Ex Parte Smith et al

Patent Trial and Appeal Board

Apr 25, 2018

14138608 (P.T.A.B. Apr. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/138,608 12/23/2013
30173 7590 04/27/2018
Diederiks & Whitelaw, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
Erika B. Smith
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
7867US02 9179
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
04/27/2018 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):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ERIKA B. SMITH, WENYL WANG, and
VIKRAMADITY A GHOSH
Appeal2017-006970
Application 14/138,608 1
Technology Center 1700
Before BEYERL YA. FRANKLIN, BRIAND. RANGE, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 9-11 and 19-23. We have jurisdiction. 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellant is the Applicant, General Mills, Inc., which according to the
Appeal Brief, is also the real party in interest. Appeal Br. 3.
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Application 14/138,608
STATEMENT OF THE CASE2
Appellant describes the invention as relating to a food product
including a neutralized yogurt whey. Spec. ,r 3. Yogurt whey is a by-
product resulting from separated yogurt referred to as "Greek" yogurt. Id.
,r 2. Claim 1, reproduced below, is illustrative of the claimed subject matter:
9. A food product comprising yogurt whey, the yogurt whey
compnsmg:
a pH of 6.0 or greater;
50 to 75% wt lactose on a dry basis;
at least 100 mg calcium per 100 grams of yogurt whey;
at least 0.5% wt galactose; and
at least 10% wt solids.
Appeal Br. 11 (Claims App.).
REJECTION
On appeal, the Examiner maintains the rejection of claims 9-11 and
19-23 under 35 U.S.C. § 103(a) as unpatentable over Nassauer et al., U.S.
5,580,592, issued Dec. 3, 1996 ("Nassauer") in view of Salad in a Jar, 18
Ways to Use Whey-a By-Product of Greek Yogurt, https://web.archive.org/
web/20110925011413/http://www.salad-in-a-jar.com/recipes-with-
yogurt/18-ways-to-use-whey-a-by-product-of-greek-yogurt ("Salad in a
Jar"), Keller et al., WO 2009/004566 A2, published Jan 8, 2009 ("Keller"),
and Asada et al., Acceleration of Hericium erinaceum mycelial growth in
submerged culture using yogurt whey as an alternative nitrogen source, 3
2 In this opinion, we refer to the Final Office Action dated May 16, 2016
("Final Act."), the Appeal Brief filed December 19, 2016 ("Appeal Br."), the
Examiner's Answer dated February 10, 2017 ("Ans."), and the Reply Brief
filed March 30, 2017 ("Reply Br.").
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Application 14/138,608
Advances in Bioscience and Biotechnology 828-832 (2012) ("Asada").
Ans. 2.
ANALYSIS
We review the appealed rejection for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
("[I]t has long been the Board's practice to require an applicant to identify
the alleged error in the examiner's rejections.")). After considering the
evidence presented in this Appeal and each of Appellant's arguments, we are
not persuaded that Appellant identifies reversible error. Thus, we affirm the
Examiner's rejections for the reasons expressed in the Final Office Action
and the Answer. We add the following primarily for emphasis.
Claims 9 and 19. Appellant argues claims 9 and 19 as a group. See
Appeal Br. 8. Therefore, consistent with the provisions of 37 C.F.R.
§ 4I.37(c)(l)(iv) (2013), we limit our discussion to claim 9, and claim 19
stands or falls together with claim 9.
The Examiner finds that Nassauer discloses dried acid whey having a
solids content of 95% to 98% and a pH of 5.8 to about 7. Ans. 2 (citing
Nassauer). The Examiner finds that Nassauer does not explicitly teach that
the acid whey is yogurt whey and does not explicitly teach claim 9' s recited
amounts of calcium and galactose. Id. at 2-3. The Examiner finds that
Salad in a Jar teaches use of yogurt whey in food production. Id. at 3 (citing
Salad in a Jar). The Examiner finds that Keller teaches calcium content
from sour whey and Asada teaches galactose concentration of yogurt whey.
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Id. at 3 (citing Keller and Asada). The Examiner determines that it would
have been obvious to modify the source of whey in Nassauer with the yogurt
whey of Salad in a Jar because "both forms of whey provide lactic acid
producing bacteria and therefore would have been similar in composition;
and useful for incorporating into foods especially bakery products." Id. at 4.
Regarding level of galactose, the Examiner finds that it would have been
obvious that, once concentrated (as taught by Nassauer), the percent
galactose would have been at least 0.5% or at least 5%. Id. The Examiner
also determines it would have been obvious to modify calcium content of the
modified whey to increase its nutritional value. Id.
Appellant argues that a person of skill in the art would not have
substituted yogurt whey for the acid whey ofNassauer. Appeal Br. 5. The
preponderance of the evidence does not support Appellant's position.
Rather, Salad in a Jar teaches that, while yogurt whey is often thrown away
("I threw it away"), it has good potential in a variety of food products. Salad
in a Jar 3--4. Keller teaches processing whey into whey powder for use in
foodstuffs. Keller 1: 5-9. Keller teaches that while its preferred embodiment
discusses fresh cheese way, "the skilled person will readily recognize that
any other types of sour whey can be used ( e.g. quark whey or sour sweet
whey)." Id. at 3:5-7; see also Ans. 3. Keller also teaches that "[a]ll types of
whey can be spray dried." Keller 1:23. Spray drying is part of the whey
processing technique taught by Nassauer, and the Nassauer process results in
both drying the whey and raising its pH. Nassauer 2:32-52.
These combined teachings support, by a preponderance of the
evidence, that a person of skill in the art would have recognized that yogurt
whey could be treated in the same manner as acid whey in order to provide a
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neutralized and concentrated form that is a useful alternative to discarding
the acidic yogurt whey. Ans. 6-7. A person of ordinary skill in the art
would recognize that application of the Nassauer process to yogurt whey
would improve yogurt whey according to the established function of the
Nassauer process. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007)
("a court must ask whether the improvement is more than the predictable use
of prior art elements according to their established function").
Appellant also argues that there would be no reason to process yogurt
whey (as Nassauer would do) because it is already a "viable, desired
product." Appeal Br. 5. Salad in a Jar, however, indicates that yogurt whey
is typically thrown away. Also, Appellant's Specification indicates that
yogurt whey is acid and is a by-product that "does not have suitable
characteristics for use in processed foods and animal feed, like other whey
by-products." Spec. ,r 2. Appellant also acknowledges that Food Navigator
teaches environmental concerns with yogurt whey. Reply Br. 3; see also
Ans. 7. Thus, the preponderance of the evidence indicates that raw yogurt
whey is not a particularly valuable product for foodstuffs (although, as
taught by Salad in a Jar, certain uses were recognized as possible), and this
evidence suggests that raw yogurt whey would benefit by processing of the
type suggested by Nassauer and Keller. A person of skill in the art would
have expected that the processes ofNassauer and Keller would predictably
improve raw yogurt whey (for example, by raising pH so that the taste is less
acidic) in the same manner those process improve other types of whey. KSR
Int'!., 550 U.S. at 417.
Appellant also argues that the Examiner has not adequately
established that if the whey ofNassauer were replaced with yogurt whey, the
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recited properties of claim 9 would be reached because Nassauer's whey and
yogurt whey have different properties. Appeal Br. 6. Appellant similarly
argues that the characteristics of Keller and Asada would not necessarily be
reached because the types of whey are different. Id. at 7.
Appellant's Specification, however, explains that yogurt whey before
processing can have pH of less than 5.0, 50 to 75% wt lactose on a dry basis,
calcium from 100 to 150 mg/g, at least 0.5% wt galactose, and 10% weight
or less solids. Spec. ,r,r 20-24. Thus, if yogurt whey were to be used in the
process ofNassauer, its characteristics would overlap with every recitation
of claim 9 prior to processing except for the recited pH of 6.0 or greater.
With respect to pH, it would have been obvious to use the process of
Nassauer to neutralize the yogurt whey just as the process neutralizes other
wheys for the reasons explained above.
With respect to the other recitations, the characteristics would also
overlap after processing. Nassauer's process is a drying process that
removes moisture. Nassauer 2:32-52. Percent lactose "on a dry basis" (as
recited in claim 9) will not be affected by moisture removal. The
proportions ( whether mg/ g or weight percent) of the whey that comprises
calcium, galactose, and solids will all increase as moisture is removed.
Thus, the process would lead to a modified yogurt whey that that meets the
characteristics of claim 9 even more easily than the raw yogurt whey did.
Appellant's argument therefore does not identify harmful error in the
Examiner's rejection.
For the above reasons, we sustain the Examiner's rejection of claims 9
and 19.
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Claims 10, 11, and 20. Appellant argues claims 10, 11, and 20 as a
group. Appeal Br. 8. We limit our discussion to claim 10, and claims 11
and 20 stand or fall with claim 10.
Claim 10 recites:
10. The food product according to claim 9, wherein the yogurt
whey comprises:
a pH of 6.2 or greater;
at least 3 % wt calcium;
at least 5% wt galactose;
at least 95% wt solids; and
less than 5% wt protein.
Appeal Br. 11 (Claims App.).
Appellant argues that the Examiner has not adequately established
that the "less than 5% wt protein" recitation of claim 10 would have been
met when utilizing yogurt whey with Nassauer's process. Appeal Br. 8.
The Examiner, however, finds that Keller teaches sour whey having 4% to
8% protein content. Ans. 3 ( citing Keller). The Examiner also determines
that "it would have been obvious to modify Nassauer to reduce the protein
content to 4% as in Keller since Keller also discloses that one of ordinary
skill in the art would readily recognize that other types of sour whey can be
used." Ans. 5 ( citing Keller). The Examiner further finds that Keller
teaches using the whey powder in bakery products. Id.
Appellant's argument does not squarely refute or establish error in the
Examiner's findings and determinations regarding modification of the
Nassauer/Salad in a Jar combination to reach a protein content less than 5%.
Moreover, Appellant's Specification discloses that unprocessed yogurt whey
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can have a percent protein as low as 0.1 %. Spec. ,r 21. The Specification
also indicates that the unprocessed yogurt whey is 5.5% solids. Id. ,r 43
(Table 1 ). Thus, even if all of non-solids were evaporated/dried via the
Nassauer process (an extreme not necessarily required by Nassauer) the
percent protein after processing would still be less than 5% weight as recited
in claim 9. 3
Accordingly, Appellant's argument concerning claim 10 also does not
identify harmful error, and we sustain the Examiner's rejection of claims 10,
11, and 20.
Claim 21. Claim 21 recites, "The food product according to claim 9,
wherein the yogurt whey comprises 20-90 wt.% solids." Appeal Br. 11
(Claims App.). The Examiner finds that Nassauer discloses 95% to 98%
solids content. Ans. 5. The Examiner determines: "Although Nassauer does
not disclose that the solids content is from 20% to 90%[,] the range
disclosed in Nassauer is substantially close to that of the instant claims, one
of ordinary skill would have expected compositions that are in such close
proportions to those in prior art to be prima facie obvious and to have the
same properties." Id. at 6.
Appellant argues Nassauer relates to acid whey rather than yogurt
whey. Appeal Br. 8. As explained above with regard to claim 9, the
preponderance of the evidence supports the Examiner's determination that it
3 Percent protein of 0.1 % means 0.1 grams per 100 grams total. If all non-
solids were removed, 5.5 grams would remain (because, according to the
Specification, the raw yogurt whey is 5.5 % solid). Protein of0.1 grams
divided by 5.5 grams total after drying equals 1.8%. This is considerably
"less than 5% wt protein" as recited by claim 9.
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would have been obvious to substitute Nassauer's whey with yogurt whey.
This argument thus does not identify reversible error.
Appellant also argues that modifying the solid content ofNassauer
(lowering the percent solids from a lower bound of 95% to claim 21 'supper
bound of 90%) would destroy the intended purpose ofNassauer because "the
object of the invention ofNassauer is to provide a spray dried acid that will
not clog a spray tower." Appeal Br. 8-9. This argument is not supported by
the preponderance of the evidence. The Examiner finds that N assauer
teaches maintaining a solids content of 70% to 90% at the point the whey
leaves the spray tower. Ans. 10-11; see also Nassauer 2:36-40 ("past is fed
into the spray dryer ... to produce a dry powder leaving the spray tower
having a moisture content of about 10 to about 30% by weight"). Thus,
contrary to Appellant's argument, the preponderance of the evidence does
not support that Nassauer's spray tower operation would be adversely
affected.
Because Appellant's arguments do not identify harmful error, we
sustain the rejection of claim 21.
Claims 22 and 23. Claim 22 recites, "The food product according to
claim 9, wherein the yogurt whey further comprises a basic material selected
from the group consisting of: sodium hydroxide, potassium hydroxide, and a
carbonate." Appeal Br. 11 (Claims App.). Claim 23 recites, "The food
product according to claim 9, wherein the yogurt whey is a neutralized
yogurt whey." The Examiner finds that the whey ofNassauer is neutralized
with a carbonate. Appeal Br. 6. Appellant argues the process ofNassauer is
specific to acid whey. Appeal Br. 9. As explained above, however, the
preponderance of the evidence supports the Examiner's determination that it
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would have also been obvious to employ Nassauer's process, including
neutralization with a carbonate, to yogurt whey. Appellant's argument
therefore does not identify harmful error, and we sustain the rejection of
claim 22.
DECISION
For the above reasons, we affirm the Examiner's rejections of claims
9-11 and 19-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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