Ex Parte Vemulapalli et al

Patent Trial and Appeal Board

Oct 25, 2018

12907763 (P.T.A.B. Oct. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/907,763 10/19/2010
109813 7590 10/25/2018
Fitch, Even, Tabin & Flannery, LLP
120 South LaSalle Street
Suite 2100
Chicago, IL 60603-3406
FIRST NAMED INVENTOR
Vani Vemulapalli
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.
9610-94623-US 2593
EXAMINER
MCCLAIN-COLEMAN, TYNES HAL.
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
10/25/2018 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 VANI VEMULAPALLI, JAN KARWOWSKI, and
EDWARD C. COLEMAN
Appeal2017-001815
Application 12/907,763
Technology Center 1700
Before LINDA M. GAUDETTE, A VEL YN M. ROSS, and
BRIAND. RANGE, Administrative Patent Judges.
ROSS, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1--4, 6-19, 21-23, and 25-32. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
1 In our Decision we refer to the Specification filed October 19, 2010
("Spec."), the Final Office Action appealed from dated June 24, 2015
("Final Act."), the Appeal Brief filed February 16, 2016 ("Appeal Br."), the
Examiner's Answer dated September 12, 2016 ("Ans.") and the Reply Brief
filed November 14, 2016 ("Reply Br.").
2 Appellants identify Intercontinental Great Brands LLC as the real party in
interest and assignee of the above-captioned application. Appeal Br. 3.
Appeal2017-001815
Application 12/907,763
STATEMENT OF THE CASE
The subject matter on appeal "relates to heat-stable food fillings and,
in particular, to low and intermediate water activity heat-stable sweet and
savory fillings obtained using one or more cereal-derived ingredients."
Spec. ,r 1. Baked snacks with soft creamy fillings are prone to boil over or
bleed out once baking temperatures are achieved. Id. ,r,r 3, 5. The claimed
fillings purport to "have unique thermal and mechanical properties" which
"stabilizes [ the filling] by absorbing moisture from steam generated during
the heating process." Id. ,r 14. Claim 1, reproduced below, is illustrative of
the claimed subject matter:
1. A grain-based soft and creamy food filling that is heat-stable
up to an oven temperature of at least about 500°F, the grain-based
soft and creamy food filling comprising:
a continuous lipid phase including at least one lipid having
a melting point of about 40°C or lower;
a dispersed solid phase in the continuous lipid phase, the
dispersed solid phase including a hydrophilic powder and a
grain-based component including whole grain to provide all
attributes of the whole grain including protein, fiber, and
carbohydrates therefrom; and
a ratio of the grain-based component including the whole
grain to the lipid phase effective to impart heat stability of the
filling so that the grain-based soft and creamy food filling
exhibits minimal filling spread upon a sample heated for about
10 minutes at about 300°F.
Appeal Br. 34 (Claims App'x).
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Application 12/907,763
REJECTIONS
The Examiner provides the following new grounds of rejection: 3
A. Claims 1--4, 6-8, 11-14, 17-19, 22, 23, and 25-32 stand
rejected under 35 U.S.C. § I03(a) as unpatentable over
Conrad Heisey4 in view ofLuck5 and Newman. 6 Ans. 3.
B. Claims 9 and 21 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Conrad Heisey in view of Luck,
Newman, and Hoover. 7 Ans. 9.
C. Claim 10 stands rejected under 35 U.S.C. § I03(a) as
unpatentable over Conrad Heisey m view of Luck,
Newman, and Sollano. 8 Ans. 12.
D. Claims 15 and 16 stand rejected under 35 U.S.C §I03(a)
as unpatentable over Conrad Heisey in view of Luck,
Newman, and McGlynn. 9 Ans. 13.
Appellants seek our review of Rejections A-D. See Reply Br. 3.
Appellants argue the independent claims (Rejection A) together as a group
and do not separately argue any dependent claim. Id. at 5-13. Further,
Appellants do not advance any argument in support of Rejections B-D that
3 The Examiner withdraws all pending rejections recited in the Final Office
Action. Ans. 15; see also Reply Br. 4 (identifying grounds reviewable on
appeal).
4 Conrad Heisey et al., US 2002/0098267 Al, published July 25, 2002
("Conrad Heisey").
5 John V. Luck, US 3,966,993, issued June 29, 1976 ("Luck").
6 Bettina Newman & David Joachim, LOSE WEIGHT THE SMART Low-CARB
WAY 68-71 (2002) ("Newman").
7 Maurice W. Hoover, US 4,198,439, issued April 15, 1980 ("Hoover").
8 De Sollano et al., US 2,930,699, issued March 29, 1960 ("Sollano").
9 McGlynn et al., US 6,322,829 Bl, issued November 27, 2001
("McGlynn").
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Appeal2017-001815
Application 12/907,763
is separate from what is presented for Rejection A. See id. at 13-15.
Because the basis for our reversal-i.e., the lack of a reason based on
rational underpinnings to combine the teachings of Conrad Heisey and
Luck-is common to all claims, we focus our discussion of the prior art
rejections on claim 1.
OPINION
The Examiner rejects claim 1 (among others) as obvious over the
combination of Conrad Heisey, Luck and Newman. Ans. 3. The Examiner
finds that Conrad Heisey discloses a "soft and creamy filling that is heat
stable up to an oven temperature of at least about 500 °F," where the filling
includes a lipid phase having one lipid with a melting point 40 °C or lower
and includes a hydrophilic powder. Id. The Examiner acknowledges that,
while disclosing up to 30% optional ingredients, including bulking agents,
Conrad Heisey does not describe a filling comprising a grain-based
component that includes a whole grain, but the Examiner finds that Luck
teaches "compositions compris[ing] a continuous lipid phase including at
least one lipid having a melting point of about 40 °C or lower and a
dispersed solid phase in the continuous lipid phase, the dispersed solid phase
including a hydrophilic powder ... and a filler such as a grain-based starch
or flour." Id. at 4. The grain-based starches of Luck are used to thicken and
add body to the filling or sauce. Id. Further, the Examiner finds that
Newman teaches that whole grain flours may be used as thickeners for
sauces. Id. The Examiner reasons that it would have been obvious for a
person of skill in the art to have modified the heat stable filling of Conrad
Heisey to include a grain-based flour component because "[t]he selection of
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Appeal2017-001815
Application 12/907,763
a known material based on its suitability for its intended use supports a
primafacie obviousness determination." Id. at 5. Further, the Examiner
explains that in the food arts, "the addition or elimination of common
ingredients, or for treating them in ways which differ from the former
practice, do not amount to invention merely because it is not disclosed." Id.
(quoting In re Levin, 178 F.2d 945,948 (CCPA 1949)).
Appellants argue first that only through hindsight can the Examiner's
proposed combination be achieved. Reply Br. 5-6. In particular, Appellants
argue that there is no reason to combine Conrad Heisey with either
secondary reference because "Luck is quite distinct from the bake stable soft
and creamy food fillings as presently claimed because Luck's product is
designed to melt and flow" and Conrad Heisey describes its starches as
being water soluble where the whole grains of Newman are known to be
water insoluble which would "adversely affect the textural characteristics of
the filling of [Conrad] Heisey." Reply Br. 6, 9. Second, Appellants assert
that the evidence of record supports a conclusion of nonobviousness because
the ratio of the grain component to lipid phase as claimed is critical. Reply
Br. 11. Because we find Appellants' first argument persuasive, we do not
reach Appellants' additional arguments.
We find persuasive Appellants' position that the Examiner has not
sufficiently articulated reasoning based on rational underpinnings why one
skilled in the art would have been prompted to combine the teachings of
Conrad Heisey and Luck. "' [R ]ejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness."' KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418
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Application 12/907,763
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). "The mere
fact that the prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir.
1992) ( emphasis added). Hindsight may be inferred when the specific
understanding or principle within the knowledge of one of ordinary skill in the
art leading to the modification of the prior art to arrive at the appellant's
claimed invention has not been explained. In re Rouffet, 149 F.3d 1350, 1358
(Fed. Cir. 1988).
Here, the Examiner concludes that it would have been obvious to
include the grain component of Luck in the soft, creamy filling of Conrad
Heisey because "[t]he selection of a known material based on its suitability
for its intended use supports aprimafacie obviousness determination." Ans.
5. The Examiner's conclusion, however, does not provide adequate
reasoning based on rational underpinnings to explain why one of ordinary
skill would have been led to combine the references in the manner proposed.
The Examiner, responding to Appellants' arguments regarding a withdrawn
rejection, implies that Conrad Heisey's bulking agent could be substituted
for Luck's grain-based thickening agent. See, e.g., Ans. 20. However, the
Examiner fails to explain how a buking agent and a thickening agent relate
to one another or provide any reason why the skilled artisan would have
reason to add a thickening agent to the filling of Conrad Heisey. Therefore,
absent improper hindsight reconstruction, we do not see a sufficient reasoned
explanation why one of ordinary skill in the art would have been led to modify
Conrad Heisey with Luck.
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CONCLUSION
Appellants identified a reversible error in the Examiner's rejection of
claims 1--4, 6-8, 11-14, 17-19, 22, 23, and 25-32 under 35 U.S.C. § 103(a)
as unpatentable over Conrad Heisey in view of Luck and Newman.
Appellants identified a reversible error in the Examiner's rejection of
claims 9 and 21 under 35 U.S.C. § 103(a) as unpatentable over Conrad
Heisey in view of Luck, Newman, and Hoover.
Appellants identified a reversible error in the Examiner's rejection of
claim 10 under 35 U.S.C. § 103(a) as unpatentable over Conrad Heisey in
view of Luck, Newman, and Sollano.
Appellants identified a reversible error in the Examiner's rejection of
claims 15 and 16 under 35 U.S.C § 103(a) as unpatentable over Conrad
Heisey in view of Luck, Newman, and McGlynn.
DECISION
For the above reasons, the Examiner's rejections of claims 1--4, 6-19,
21-23, and 25-32 are reversed.
REVERSED
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