Ex Parte Widder et al

Patent Trial and Appeal Board

Feb 28, 2019

14412538 (P.T.A.B. Feb. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/412,538 07/08/2015
28249 7590 03/01/2019
DILWORTH & BARRESE, LLP
Dilworth & Barrese, LLP
1000 WOODBURY ROAD
SUITE405
WOODBURY, NY 11797
FIRST NAMED INVENTOR
Sabine Widder
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.
1507-101 5489
EXAMINER
MUKHOPADHYAY,BHASKAR
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
03/01/2019 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 SABINE WIDDER, GERHARD KRAMMER,
KATHRIN LANGER, and CORNELIA HOMMER
Appeal2018-003725
Application 14/412,538
Technology Center 1700
Before CATHERINE Q. TIMM, JENNIFER R. GUPTA, and
MICHAEL G. McMANUS, Administrative Patent Judges.
McMANUS, Administrative Patent Judge.
DECISION ON APPEAL
The Examiner finally rejected claims 1-20 of Application 14/412,538
under 35 U.S.C. § 103(a). Final Act. (March 3, 2017) 3-10. Appellants 1
seek reversal of the rejections pursuant to 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
1 Symrise AG is identified as the real party in interest. Appeal Br. 1.
Appeal2018-003725
Application 14/412,538
BACKGROUND
The present application generally relates to "a new natural balance
shake that has improved taste and texture." Spec. 1:9--10. The Specification
teaches that certain prior art food compositions "are recognized as being
gritty, providing a sandy feeling on the tongue and in the throat, and a bitter
and astringent taste." Id. at 3:3--4. The Specification further teaches that
taste and texture are improved by milling the food composition to achieve a
reduced particle size distribution. Id. at 4:6-9 and 16: 15-17. The
Specification teaches that this effect is surprising. Id. at 4:6.
Claim 1 is illustrative of the subject matter on appeal and is
reproduced below:
1. A dry food composition for mixing with a drinkable
liquid, said composition comprising
(a) carbohydrates,
(b)
(c)
(d)
(e)
proteins,
fats, and optionally
probiotic micro-organisms and/or prebiotics, and
vitamins, minerals, texturisers, fibres, sweeteners,
flavourings and/or colorants,
whereby said composition shows a particle size
distribution wherein
(i) about 90 % by weight of the particles show an
average diameter of less than about 400 µm,
(ii) about 50 % by weight of the particles show an
average diameter of less than about 80 µm,
(iii) about 10 % by weight of the particles show an
average diameter of less than about 10 µm.
Appeal Br. 28 (Claims App.).
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Application 14/412,538
REJECTIONS
The Examiner maintains the following rejections:
1. Claims 1-7, 9, 12-14, and 17-20 are rejected under 35 U.S.C.
§ 103(a) (pre-AIA) as obvious over Venturi2 in view of Solomon. 3
Final Act. 3---6.
2. Claim 8 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as obvious
over Venturi, in view of Solomon, and further in view of Van Der
Heyden et al. 4 Id. at 6-7.
3. Claim 15 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Venturi, in view of Solomon, and further in view of
Jordan. 5 Id. at 7-8.
4. Claim 16 is rejected under 35 U.S.C. § 103(a) (pre-AIA) as
obvious over Venturi, in view of Solomon, Jordan, and Ritchey et
al. 6 Id. at 8-9.
5. Claims 10 and 11 are rejected under 35 U.S.C. § 103(a) (pre-AIA)
as obvious over Venturi, in view of Solomon, and further in view
of Pan et al. 7 Id. at 9-10.
2 US 2004/0265360 Al, published Dec. 30, 2004 ("Venturi").
3 US 2008/0193598 Al, published Aug. 14, 2008 ("Solomon").
4 US 2005/0271744 Al, published Dec. 8, 2005 ("Van Der Heyden").
5 US 2006/0286270 Al, published Dec. 21, 2006 ("Jordan").
6 US 5,688,547, issued Nov. 18, 1997 ("Ritchey").
7 US 2007/0231371 Al, published Oct. 4, 2007 ("Pan").
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Appeal2018-003725
Application 14/412,538
DISCUSSION
Rejection 1. The Examiner determined that claims 1-7, 9, 12-14,
and 17-20 are obvious over Venturi in view of Solomon. Final Act. 3-6. In
support of such determination, the Examiner found that Venturi teaches a
food composition "containing carbohydrates, proteins, fats vitamins and
minerals." Id. at 3. The Examiner additionally found that "Solomon teaches
particle sizes of less than 500 µm are barely perceptible .... the small
micron size is barely perceptible on human tongue as disclosed by Solomon
et al." Id. at 3 (citing Solomon ,r 24). The Examiner further found that "it
would have been obvious to one of ordinary skill in the art at the time the
invention was made to optimize the particle size of the powder of Venturi
according to the desired texture of the beverage based on the perceptibility
of the particles on the human tongue." Id. The Examiner additionally found
that Appellants had not shown that the claimed particle size distribution was
critical. Id.
Appellants argue that the Examiner's determination is in error on
several bases. First, Appellants argue that a person of ordinary skill in the
art would not have had reason to combine the teachings of Venturi and
Solomon. Appeal Br. 12-13. Appellants argue that Venturi is directed to
products that have low lactose while Solomon is directed toward products
"comprising lactase." Id. at 12 (emphasis in original).
Solomon teaches that "[ t ]he particulate composition includes particles
having a size that is not perceptible or is barely perceptible on human
tongue. Such particles generally have a size of 500 microns or below. In
some embodiments, the particles have a size of ... about 100 microns or
below, about 50 microns or below, about 20 microns or below, about 10
microns or below, or about 1 micron or below." Solomon ,r 24. Thus,
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Appeal2018-003725
Application 14/412,538
Solomon's teachings regarding particle size are not specific to lactase and
may be seen as generally applicable to particulate compositions. See Ans.
14. Accordingly, Appellants have not shown error in this regard.
Appellants additionally argue that the claims require a particle size
distribution while Solomon teaches a particle size. Appellants assert that the
particle sizes taught by Solomon would not yield improved taste and texture.
Claim 1 requires, in part, as follows:
said composition shows a particle size distribution wherein
(i) about 90 % by weight of the particles show an average
diameter of less than about 400 µm,
(ii) about 50 % by weight of the particles show an average
diameter of less than about 80 µm,
(iii) about 10 % by weight of the particles show an average
diameter of less than about 10 µm.
Appeal Br. 28 (Claims App.).
Solomon teaches a number of exemplary particle size ranges
including "about 10 nm to about 500 µm" and "about 1 µm to about 100
µm." Solomon ,r 24.
The Examiner determined that "[g]iven that the prior art recognizes
the benefit of particle sizes that overlap with the ranges recited in the claim,
it would have been obvious to one of ordinary skill in the art at the time the
invention was made to optimize the particle size of the powder of Venturi
according to the desired texture of the beverage based on the perceptibility
of the particles on the human tongue." Ans. 12; Solomon ,r 24.
Appellants argue that such teachings are insufficient to lead one of
ordinary skill in the art to the claimed distribution. Appeal Br. 13-15.
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Application 14/412,538
Appellants additionally argue that Solomon does not "describe or suggest
that the described 'barely perceptible' particle size would provide for any
improved texture, much less any improved taste." Id. at 13 (underscoring in
original). Appellants further argue that "the Examiner has not provided any
reasoned statement or rationale as to why the combination of Venturi with
Solomon would lead a person of ordinary skill in the art to the herein
specifically claimed range of particle size distribution." Id. at 14 ( emphasis
omitted).
This argument is persuasive. The Examiner's proposed combination
may lead one of skill in the art to a food composition having the claimed
components and an overlapping size range, but has not been shown to guide
one to the specific particle size distribution claimed by the Appellants. That
is, although Solomon teaches a relationship between particle size and
perceptibility of a particulate composition on the human tongue (Solomon
,r 24), the Examiner has not established with sufficient factual evidence that
Solomon teaches any relationship between particle size distribution (i.e.,
varying particle size) and perceptibility or another organoleptic property of a
particulate composition. A particular parameter must first be recognized as
a result effective variable, i.e., a variable which achieves a recognized result,
before the determination of the optimum or workable ranges of said variable
might be characterized as routine experimentation. In re Antonie, 559 F .2d
618, 620 (CCPA 1977). Accordingly, Appellants have shown error with
regard to Rejection 1.
Appellants additionally argue that they have established the criticality
of the claimed particle size distribution by showing that such distribution
yields surprising improvements in the overall texture and taste of the food
composition. Appeal Br. 15-16.
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Application 14/412,538
An applicant may overcome a prima facie case of obviousness by
establishing "that the [ claimed] range is critical, generally by showing that
the claimed range achieves unexpected results relative to the prior art
range." In re Geisler, 116 F.3d 1465, 1469-70 (Fed. Cir. 1997). As
Appellants have shown error in the prima facie case, we need not reach the
issue of criticality. We similarly need not reach Appellants' arguments
regarding teaching away and reasonable expectation of success.
In view of the foregoing, we determine that Appellants have shown
reversible error in the rejection of claim 1. As the remaining claims at issue
in Rejection 1 depend from claim 1 and were rejected on a similar basis, we
determine that Appellants have shown reversible error in the rejection of
claims 2-7, 9, 12-14, and 17-20 as obvious over Venturi in view of
Solomon.
Rejections 2-5. The Examiner additionally rejected claims 8, 10, 11,
15, and 16 over Venturi in view of Solomon and certain additional
references. Final Act. 6-10 (Rejections 2-5.). These rejections depend
upon the teachings of Solomon considered above with regard to the rejection
of claim 1. Appellants predicate their appeal of these rejections on the
arguments provided above. Appeal Br. 23-27. As we have found these
arguments to be persuasive, we determine that Appellants have also shown
error with regard to these rejections.
CONCLUSION
The rejections of all claims are reversed.
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Application 14/412,538
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
REVERSED
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