Application of Noznick

Decision Date11 April 1968
Docket NumberPatent Appeal No. 7901.
Citation391 F.2d 946
PartiesApplication of Peter P. NOZNICK, Charles W. Tatter and Carl F. Obenauf.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Alvin Guttag, Cushman, Darby & Cushman, Washington, D. C., for appellants.

Joseph Schimmel, Washington, D. C., (Fred W. Sherling, Washington, D. C., of counsel) for the Commissioner of Patents.

Before WORLEY, Chief Judge, and RICH, SMITH, ALMOND and KIRKPATRICK,* Judges.

ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 13, 52, 53, 54, 55 and 56 of appellants' application for patent entitled "Sour Cream Powder."1

The application is directed to the production of a dry powder of sour cream. The powder is sold to dairies where it is reconstituted by the addition of water. The preferred embodiment of the invention as described in the application includes the addition of a peptizing agent which appears to aid in the reconstitution step. Claims reciting inclusion of the peptizing agent were allowed by the examiner. The appeal before us involves only claims which omit the recitation of the peptizing agent, but which do recite the presence of a "coating agent." While this admittedly was the nonpreferred embodiment in the application as filed, it is claimed to have become the preferred commercial embodiment of the invention.

The claimed invention with which we are involved is a process for making a spray-dried powder from sour cream, involving the steps of adding to the sour cream a coating agent for encapsulating the fat particles, homogenizing the mixture, and then spray drying. The coating agents disclosed are listed in the Markush group of claim 55. Claim 13 is a composition claim limited to approximately 82% sour cream solids and 18% gum acacia. The remaining claims are directed to specifically disclosed embodiments of the process and are encompassed by claim 55.

Claims 13 and 55 are reproduced below:

13. A spray dried free flowing sour cream powder containing approximately 82% sour cream solids and 18% gum acacia.
55. The process of making a sour cream powder comprising adding to sour cream 5 to 30% of a coating assisting agent selected from the group consisting of gum acacia, gum tragacanth, corn, wheat and potato starches, acid modified starches, phosphated starches, enzyme modified starches of the previous group, dextrins, pectins, carboxymethyl cellulose, nonfat milk solids, gelatin and casein, homogenizing the mixture and then spray drying the mixture.

The claims were rejected by the examiner under 35 U.S.C. § 103. The references are:

                  Bornegg                    1,800,501            April 14, 1931
                  Grelck                     2,009,135             July 23, 1935
                  Page et al. (Page)         2,719,793           October 4, 1955
                  Cameron et al. (Cameron)   2,913,342         November 17, 1959
                

Bornegg teaches the addition of a water soluble gum such as gum arabic (acacia) as a drying aid for acid liquids which are to be spray dried. The liquids contemplated are "of plant, animal, and synthetic origin," and a specific example is lemon juice.

Grelck discloses spray drying of cultured milk products from which the albumin has been coagulated. The starting material of Grelck may be any one of a number of milk products including cream, and the viscosity of the product which is finally dried may be that of a heavy liquid.

Page describes addition of a gum to a sour cream product to prevent separation. Tragacanth gum is specifically mentioned; acacia is not. Page does not dry his product.

Cameron teaches encapsulation of fat compositions with water soluble solids such as gelatin and gum acacia followed by spray drying.

It was the position of the examiner that it would be obvious to spray dry the gum-containing sour cream of Page since Grelck teaches spray drying of a cultured cream product and Bornegg teaches the use of gum acacia as an aid in spray drying acid liquids. Cameron was cited to show gelatin being used as a substitute for gum acacia and to show that viscous emulsions may be spray dried. The examiner found no patentable significance in the recitation of specific proportions of gum and sour cream in view of the Bornegg disclosure that the amount of gum can vary widely depending upon the product to be dried. The board agreed with the examiner's reasons for the rejections.

In its opinion the board indicated that it was unimpressed by arguments presented by appellants alleging an unexpected result in that their product can be reconstituted with water without separation. The board commented:

However, the superior properties on reconstitution to which appellants refer appear from the specification to be mainly attributable to the peptizing step, at least in part. In none of the examples except in Examples 9 and 12 is there used a coating agent without the peptizing agent; in Example 9 it is stated that the coating material alone is not as effective, but makes the product dryable, and in Example 12 appellants state that use of the peptizing agent was found to be preferable. * * *

Appellants took this to be a new ground of rejection, and filed a request for remand along with an affidavit by co-inventor Tatter purporting to show that spray-dried compositions prepared according to the application without peptizing agents are indeed redispersible in water to produce stable compositions. The board answered:

We find no new grounds of rejection in our decision. It does not constitute a new ground of rejection to point out to an appellant why his arguments are not persuasive of error in the Examiner\'s rejection, nor does it constitute an implied invitation to present belated showings to supply the deficiencies. * * *

It seems to us, as it did to the examiner and the board, that one skilled in the art would find it obvious to spray dry a cultured cream product such as Grelck teaches, and to add a coating agent prior to spraying to achieve the advantages taught by Bornegg. The addition of such a coating agent to sour cream specifically is suggested by Page, although for a different purpose. The teachings of Cameron reinforce our conclusion. As to the specific percentages recited in certain claims, we find nothing in the specification to indicate any criticality of such proportions. The claim seems to recite merely the optimum proportions for achieving an acceptable powder when using gum acacia. Since we find it obvious to spray dry the combination of acacia and sour cream, we also consider it obvious to vary the proportions of the two until a satisfactory ratio is found, particularly since Bornegg suggests that...

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  • Honeywell Int'l Inc. v. Mexichem Amanco Holding S.A. De C.V.
    • United States
    • U.S. Court of Appeals — Federal Circuit
    • August 1, 2017
    ...Right of Appeal Notice). Under such circumstances, the PTAB does not enter an improper new ground of rejection. See In re Noznick , 391 F.2d 946, 947–48 (CCPA 1968) ("It does not constitute a new ground of rejection to point out to an appellant why his arguments are not persuasive of error ......
  • Ex parte Shou-Chian Hsu
    • United States
    • Patent Trial and Appeal Board
    • September 23, 2021
    ...is made when explaining that Appellant's evidence and arguments are ineffective to overcome the Examiner's rejection. Cf In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (stating with reference to answers by an examiner that no new ground of rejection is made when "explaining to appellants why ......
  • Ex parte Jones
    • United States
    • Patent Trial and Appeal Board
    • July 30, 2020
    ...--------- Notes: [1] We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). [2] See also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no ground of rejection made when “explaining to appellants why their arguments were ineffective to overcome the rejection ma......
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    • Patent Trial and Appeal Board
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    ...update.pdf)) ("October 2019 Update"). [3]In re Waymouth, 486 F.2d 1058 (CCPA 1973). [4]See also In re Noznick, 391 F.2d 946, 949 (CCPA 1968) (no new ground of rejection made when "explaining to appellants why their arguments were ineffective to overcome the rejection made by the examiner");......
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