Ex Parte Yu et al

Patent Trial and Appeal Board

Mar 12, 2013

11279722 (P.T.A.B. Mar. 12, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/279,722 04/13/2006 Weizhu Yu 36650 8620
23589 7590 03/13/2013
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
PADEN, CAROLYN A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
03/13/2013 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 WEIZHU YU
and RICHARD B. JACKSON
____________

Appeal 2011-009979
Application 11/279,722
Technology Center 1700
____________

Before RICHARD E. SCHAFER, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
On September 16, 2010, the Examiner rejected claims 1, 5, 6, 8, 10,
11, 13-15, 18-22, 25, 29, 31, 33, 34, and 36-38 of Application 11/279,722
under 35 U.S.C. § 103(a) as obvious. Appellants seek reversal of these
rejections pursuant to 35 U.S.C. § 134(a). Because at least some of these
claims have been previously rejected, see, e.g., March 8, 2010 Office
Action, we have jurisdiction under 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.
Appeal 2011-009979
Application 11/279,722
2
BACKGROUND
The ’722 application describes and claims a trans fat free emulsifier
paste that can be used to prepare dough base. Spec. 1. Dough base is a
product that typically contains fats, salt, sugar, and other ingredients. Id. To
prepare a dough, bakers simply add flour, water, and yeast to the base. Id.
The ’722 application also describes and claims methods for preparing the
trans fat free emulsifier paste. Id. at 2-3.
Claim 1 is representative of the ’722 application’s composition of
matter claims and is reproduced below:
1. A trans fat free plastic composition comprising:
from about 5% to about 40% w/w of a high diglyceride
emulsifier in which the diglyceride portion of the emulsifier is
greater than about 65%;
from about 60% to about 95% w/w of a non-hydrogenated
vegetable oil; and
an ingredient selected from the group consisting of sugar,
dextrose, soy flour, wheat flour, gum, gluten, and mixtures
thereof,
said composition being in the form of a solid plastic mass,
wherein said % w/w are based upon the total mass.
(App. Br. 30 (Claims App’x)).
Claim 25 is representative of the ’722 application’s method claims
and is reproduced below:
25. A method of preparing a trans fat free plastic
composition for flour-based baked food products, said method
comprising the steps of:
forming a melted blend by:
heating from about 5% to about 40% w/w of a high
diglyceride emulsifier in which the diglyceride portion of
Appeal 2011-009979
Application 11/279,722
3
the emulsifier is greater than about 65% to a temperature
above the melting point of the emulsifier; blending the
heated emulsifier with from about 60% to about 95%
w/w of a non-hydrogenated vegetable oil with similar
temperature; and adding an ingredient selected from the
group consisting of sugar, dextrose, soy flour, wheat
flour, gum, gluten, and mixtures thereof; or
blending from about 5% to about 40% w/w of a high
glyceride emulsifier in which the diglyceride portion of
the emulsifier is greater than about 65% with from about
60% to about 95% w/w of a non-hydrogenated vegetable
oil; heating the mixture of the emulsifier and vegetable
oil to a temperature above its melting point; and adding
an ingredient selected from the group consisting of sugar,
dextrose, soy flour, wheat flour, gum, gluten, and
mixtures thereof; and
cooling the melted blend of the emulsifier, vegetable oil, and
ingredient, to form a solid plastic mass, wherein said % w/w are
based upon the total mass.
(App. Br. 34 (Claims App’x)).
REJECTIONS
The Examiner rejected claims 1, 5, 6, 8, 10, 11, 13-15, 18-22, 25, 29,
31, 33, 34, and 36-38 under 35 U.S.C. § 103(a) as obvious over U.S. Patent
No. 5,879,735 (“Cain,” issued March 9, 1999) in view of IRMA S.
ROMBAUER & MARION ROMBAUER BECKER, JOY OF COOKING 338-342
(1997) (“Rombauer”) and BECKY SUE EPSTEIN & HILARY DOLE KLEIN,
SUBSTITUTING INGREDIENTS: AN A TO Z KITCHEN REFERENCE (3d ed.) 16
(1996) (“Epstein”).
Appeal 2011-009979
Application 11/279,722
4
DISCUSSION
The Examiner rejected claims 1, 5, 6, 8, 10, 11, 13-15, 18-22, 25, 29,
31, 33, 34, and 36-38 as obvious over the combination of Cain, Rombauer,
and Epstein. The Examiner relies upon Cain’s description of a variety of
trans fat free compositions as the base of the rejection (Ans. 4-5). Rombauer
is relied upon for its description of a roux (id. at 6), while Epstein teaches
that margarine can be substituted for butter in cooking (id.).
Appellants seek reversal of this rejection on a variety of bases. Claims
1 and 25 are independent claims and are argued separately, as are dependent
claims 18, 19, 22, 36, and 37 (App. Br. 12). For our purposes, however, we
need only address the rejections of the two independent claims.
We begin, as we must, with claim construction. Oakley, Inc. v.
Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003). During
prosecution, the ’722 application’s claims are given their broadest
reasonable scope. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). The words used in a claim must be read in light of the
specification as it would be interpreted by one of ordinary skill in the art. Id.
In particular, we must construe the phrase “wherein said % w/w are based on
the total mass.” This phrase, which appears in both of the independent
claims, is ambiguous: Does it refer to the total mass of the claimed plastic
composition or to the total mass of the high diglyceride emulsifier and
vegetable oil in the plastic composition? As explained below, we conclude
that this phrase has the latter meaning.
The ’722 application describes a single preferred formulation for the
plastic emulsifier composition of this invention. Spec. 6-7. That formulation
is described as comprising 20% by weight soy bean oil and 5% by weight
“high diglyceride.” Id. at 7. If the claim language in question were construed
Appeal 2011-009979
Application 11/279,722
5
referring to the total mass of the plastic emulsifier composition, the plastic
emulsifier composition disclosed in the Specification would not be within
the scope of the claims. A claim construction that excludes the preferred
embodiment is rarely, if ever, correct. InterDigital Commc’ns, LLC v. U.S.
Int’l Trade Comm’n, 690 F.3d 1318, 1326 (Fed. Cir. 2012) (citing Pfizer,
Inc. v. Teva Pharm., USA, Inc., 429 F.3d 1364, 1374 (Fed. Cir. 2005);
Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1583 (Fed. Cir. 1996)).
Furthermore, a construction that interprets the claim language in question of
referring to the total mass of the high diglyceride emulsifier and the
vegetable oil places the preferred embodiment squarely within the scope of
the ’722 application’s claims. We, therefore, construe the phrase “wherein
said % w/w are based on the total mass” as referring to the total mass of the
high diglyceride emulsifier and vegetable oil used in the plastic emulsifier
composition.
Having construed the ’722 application’s claims, we next consider
whether the Examiner erred in rejecting the application’s claims as obvious
over the combined teaching of Cain, Rombauer, and Epstein. As explained
below, we reverse this rejection because the Examiner has not established a
prima facie case of obviousness.
The Examiner found that Cain described or suggested every element
of claims 1 and 25 except for the inclusion of the “an ingredient selected
from the group consisting of sugar, dextrose, soy flour, wheat flour, gum,
gluten, and mixtures thereof” in a solid plastic mass (Ans. 5-6). Appellants
contend that this finding is erroneous in several respects (see generally App.
Br. 13-30).
In particular, Appellants argue that Cain does not describe a
composition that includes from about 60% w/w to about 95% w/w vegetable
Appeal 2011-009979
Application 11/279,722
6
oil, as required by the ’722 application’s independent claims for two reasons.
(id. at 15-16).
First, Appellants argue that Cain does not describe the use of an
amount of vegetable oil that falls within the scope of claim 1 (id.). Cain
describes a composition as containing between 30 and 70% triglycerides,
col. 3, ll. 11-27, which overlaps the range specified by claim 1. Appellants
do not dispute that vegetable oils are triglycerides. Rather, they rely upon
Cain’s statement that liquid vegetable oils can be used as the triglyceride
source, but preferably as “20-60 wt % of the triglyceride-component of our
blend.” Col. 3, ll. 52-64. Based upon this statement, Appellants assert that
Cain describes the use of a maximum of 42% vegetable oil (App. Br. 16).
This argument is not persuasive because Cain specifically states that the use
of 20-60 wt % vegetable oil as a triglyceride source is a preferred
embodiment and does not provide any description or suggestion that the use
of 100 wt % vegetable oil as the triglyceride source would lead to failure.
The preferred embodiment described in Cain, therefore, does not detract
from Cain’s description of a composition comprising between about 30 to
about 70 wt % triglyceride. Accordingly, The Examiner did not err in
finding that Cain describes the use of a triglyceride source comprising
amounts of vegetable oil that overlaps the claimed range of about 60% w/w
to about 95% w/w vegetable oil.
Second, Appellants argue that Cain’s use of vegetable oil as a
triglyceride source is not a description of actually using the vegetable oil in
Cain’s composition (Reply Br. 5). Cain describes the use of vegetable oil as
a triglyceride source. Col. 3, ll. 52-64. Cain then describes the glycerolysis
of its triglyceride source either by chemical or enzymatic means to produce a
mixture of di- and tri-glycerides. Col. 4, ll. 46-50; col. 4, ll. 57-66. Cain
Appeal 2011-009979
Application 11/279,722
7
further states that the triglycerides produced by this procedure are different
from those in the starting composition. Col. 4, ll. 57-62. While Cain does say
that the manmade fat blends produced by glycerolysis can be mixed with a
liquid oil to obtain a final blend having desirable properties, Cain does not
describe the amount of liquid oil that might be used in such situations. Col.
5, ll. 3-27. Furthermore, in each of Cain’s examples, a composition having
the desired properties was produced by mixing a series of manmade fat
blends without the addition of any vegetable oil. See generally col. 5, l. 42-
col. 8, l. 67. Because Cain describes the transformation of most, if not all, of
its triglyceride source into manmade fat blends comprising triglycerides that
differ from those in the starting material, the Examiner erred in finding that
Cain described or suggested the use of 30-70 wt % vegetable oil in its
composition. For this reason we reverse the Examiner’s rejection of Claim 1.
Furthermore, claim 25 specifically requires blending the high
diglyceride emulsifier with “from about 60% to about 95% w/w of a non-
hydrogenated vegetable oil.” The Examiner’s error regarding Cain’s
description means that the Examiner also did not establish a prima facie case
of obviousness of this claim. We, therefore, reverse the rejection of claim
25.
The remaining claims in the ’722 application depend from either
claim 1 or claim 25. The rejection of these claims must also be reversed
because the Examiner failed to demonstrate a prima facie case of
obviousness of each of these claims for at least the reasons set forth above.
Appeal 2011-009979
Application 11/279,722
8
CONCLUSION
For the foregoing reasons, we reverse the Examiner’s rejection of
claims 1, 5, 6, 8, 10, 11, 13-15, 18-22, 25, 29, 31, 33, 34, and 36-38.
REVERSED

cam