Holst, Hans Henrik. et al.

Patent Trials and Appeals Board

Jan 29, 2020

13146365 - (D) (P.T.A.B. Jan. 29, 2020)

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.
13/146,365 10/03/2011 Hans Henrik Holst PS4422082 3493
40401 7590 01/29/2020
Hershkovitz and Associates, PLLC
2845 Duke Street
Alexandria, VA 22314
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
USPTO@hershkovitz.net
patent@hershkovitz.net
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS HENRIK HOLST, WILLIAM STUART GUNTHER,
JOERGEN ANDERSEN, and KRISTOFFER LUNDGREN

Appeal 2019-003122
Application 13/146,365
Technology Center 1700
Before GEORGE C. BEST, BRIAN D. RANGE, and
MICHAEL G. McMANUS, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–9 and 16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Arla Food
AmbA. Appeal Br. 2.
Appeal 2019-003122
Application 13/146,365

2
CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to milk products treated
to obtain long shelf life. Spec. 1:5–9; 3:6–9. Claim 1 is illustrative:
1. A method for producing a milk or milk-related
product, which contains 0 colony forming units/ml, the method
comprising:
a) providing a milk derivative,
b) physically separating microorganisms from said milk
derivative, thus obtaining a partly sterilised milk derivative, and
c) exposing a first composition comprising said partly
sterilised milk derivative to a High Temperature (HT)-
treatment, wherein the first composition is heated to a
temperature in the range of 145 – 160 degrees C, kept in that
temperature range for a period of 10 – 200 msec, and then
finally cooled.
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name
Pijls
Sørensen et al.
(“Sørensen”)
Coacci et al.
(“Coacci”)
Reference
US 2004/0057867 A1
WO 98/07328

WO 2008/058844 A1
Date
Mar. 25, 2004
Feb. 26, 1998

May 22, 2008
Rysstad, G., & Kolstad, J., Extended shelf life milk—advances in
technology. Int’l J. Dairy Tech., 59(2), 85–96 (2006) (“Rysstad”).

2 In this Decision, we refer to the Non-Final Office Action dated June 1,
2018 (“Non-Final Act.”), the Appeal Brief filed October 23, 2018 (“Appeal
Br.”), the Examiner’s Answer dated January 22, 2019 (“Ans.”), and the
Reply Brief filed March 12, 2019 (“Reply Br.”).
Appeal 2019-003122
Application 13/146,365

3
REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 1–9 and 16 under 35 U.S.C. § 103 as obvious over Pijls in
view of Rysstad. Ans. 3.
B. Claims 1–9 and 16 under 35 U.S.C. § 103 as obvious over Rysstad in
view of Pijls. Id. at 5.
C. Claims 1–9 and 16 under 35 U.S.C. § 103 as obvious over Sørensen in
view of Coacci. Id. at 7.
OPINION
We review the appealed rejections 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.
Appellant argues each rejection separately but argues all claims as a
group. See Appeal Br. 6–15. Therefore, consistent with the provisions of 37
C.F.R. § 41.37(c)(1)(iv) (2013), we limit our discussion to claim 1, and all
other claims on appeal stand or fall together with claim 1.
Rejection 1, obviousness over Pijls in view of Rysstad. The Examiner
rejects claim 1 as obvious over Pijls in view of Rysstad. Ans. 3. The
Appeal 2019-003122
Application 13/146,365

4
Examiner finds, among other things, that Pijls teaches heating a milk
composition to 145–160°C for 10–200 msec. Id. (citing Pijls). The Examiner
finds that Pijls is silent as to physically separating microorganisms from the
milk derivative. Id. at 4. The Examiner finds that Rysstad teaches removing
bacterial cells and spores from milk prior to heat treatment and determines
that a person of skill in art would do this to achieve extended shelf life. Id. at
4–5 (citing Rysstad).
Appellant argues that Pijls does not teach the temperature of the liquid
milk during treatment. Appeal Br. 6. The Examiner, however, finds that Pijls
teaches heating milk to a temperature range encompassing that recited by
claim 1 (Ans. 8), and the preponderance of the evidence supports the
Examiner’s position. In particular, Pijls explains its heating as follows:
The temperature of the supplied saturated or superheated steam
in a method according to the invention is preferably in the range
of 120-250° C., and more preferably between 140° C. and
200° C. In general, the temperature in the mixing chamber will
be maintained at the desired level through the steam, although it
is also possible that the mixing chamber itself is heated by
another heat source.
Pijls ¶ 30. Pijls does not indicate that its milk should reach a different
temperature than the steam that heats the milk; rather, it suggests that the
steam and the milk will reach the same temperature by stating that “the
temperature in the mixing chamber will be maintained at the desired level.”
Id. Based on Pijls, a person of skill in the art would understand that
(preferably) the Pijls mixing chamber—including the milk within the mixing
chamber—would be maintained at 140°C to 200°C.
Appellant also argues that neither Pijls nor Rysstad teach a process
that reaches zero colony forming units. Appeal Br. 8, 11. The preponderance
Appeal 2019-003122
Application 13/146,365

5
of the evidence, however, supports the Examiner’s finding that the
combination of Pijls and Rysstad would meet this recitation because the
references teach the same claimed sterilization temperatures, residence time,
along with bactofugation and microfiltration. Ans. 8–9 (providing citations
to Pijls and Rysstad). Indeed, Rysstad states that its process aims “to destroy
all residual spoilage micro-organisms.” Rysstad 86. Appellant does not
persuasively explain why the Pijls/Rysstad process would not possess the
zero colony forming unit property. In re Best, 562 F.2d 1252, 1256 (CCPA
1977) (explaining that where “the claimed and prior art products are
identical or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an applicant to prove
that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product”).
Appellant also argues that Rysstad does not suggest that taste is
improved by microfiltration. Appeal Br. 7. Claim 1, however, does not have
a taste requirement. Moreover, Appellant’s argument does not refute the
Examiner’s stated reason why a person of skill would combine the teachings
of Pijls and Rysstad—to extend shelf life. Ans. 4–5.3 See MEHL/Biophile
Int’l Corp. v. Milgraum, 192 F.3d 1362, 1366 (Fed. Cir. 1999) ( “Where . . .
the result is a necessary consequence of what was deliberately intended, it is
of no import that the article’s authors did not appreciate the results.”).
Rejection 2, obviousness over Rysstad in view of Pijls. The Examiner
also rejects claim 1 as obvious over Rysstad (as the primary reference) in

3 We address Appellant’s argument regarding unexpected results further
below.
Appeal 2019-003122
Application 13/146,365

6
view of Pijls. Ans. 5. The Examiner finds, among other things, that Rysstad
teaches heating for less than 1 second but does not teach claim 1’s recited
heating time of 10–200 msec. Id. at 5–6. Pijls, however, teaches an
overlapping heating time. Id.; see also Pijls ¶ 30. The Examiner determines
that it would have been obvious to use Pijls’s teaching regarding heating
time to optimize the process and reach a predictable result. Id.
To the extent Appellant’s arguments are substantively the same as
those raised with respect to rejection 1, those arguments are unpersuasive for
the reasons explained above.
Appellant further argues that more than modification of holding time
is necessary for Rysstad to reach claim 1. Appeal Br. 9. We disagree.
Rysstad suggests using bactofugation in conjunction with high-temperature
treatment. See, e.g., Rysstad 88–89. The Rysstad system reaches 145°C and
thus overlaps the temperature range recited by claim 1. Id. at 87; see also
Ans. 11.
Rejection 3, obviousness over Sørensen in view of Coacci. The
Examiner rejects claim 1 as obvious over Sørensen in view of Coacci. Ans.
7. The Examiner finds that Sørensen teaches treating a milk composition at a
temperature from 145–160°C for a time period of 10–200 msec. Id. (citing
Sørensen). The Examiner finds that Sørensen is silent as to physical
separation of microorganisms. Id. The Examiner finds that Coacci teaches
removing bacterial cells and spores and determines that a person of skill in
the art would have incorporated this step into Sørensen to extend milk shelf
life. Id. (citing Coacci).
Appellant argues that Coacci only has a shelf life of two weeks and
would not reach zero colony forming units. Appeal Br. 11. The
Appeal 2019-003122
Application 13/146,365

7
preponderance of the evidence does not support Appellant’s position. Coacci
teaches that a combination of bactofugation and rapid high temperature
treatment (to, for example, 140°C) results in a shelf life of two to three
months. Coacci 9–10; see also Ans. 11–13. Appellant does not persuasively
explain why the Sørensen and Coacci combination process, as proposed by
the Examiner, would not reach zero colony forming units. In re Best, 562
F.2d at 1256.
Appellant also argues that Coacci “does not UHT [ultra high
temperature] treat the milk” and that a person of skill in the art would not
have been motivated to introduce a method to produce sterile milk into a
process for non-sterile milk. Appeal Br. 11. Appellant also argues that, if
using bactofugation, a person of skill in the art would reduce heating period
or temperature. Id. at 11–12. Again, the preponderance of the evidence does
not support Appellant’s position. Coacci teaches bactofugation followed by
high temperature treatment with the Coacci process resulting in milk having
a shelf life of two to three months. Coacci 9–10.
Appellant further argues that the cited references do not suggest
improved taste. Appeal Br. 12. Claim 1, however, does not have a taste
requirement, and Appellant does not persuasively refute the Examiner’s
stated reason why a person of skill would combine the teachings of Sørensen
and Coacci—to extend shelf life. Ans. 4–5.
Unexpected Results. Throughout Appellant’s briefing, Appellant
argues that the claimed combination of physically separating microorganism
followed by high temperature treatment unexpectedly results in less cooked
taste. See, e.g., Appeal Br. 3–5, 7, 8, 12. Appellant emphasizes that the prior
art does not suggest this synergistic effect. Id. at 7, 8, 12, 15; see also
Appeal 2019-003122
Application 13/146,365

8
January 15, 2017, Declaration of Valentin Rauh (“Rauh Decl.”) ¶ 7.
Appellant primarily relies on the Rauh Declaration and experimental work
reported in the Specification as evidence. Appeal Br. 12, 15; Rauh Decl.
¶¶ 8–11, 24.
A party asserting unexpected results as evidence of nonobviousness
has the burden of proving that the results are unexpected. In re Geisler, 116
F.3d 1465, 1469–70 (Fed. Cir. 1997). Such burden requires Appellant to
proffer factual evidence that shows unexpected results relative to the closest
prior art (see In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991)) and that is reasonably commensurate with claim scope (In re
Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983)). We have carefully
considered Appellant’s evidence and arguments, but we ultimately find the
evidence unpersuasive.
In particular, the Examiner determines that Appellant has not
adequately compared the results of claim 1 to the closest prior art. Ans. 9.
We agree that Appellant does not meet this burden. Appellant has not
established that products produced by the method of claim 1 are
unexpectedly superior to, for example, Rysstad’s ESL process or Coacci’s
process of bactofugation followed by heating to 140°C. Rysstad 88–90;
Coacci 8:29–10:5.
Also, Appellant’s evidence of unexpected results must be reasonably
commensurate with the scope of Appellant’s claims. In re Peterson, 315
F.3d 1325, 1330–31 (Fed. Cir. 2003) (explaining that applicant may
overcome a prima facie case of obviousness by showing unexpected results
but the showing of unexpected results “must be commensurate in scope with
the claims which the evidence is offered to support.”) (citation omitted).
Appeal 2019-003122
Application 13/146,365

9
Here, claim 1 permits, for example, a variety of “milk derivative[s],”
variable temperature within the recited range, variable heating time within
the recited time, and variable cooling time or techniques. Appellant has not
adequately established evidence of an unexpected synergistic effect
commensurate with the scope of these variables.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejections.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–9, 16 103 Pijls, Rysstad 1–9, 16
1–9, 16 103 Rysstad, Pijls 1–9, 16
1–9, 16 103 Sørensen, Coacci 1–9, 16
Overall
Outcome
1–9, 16
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED