NESTEC S.A.

Patent Trials and Appeals Board

Sep 29, 2020

2019006910 (P.T.A.B. Sep. 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.
14/367,656 06/20/2014 Frank Arthur Cole 3712036-02170 9723
29157 7590 09/29/2020
K&L Gates LLP-Nestec S.A.
P.O. Box 1135
Chicago, IL 60690
EXAMINER
ZILBERING, ASSAF
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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):
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,
JAMES CHRISTIAN STUDTMANN, and JEREMY HARDWICK
Appeal 2019-006910
Application 14/367,656
Technology Center 1700

Before MICHAEL P. COLAIANNI, N. WHITNEY WILSON, and
MICHAEL G. McMANUS, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s January 14, 2019 decision to reject claims 8–18 (“Non-Final
Act.”). We have jurisdiction under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word Appellant to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as
Nestec S.A. (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellant’s disclosure is directed to, inter alia, methods for making a
dough-based food product, including mixing a dough having malted barley
flour in a specific amount, fermenting the dough, pressing the dough with a
die having unique characteristics, and baking the dough to form a baked
dough (Abstract). Claim 8, reproduced below from the Claims Appendix, is
illustrative of the claimed subject matter:
8. A method of making a dough-based food product, the
method comprising:
mixing a dough having malted barley flour in an amount
of 1.5% to 2.5% by flour weight;
fermenting the dough;
pressing the dough with a die having a characteristic
selected from the group consisting of a regular shape, an
irregular shape, a channel formed along a bottom perimeter of
the die, and combinations thereof; and
baking the dough to form the dough-based food product.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Betts, Jr. et al. US 5,074,778 December 24, 1991
Degli EP 0 691 078 A2 January 10, 1996
Malted Barley Flour www.cooksinfo.com July 13, 2007
Cara Amico www.burgersdogspizza.com/tag/portland-
pizza-delivery/
December 14, 2010

REJECTIONS
1. Claims 8–14 are rejected under 35 U.S.C. § 103 as unpatentable
over Degli in view of Betts and Malted Barley Flour.
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2. Claims 15–18 are rejected under 35 U.S.C. § 103 as
unpatentable over Degli in view of Betts and Malted Barley Flour, and
further in view of Cara Amico.
DISCUSSION
The Examiner finds that Degli teaches each of the limitations of claim
8, except that it does not teach (1) the use of malted barley flour in an
amount from 1.4–25%, or (2) the step of pressing the dough with a die (Non-
Final Act. 3, citing Degli Abstract, 1:56–3:55). As for difference (2), the
Examiner finds that Betts teaches the use of the die, and that doing so gives
a pizza the look of a hand formed pizza (Non-Final Act. 4). Therefore
according to the Examiner, it would have been obvious to combine Betts’s
die with Degli’s process to make machine formed pizzas that look like hand
formed pizzas. With regards to difference (1), the Examiner finds that
Malted Barley Flour teaches that malted barley flour can be used in baked
goods, such as pizza dough, and that up to 25% of the wheat flour used can
be substituted with malted barley flour, and that the malted barley flour
provides the dough with a softer crumb because it has less gluten (id., citing
Malted Barley Flour 1). The Examiner finds that it would have been
obvious to use up to 25% malted barley flour in Degli’s process in order to
achieve a softer dough, and that because of the overlapping ranges, the
claimed amount of malted barley flour (1.5–2.5%) would also have been
obvious (Non-Final Act. 4).
Appellant argues that they have established the criticality of using
1.5–2.5% malted barley flour, and that this amount would not have been
obvious in view of the broad disclosure of Malted Barley Flour. Appellant
bases these arguments on the two Rule 132 Declarations of Frank Cole,
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dated November 27, 2017 (“Decl. I”) and August 9, 2018 (Decl. II”), each of
which is of record.
It is well settled that Appellant has the burden of showing unexpected
results. In re Freeman, 474 F.2d 1318, 1324 (CCPA 1973); In re Klosak,
455 F.2d 1077, 1080 (CCPA 1972). Such burden requires Appellant to
proffer factual evidence that actually 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 in scope with the
protection sought by the claims on appeal, In re Grasselli, 713 F.2d 731, 743
(Fed. Cir. 1983); In re Clemens, 622 F.2d 1029, 1035 (CCPA 1980); In re
Hyson, 453 F.2d 764, 786 (CCPA 1972). The extent of the showing relied
upon by Appellant must reasonably support the entire scope of the claims at
issue. See In re Harris, 409 F.3d 1339, 1344 (Fed. Cir. 2005).
Following our review of the data and evidence set forth in Declaration
I and Declaration II, we agree with the Examiner that Appellant has not met
its burden of adequately demonstrating the criticality of the claimed range for
independent claims 8 and 15. In particular, we agree with the Examiner that
although the data is sufficient to show the criticality of 1.5% malted barley
flour as compared with 0.5% and 3.0%, it does not demonstrate that either
2.0% or 2.5% (each of which falls within the claimed range set forth in claim
8) would also have the unexpectedly good results required in view of the
prior art for reversal of the rejection. Specifically, since 1.5% malted barley
flour provides the unexpected results, but 3.0% provides unsatisfactory
results, there is no objective evidence which demonstrates that 2.5% malted
barley flour would provide results more similar to 1.5% malted barley flour
than to the unsatisfactory results obtained using 3.0% malted barley flour.
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Accordingly, the evidence set forth in the Declarations is not sufficient for
reversal of the rejections of claims 8 and 15.
However, with respect to claims 9 and 18 (which recite malted barley
flour amounts of 1.5%–2.0%), the evidence presented in Declaration II2 is
sufficient to show the criticality of the ranges recited therein.
Appellant also argues that a person of skill in the art would not have
found the non-peer reviewed information in Malted Barley Flour as reliable
with respect to its teaching that up to 25% of wheat flour can be replaced
with malted barley flour (Appeal Br. 9–10). However, the reference (Malted
Barley Flour) provides the teachings attributed to it by the Examiner, and
Appellant has not provided objective evidence to indicate that this teaching
would not have been believed by one of skill in the art. That another
reference teaches the use of a different amount of malted barley flour does
not mean that the teachings of the cited art would not have been believed or
would have been thought to be inoperable.
Appellant does not offer additional arguments for the patentability of
claims 10, 11, 16, and 17, but merely relies on the arguments made in
connection with claims 8 and 15, and makes no specific mention of claims
12–14. Accordingly, we also affirm the rejections of those claims.

2 Paragraph 9 of Declaration II states that the use of malt barley flour in an
amount of from “1.5-2.0%” created a dough that was capable of being
produced with the mixing and forming equipment, and had other good
properties, which was distinguished from the composition containing 3.0%
malted barley flour.
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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
8–14 103 Degli, Betts,
Malted Barley
Flour
8, 10–14 9
15–18 103 Degli, Betts,
Malted Barley
Flour, Cara Amico
15–17 18
Overall
Outcome
8, 10–17 9, 18
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) (2018).
AFFIRMED IN PART