Heather N. Mendenhall et al.

Patent Trials and Appeals Board

Jul 31, 2019

13804781 - (R) (P.T.A.B. Jul. 31, 2019)

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.
13/804,781 03/14/2013 Heather N. Mendenhall 09820513-P120042US02 1986
60961 7590 07/31/2019
Intellectual Property Dept./DeWitt LLP
Wisconsin Alumni Research Foundation
2 East Mifflin Street,
Suite #600
Madison, WI 53703-2865
EXAMINER
EBRAHIM, NABILA G
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
07/31/2019 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):
IP-DOCKET@dewittllp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte HEATHER N. MENDENHALL, RICHARD W. HARTEL,
JOANNE ROBBINS, JACQUELINE A. HIND, and ZATA M. VICKERS
__________

Appeal 2018-006477
Application 13/804,7811
Technology Center 1600
__________

Before DEMETRA J. MILLS, RYAN H. FLAX, and
DAVID COTTA, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON REHEARING
Appellants request rehearing of our Decision dated May 2, 2019. We
have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The following claim is representative.
15. A method of providing sustenance to a dysphagic subject
comprising feeding to the subject one or more edible
compositions of matter having an apparent viscosity of from
about 150 cP to about 2000 cP at about 30 s-1; a yield stress of
from 0 Pa to about 20 Pa at 1 s-1; and a flow index of from
about 0.2 to about 0.6.

1 According to Appellants, the real party in interest is the Wisconsin Alumni
Research Foundation. App. Br. 2.
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Application 13/804,781

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Claim App. 1.

Examiner-Cited References
I. Germain et al., Rheological characterization of thickened
beverages used in the treatment of dysphagia, 73 J. FOOD
ENG’G 64–74 (2006) (hereinafter “Germain”).

J. Mertz Garcia et al., Managing Dysphagia Through Diet
Modifications, 110 AJN 11 (2010) (hereinafter “Garcia”).

Grounds of Rejection

Claims 15–24 stand rejected under pre-AIA 35 U.S.C.
§ 103(a) as being unpatentable over Germain in view of Garcia.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52.
In the Request for Rehearing, Appellants point to a single issue
contended to have been misapprehended or overlooked by the Board,
as follows:
the positive language of Claim 15, which requires that the
edible composition has an apparent viscosity of “from about
150 cP to about 2000 cP at about 30 s-1” (emphasis added).
(See the Claims Appendix of Appellant's main brief, at Claim
15.) This is a positive limitation in the claims that the Board
has completely overlooked. The Germain reference, in
contrast, presents apparent viscosity data taken at 50 s-1. These
two sets of viscosity measurements are categorically different,
are not comparable, and cannot be extrapolated one to the other
because viscosity is a non-linear physical characteristic. This
argument was raised in Appellant’s main brief at page 6,
Section III, and during prosecution in the Response After Final
at page 7. By overlooking the positive requirements of the
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claims, the Board has committed reversible error. In short,
contrary to the assertion in the sentence spanning pages 7 and 8
of its Decision, the Germain reference does not disclose edible
compositions whose apparent viscosity overlaps with the
claimed apparent viscosity “at about 30 s-1” as required by all
of the appealed claims.

Rehrg 2.
ANALYSIS
The request for rehearing is granted, and the obviousness rejection is
reversed. Although we understand that claim 15 is a method claim,
Appellants rely on the properties of the edible composition or product used
in the claimed method to distinguish the method from known methods of
treating dysphagia with an edible product.
The edible product used in the method of claim 15 has three claimed
characteristic variables: apparent viscosity, yield stress, and flow index. To
meet the variables of the product used in the claimed method, the prior art
must provide a reason why one of ordinary skill in the art would have
selected an edible product possessing all three variables, to use in the
claimed method.
Upon reconsideration, we conclude the Examiner has failed meet the
burden of providing evidence that the prior art teaches or suggests an edible
product which meets each of the claimed variables, specifically the claimed
variable of an apparent viscosity of from about 150 cP to about 2000 cP
measured at about 30 s-1. The Examiner points to Fig. 2 of Germain as
providing access to viscosity results for the values recited in the claims i.e.,
30 s-1. Ans. 9. The Examiner has not sufficiently explained how the Fig. 2
rheograms on page 68 of Germain, evidence an edible product having an
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Application 13/804,781

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apparent viscosity measured at about 30 s-1, along with the yield stress and
flow index, as claimed. Similarly, although the data presented in Germain’s
Tables 2 and 3 includes apparent viscosity, this viscosity is not measured at
a shear rate of 30 s-1, but is measured at 50 s-1. Appellants’ argue that the
materials of Germain are non-Newtonian fluids, thus, direct comparisons
and extrapolations cannot be made between or for samples with different
shear rates. See Appeal Br. 6. The Examiner argues that it would have been
routine in the art to optimize thickened beverage parameters from within
prior art conditions or routine optimization. Ans. 3. However, there is no
persuasive evidence on appeal that there would have been reason to optimize
the apparent viscosity with respect to the shear rate and the cited prior art
does not teach or suggest any apparent viscosity at a shear rate of 30 s-1. The
Examiner must provide a reason why one of ordinary skill in the art would
have selected an edible product possessing all three product variables. The
Examiner has not provided persuasive evidence that it would have been
obvious to use an edible product possessing each of the claimed apparent
viscosity, yield stress, and flow index characteristics.
In sum, Appellants’ arguments are persuasive and we find that the
Examiner has not met the burden of showing that the prior art combination
teaches or suggests an edible composition having all three characteristics for
use in a method of providing sustenance to a dysphagic subject.
The obviousness rejection is reversed.

CONCLUSION OF LAW
The request for rehearing is granted. The obviousness rejection is
reversed.
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Application 13/804,781

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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).

GRANTED