of the milk
including protein and sugar have been heated again). Whitaker
teaches preheating shown in Fig. 1 having heating from 5 seconds up
to 3 hours at temperatures from 76 degrees C (170 degrees F) to 60
degrees C (140 degrees F). Whitaker teaches pasteurization heating
from 5 seconds up to 7 hours (25,000 seconds) and 150 degrees F (66
degrees C) to 140 degrees (60 degrees C) in Fig. 3. Whitaker teaches
the reason for heating milk are several, those at least including to
avoid cooking flavors, to reduce bacteria count, to prevent spoilage,
and to inactive the lactase enzyme. See 1:20-45, 5:40-70, and 6:14-
35, 7:60-74. Thus Whitaker teaches thermally treating at least protein
within the claimed time periods and temperatures falling within
Applicant’s ranges and also teaches inactivating lactase enzyme by
heating as claimed.
(Final act 3 4).
The Examiner determined that Whitaker suggests modifying
Parthasarathy’s time of heating for the purpose of destroying pathogenic
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Appeal 2016-003719
Application 13/525,963
substances and for the benefits of avoiding cooking flavors, reducing
bacterial count, preventing spoilage, and to inactivate lactase enzyme. (Final
Act 4).
Appellant argues Parthasarathy describes a process for making milk­
like beverages having the same or similar ingredients to the claimed
invention except for using ultra high temperature (UHT) processes instead of
the retort process of the present invention. (App. Br. 14; Spec. 1 52).
Appellant argues Parthasarathy teaches only heating from 2 to 16 seconds
and therefore teaches away from heating the aqueous mixture to a
temperature of from about 118 to about 127°C and maintaining such
temperature for from about 8 to about 14 minutes as required by the claimed
invention. (App. Br. 11). Appellant argues Whitaker is directed to making
pasteurized concentrated milk and describes various temperature profiles for
destroying pathogens. (App. Br. 15).
We agree with Appellants that the evidence presented by the
Examiner does not render obvious the claimed subject matter. As set forth
above, the Examiner has identified several portions of Whitaker as
suggesting the temperature and time profile required by the claimed
invention. Whitaker describes various time and temperature profiles
associated with different heating processes (encompassed by the Examiner’s
citation to Whitaker 1:20-45, 5:40-70, 6:14—35, and 7:60-74). Specifically,
the Examiner identified portions of Whitaker directed to time and
temperatures for preheating, concentrating and pasteurizing milk. The
Examiner’s general description and reliance on Whitaker does not provide
adequate evidence for modification of Parthasarathy’s heating process—
from 2—16 seconds at temperatures ranging from 120—160°C—to a
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Appeal 2016-003719
Application 13/525,963
temperature of from about 118 to about 127°C and maintaining such
temperature for from about 8 to about 14 minutes as required by the claimed
invention.
Notwithstanding the above, the Examiner has also failed to explain
why a person of ordinary skill in the art would look to a process for forming
concentrated milk to provide a basis for modifying lactose-free milk-like
beverages having a milk-like appearance and consistency as described by
Parthasarathy. The Examiner has not explained how the methods of forming
a concentrated milk product of Whitaker are similar to the methods for
producing lactose-free milk-like beverages such as described by
Parthasarathy.
Accordingly, on this record, we are constrained to reverse the
Examiner’s rejections of claims 1 and 3—19 under 35 U.S.C. § 103(a).
DECISION
The Examiner’s prior art rejections of claims 1 and 3—19 under 35 U.S.C.
§ 103(a) are reversed.
REVERSED
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