Ex Parte Skogerson et al

Board of Patent Appeals and Interferences

Jul 25, 2012

11279733 (B.P.A.I. Jul. 25, 2012)

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.
11/279,733 04/13/2006 Lawrence Skogerson 36961 8643
23589 7590 07/26/2012
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
07/26/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LAWRENCE SKOGERSON, TROY BOUTTE, JENNIFER
DEHN, and RONALD ZELCH
____________

Appeal 2011-000628
Application 11/279,733
Technology Center 1700
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JAMES C. HOUSEL, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/279,733

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A. STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision finally rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.1
Appellants’ invention is directed to a glyceride emulsifier/stabilizer
having an elevated diglyceride fraction for preventing separation of oil from
the solids content of nut butter products (Spec. p. 1, ll. 15-31). The stabilizer
is a mixture of mono-, di-, and triglycerides obtained by the
interesterification of triglycerides with glycerol2, followed by vacuum
distillation to increase the diglyceride fraction to greater than 60% (id.). To
ensure that the stabilizer is free of trans fats, the triglyceride source is a fully
saturated fat source (id. at pg. 3, ll. 18-22). The stabilizer is capable of
stabilizing nut butters such as peanut butter while maintaining a glossy
appearance of the blended butter at a concentration from about 1% to about
4% (id. at pg. 6, ll. 1-3).
Claims 1 and 13, reproduced below, are representative of the
invention.
1. A stabilizer for preventing separation of oil from the
solids content of nut butter products while retaining the

1 Our decision makes reference to Appellants’ Brief (App. Br.) filed March
24, 2010, Appellants’ Reply Brief (Rep. Br.) filed August 10, 2010, and the
Examiner’s Answer (Ans.) mailed June 18, 2010.

2 Glycerol and glycerin are used interchangeably throughout Appellants’
Specification, Claims, and Briefs. As glycerol, glycerin and glycerine are all
variant names of the same compound, this decision also interchanges these
terms as necessary.
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glossiness of the product comprising a mixture of mono-, di-,
and triglycerides that is the interesterified reaction product of
glycerol and a fully saturated fat source, the diglyceride portion
of the stabilizer being greater than 60% w/w, from about 1 % to
about 4% of the stabilizer being capable of stabilizing the nut
butter.

13. A stabilized peanut butter comprising about 2%
w/w of a fully saturated stabilizer blended with the peanut
butter, said stabilizer comprising a mixture of mono-, di-, and
triglycerides, the diglyceride portion of the stabilizer being
greater than 60% w/w.

App. Br., Claims Appendix.

B. REJECTION

The references listed below are relied upon by the Examiner as
evidence of obviousness:

Colby 3,278,314 Oct. 11, 1966
Nomura 5,160,759 Nov. 3, 1992
Liu 2001/0029047 A1 Oct. 11, 2001
Wai Lee 2004/0209953 A1 Oct. 21, 2004

The Examiner rejects claims 1-20 under 35 U.S.C. § 103(a) as being
unpatentable over Colby in view of Nomura or Wai Lee, and further in view
of Liu.

C. ISSUES
Appellants provide separate, but virtually identical arguments in
support of patentability of each of the independent claims (i.e., claims 1, 7,
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9, 12, 13, and 14). These arguments raise the following issues for our
consideration:
1. Did the Examiner reversibly err in finding Nomura and Wai Lee
disclose or suggest methods of making glyceride compositions which utilize
fully saturated fat sources? (See App. Br. 14, 18, 24, 30, 36, 42, and 48;
Reply Br. 4-6.)
2. Did the Examiner fail to establish proper motivation to combine
the references? (See App. Br. 17, 19, 25, 27, 31, 33, 37, 39, 47, and 48;
Reply Br. 6-7).
Appellants do not raise separate arguments in support of patentability
of any particular dependent claim(s) and, therefore, the dependent claims
stand or fall with the independent claim from which they depend.

D. ANALYSIS
The Examiner found Colby discloses the use of diglyceride stabilizers,
as well as saturated vegetable oil, in an amount up to 5% by weight in
peanut butter. (Ans. 4 and 6.) The Examiner concedes Colby does not
disclose the identically claimed stabilizer or method of preparation therefor.
(Id.). The Examiner found Nomura discloses a process of making a
diglyceride mixture by catalytic transesterification between glycerin and a
fat source, followed by molecular distillation to remove excess
monoglycerides, producing a glyceride mixture that has a diglyceride
content from 40 – 80% by weight (id.). As an alternative to Nomura, the
Examiner found “Wai Lee discloses that it is known to make glyceride
compositions”, wherein the compositions must include saturated fatty acids
used to “make stabilizers with glycerol in the claimed amounts”. (Id.) As
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to the use of a fully saturated C12-C22 fat, the Examiner found that Liu
discloses that it was known to make a product by interesterification of a
triglyceride stock using fully hydrogenated (saturated) soybean oil for use in
plastic spreads such as peanut butter (id. at 5). Appellants do not dispute
these findings.
The Examiner concluded it would have been obvious to use a known
diglyceride stabilizer as disclosed by Nomura or Wai Lee to stabilize peanut
butter as Colby suggests that use of diglyceride stabilizers was known in the
art for such purpose, and Nomura and Wai Lee disclose how to prepare such
stabilizers (id. at 4). In other words, the Examiner concluded that it would
have been obvious to use Nomura’s or Wai Lee’s diglyceride mixture in
place of Colby’s stabilizer to form a stabilized peanut butter (id. at 4-5). The
Examiner further concluded that use of a fully saturated C12-C22 fat to
prepare Nomura’s or Wai Lee’s diglyceride mixture would have been
obvious in view of Liu, which suggests such may be useful for plastic
spreads including peanut butter (id. at 5).
Issue 1
Appellants request reversal of the Examiner’s rejections on the basis
that the Examiner’s obviousness determination is based on an erroneous
finding that the glyceride compositions of Nomura and Wai Lee include
fully saturated or hydrogenated fat sources (App. Br. 14). Appellants point
out that Nomura requires that the glyceride mixture contain at least 70% by
weight unsaturated fatty acid residues (id.). Indeed, Appellants direct our
attention to Nomura’s Table 1 as evidence that Nomura’s products “are all
unsaturated”, i.e. contain unsaturated fatty acids. (Reply Br. 5). Appellants
likewise point out that Wai Lee’s glyceride mixture is obtained from sources
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high in long chain polyunsaturated fatty acids (id. at 6). Appellants
therefore assert that neither Nomura nor Wai Lee uses fully saturated fat
sources to produce their glyceride compositions (id.).
Appellants’ arguments are not persuasive because they are directed to
limitations not found in the claims. Specifically, Appellants’ arguments are
based on an incorrect interpretation of the claims as precluding the presence
of unsaturated fats.
Each of the independent product claims 1 and 12-14 uses the open
transitional term “comprising” to introduce the components of the stabilizer.
Each of the independent method claims 7 and 9 also uses this open
transitional term to introduce the steps used for preparing the claimed
stabilizer. Such a transitional term requires the recited elements of the
composition or method steps, but permits the addition of other unrecited
elements or steps. In re Skvorecz, 580 F.3d 1262, 1267 (Fed. Cir. 2009);
Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed. Cir. 1997).
Accordingly, while Claim 1 requires that the stabilizer include “a mixture of
mono-, di-, and triglycerides that is the interesterified reaction product of
glycerol and a fully saturated fat source”, it does not exclude other materials
such as unsaturated fat sources. Likewise, claim 12 is directed to a stabilizer
comprising a fully saturated mixture of glycerides, not to a fully saturated
stabilizer comprising a mixture of glycerides. In the same sense, claims 13
and 14 are directed to a stabilized peanut butter comprising a fully saturated
stabilizer. Further, method claims 7 and 9 do not exclude interesterification
of an unsaturated fat and glycerin at the same time as the interesterification
of the fully saturated fat and glycerin is carried out. In other words, method
claims 7 and 9 are directed to a method of making a stabilizer including a
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step of interesterification of a fully saturated fat and glycerin, not to a
method of making a fully saturated stabilizer.
Issue 2
Appellants also request reversal of the Examiner’s rejections on the
basis that the Examiner failed to establish proper motivation to modify
Colby based on the teachings of Nomura, Wai Lee, and Liu. (App. Br. 17).
Appellants rely on the Declaration under 37 C.F.R. § 132 of Dr.
Skogerson, one of the named inventors in the application on appeal, in
support of their contention that one of ordinary skill in the art would not
have been motivated to replace Colby’s stabilizer, the purpose of which is to
prevent separation of a peanut butter and jelly admixture, with the
“conventional” emulsifiers of the secondary references. (App. Br. 19; Reply
Br. 9.) Appellants assert that Nomura and Wai Lee do not even mention nut
butters (id.). Appellants point out that Liu only mentions peanut butter
“among a laundry list of potential uses” for the disclosed interesterified
products and does not provide any further guidance on this or any other use
(App. Br. 17; Reply Br. 8).
We have considered the Skogerson Declaration along with
Appellants’ other evidence of nonobviousness, but find a preponderance of
the evidence favors the Examiner’s conclusion of obviousness.
Dr. Skogerson testified that Colby provides no specific information or
other guidance on suitable emulsifiers. (Decl. ¶ 5). However, Dr.
Skogerson concedes Colby discloses the use of minor amounts of
“conventional” emulsifiers. (Id.). As found by the Examiner (Ans. 8-9),
Colby specifically teaches suitable conventional emulsifiers include “higher
saturated and unsaturated fatty acid mono- and diglyceride emulsifiers . . . to
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improve spreadability and prevent dryness and separation of oil” (Colby,
col. 2, ll. 33-39).
In sum, the weight of the evidence supports the Examiner’s
determination that use of the stabilizers of the secondary references in
Colby’s product would have been nothing more than a predictable variation.
See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 401 (2007) (“If a person of
ordinary skill can implement a predictable variation, § 103 likely bars its
patentability.”)

E. CONCLUSION
For the reasons expressed above and in the Answer, Appellants have
not shown error in the Examiner’s conclusion of obviousness. Accordingly,
we affirm the Examiner’s decision to reject claims 1-20.

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

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