NESTEC S.A.

Patent Trials and Appeals Board

May 21, 2021

2020003229 (P.T.A.B. May. 21, 2021)

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.
14/367,648 06/20/2014 Frank Arthur Cole 3712036-02169 8171
29157 7590 05/21/2021
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
BADR, HAMID R
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
05/21/2021 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANK ARTHUR COLE
Appeal 2020-003229
Application 14/367,648
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY. WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s September 12, 2019 decision to finally reject claims 2, 13, 15,
16, 20, and 21 (“Final Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Société des Produits Nestlé S.A.
(Appeal Br. 2).
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Application 14/367,648

2
CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to methods for making dough and
dough products said to have improved characteristics (Spec. ¶ 1). Increasing
malted barley flour amounts and specific processing steps are said to create
desired attributes in the dough, such as open grain/cell structure, without
excessive fermentation or high water absorption (id. ¶ 6). Appellant states
that the use of specifically-sourced malted barley flour with a specific, high
enzymatic activity provides baked goods having open-cell structure final
attributes that are typical of baked goods that require higher water absorption
and longer fermentation periods (Appeal Br. 5). Claim 12 is representative
and is reproduced below from the Claims Appendix of the Brief:
12. A method of making a dough-based food product, the
method comprising:
mixing a pizza dough having malted barley flour in an
amount greater than 1 % to about 5.0% by flour weight,
wherein the malted barley flour comprises at least one enzyme
with an enzyme activity level from about 80° Lintner to about
110° Lintner;
fermenting the pizza dough for an amount of time
between about 60 and about 120 minutes; and
baking the pizza dough to form the dough-based food
product.

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3
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Tangel et al. US 3,615,679 October 26, 1971
Rettey US 2006/0188630 A1 August 24, 2006
T. Singh et al. Malting of Hulless
Barley Cultivars and
Glenlea (T. aestivum)
Utility Wheat, 342 J. 
Food Sci. 342–46
1985
Bowles Chapter 3, Amylolytic
Enzymes
1996
REJECTION
Claims 12, 13, 15, 16, 20, and 21 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Tangel, in view of Rettey, Singh, and Bowles.
OPINION
The Examiner’s findings are set forth at pages 3–4 of the Final
Action. The Examiner finds that Tangel discloses a pizza dough comprising
2.3-3.3 wt% malt based on the flour weight, but is silent with regard to the
fermentation time and baking temperature of the pizza, the nature of the
enzyme, and the particular use of “malted barley flour” (Final Act. 3). The
Examiner finds that Rettey discloses the claimed fermentation time, and that
Singh discloses the claimed enzymatic activity in Lintner units (id.).
Finally, the Examiner finds that Bowles teaches that:
“Supplementation of flour with α-amylase is standard. The
most common source for the enzyme in bread is either malted
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grain or fungal (Aspergullus oryzae) fermentations. In the U.S.,
most flour is supplemented at the miller with barley malt.”
(Final Act. 4, citing Bowles, p. 112, ¶ 3). Based on the foregoing statement
in Bowles, the Examiner finds that a person of skill in the art would have
understood Tangel’s “malt” to be barley malt (Final Act. 4). Alternatively,
the Examiner determines that, in light of the disclosure of Bowles, it would
have been obvious to modify Tangel’s process to use barley malt as recited
in the claims (id.).
Appellant argues that the cited references do not “disclose or suggest
a pizza dough having malted barley flour that comprises at least one enzyme
with an enzyme activity level from about 80° Lintner to about 110° Lintner”
(Appeal Br. 6). Appellant contends that Tangel provides no guidance
regarding what type of malt to use, and does not suggest using a malted
barley flour having an enzyme with the claimed enzymatic activity (Appeal
Br. 6–7). The Examiner does not challenge these contentions, but instead
relies on the teachings of Rettey and Bowles as suggesting the needed
modifications.
Appellant does not appear to challenge the Examiner’s findings as to
the teachings of Rettey and Bowles. Instead, Appellant argues that a person
of skill in the art would not have modified Tangel to arrive at the claimed
invention (Appeal Br. 7).
Rejections on obviousness grounds must be supported by “some
articulated reasoning with some rational underpinning" to combine the
known elements in the manner required in the claim at issue. KSR Int’l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, “the analysis need not
seek out precise teachings directed to the specific subject matter of the
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challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” Id.
In this instance, the Examiner finds that Singh teaches that the
diastatic power of 5-day malts varies from 93° to 107° Lintner (Final Act. 3;
see also, Singh, p. 343). Because Tangel teaches that malt is used in its
pizza dough, and Singh teaches a 5-day malt has an enzymatic activity range
which overlaps with the claimed range, the Examiner concludes that the use
of this enzymatic activity range would have been obvious (Final Act. 3).
The Examiner also finds that Singh’s teaching that the enzymatic activity of
its 5-day malts “was within the range of commercial malts of two-row
barley” (Singh, p. 343) is a reason why a person of skill in the art would
have selected a barley malt with an enzymatic activity within the claimed
range.
Appellant argues that Singh “does not provide any reason to choose a
barley malt having a Lintner level from about 80° Lintner to about 110°
Lintner from the variety of malts having various diastatic powers” (Appeal
Br. 7). However, the Examiner explicitly states that “for commercial scale
operations, one of ordinary skill in the art is expected to use a commercially
available malt which according to Singh has an enzymatic activity in the
range 93–107 Lintner degrees” (Ans. 9).
Appellant argues that nothing in the cited references “provides any
reason or motivation for the skilled artisan to select the particular five day
malt from the variety of malts have various diastatic powers [enzymatic
activity] disclosed in Singh” (Reply Br. 2). However, as noted above, the
Examiner finds that Singh explicitly discloses that commercially available
barley malts have the necessary enzymatic activity, and determines that
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commercial availability would have been a reason to select such a barley
malt. Appellant does not meaningfully challenge this determination, arguing
only that the Examiner does not “establish the reason or motivation for the
skilled artisan to indeed select the five day malt from the variety of malts
having various diastatic powers [enzymatic activity] in Singh” (Reply Br. 3).
However, the Examiner has provided a rational explanation of why a person
of skill in the art would have chosen to use Singh’s 5-day malt, or at least a
malt having that level of enzymatic activity, namely that it was
commercially available.
Appellant also argues that the Examiner has not adequately
established that the enzymatic activity of the malted barley flour as a result-
effective variable for a pizza dough (Appeal Br. 7). However, the rejection
is not based on a determination that enzymatic activity of the malted barley
flour is a result-effective variable, but instead on a finding that a
commercially available malted barley would have the requisite enzymatic
activity (see, Final Act. 3–4).2
Appellant also argues that the Examiner has not provided a reason
why a person of ordinary skill in the art would have combined the teachings
of the references in the manner set forth in the rejection (Appeal Br. 8).

2 The Examiner does state that “barley malt and its level of use are
considered result effective variables” (Ans. 9). However, the Examiner also
finds that the amount of barley malt used in the claims would have been
obvious because of the overlapping ranges (see, e.g. Ans. 7–8).
Accordingly, to the extent that the Examiner may also have incorrectly
relied on a result-effective variable theory, such an error would have been
harmless.
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However, as detailed above, the Examiner has explained why a person of
skill in the art would have combined the teachings of the references.
Appellant makes further arguments in connection with claims 20 and
21 that the Examiner has not adequately established the obviousness of the
more limited amount of malted barley flour (claim 20) or more limited range
of enzymatic activity (claim 21) (Appeal Br. 10). In each case, Appellant
argues that a person of skill in the art would not have been motivated to
modify the cited art to arrive at the claimed ranges. However, these
arguments are not persuasive because Appellant has not persuasively
challenged the Examiner’s finding that the art teaches overlapping ranges for
these properties, which make the claimed ranges prima facie obvious. See In
re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); In re Woodruff, 919 F.2d
1575, 1578 (Fed. Cir. 1990).
The Examiner’s rejection is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
12, 13, 15,
16, 20, 21
103(a) Tangel, Rettey,
Singh, Bowles
12, 13, 15,
16, 20, 21

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