Ex parte Doring

• Docket Number: Appeal 2022-004510,Application 16/359,246,Technology Center 1700
• Decision Date: 26 January 2024
• Parties: Ex parte S VEN-RAINER DORING
• Court: Patent Trial and Appeal Board

1

Ex parte S VEN-RAINER DORING

Appeal 2022-004510

Application 16/359,246

Technology Center 1700

United States Patent and Trademark Office, Patent Trial and Appeal Board

January 26, 2024

FILING DATE: 03/20/2019

Before CATHERINE Q. TIMM, JEFFREY B. ROBERTSON, and DEBRA L DENNETT, Administrative Patent Judges.

DECISION ON APPEAL

TIMM Administrative Patent Judge.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 1 and 4. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).

We AFFIRM.

CLAIMED SUBJECT MATTER

The claims are directed to a skim milk powder with a dry matter content of at least 95 % by weight. See claim l(iv). The powder contains:

(a) about 6.5 to about 7.2% by weight ash,

(b) at least 34% by weight protein based on dry matter, and

(c) about 45 % to about 60% by weight lactose based on dry matter.

Id. The powder is made using a process that includes a standardising^[2] step involving the addition of ultrafiltered and electrodialyzed milk permeate to a skimmed milk concentrate. Claim l(iii).

Claim 1, reproduced below, illustrates the claimed subject matter:

1. A skimmed milk concentrate, consisting of a skimmed milk powder obtained by the steps consisting of:

(i) separating cream from raw milk to obtain a skimmed milk fraction with a dry matter content of about 5 to about 15 % by weight;

(ii) concentrating the skimmed milk fraction of step (i) to a dry matter content of about 45 to about 60 % by weight;

(iii) standardising the skimmed milk concentrate of step (ii) by adding a milk permeate to the skimmed milk concentrate of step (ii) to obtain a standardized skim milk concentrate which milk permeate was raw milk which was first subjected to ultrafiltration, and then, subjected to electrodialysis; and

(iv) drying the standardised skimmed milk concentrate of step (iii) to a skimmed milk powder with a dry matter content of at least 95 % by weight, an ash content of from about 6.5 to about 7.2% by weight, a protein content of at least 34% by weight based on dry matter, and a lactose content of about 45 % to about 60% by weight, based on dry matter, and wherein the process does not employ dried lactose.

REFERENCE

The Examiner relies on the following reference to reject the claims:

Name

Reference

Date

Kallioinen

US 2014/0205718 A1

July 24,2014

REJECTION

The Examiner maintains the rejection of claims 1 and 4 under 35 U.S.C. § 103 as being unpatentable over Kallioinen. Ans 3-6.

OPINION

As Appellant does not argue claim 4 separately (Appeal Br. 12), we select claim 1 as representative for resolving the issues on appeal.

The issue is: Has Appellant identified a reversible error in the Examiner's finding that Kallioinen provides a suggestion for forming skim milk powders having protein, lactose, and ash concentrations within claim l's ranges?

Appellant has not identified such an error.

Claim l's skim milk powder contains:

(a) about 6.5 to about 7.2% by weight ash,

(b) at least 34% by weight protein based on dry matter, and

(c) about 45 % to about 60% by weight lactose based on dry matter.

Kallioinen fails to expressly teach a skim milk powder with ash, protein, and lactose concentrations within claim l's ranges. On the one hand, Kallioinen describes a low-heat milk powder with a lactose concentration within range (46.1%), a protein concentration within range (36.8%), but an ash content (8.2%) outside claim 1 's range. Kallioinen Table 6. On the other hand, Kallioinen teaches forming a low carbohydrate (low lactose) formulation with carbohydrate/lactose concentrations lower than claim l's about 45% to about 60% concentration, but with overlapping ranges of protein and ash. See, e.g., Kallioinen ¶ 39 (5.4-65% protein, 4.6-41% carbohydrates (lactose), and 1.0-14% ash on a non-fat total solid basis.). We note that Kallioinen speaks in terms of carbohydrates, but makes clear that the carbohydrates are primarily lactose. Kallioinen ¶ 40.

Kallioinen also provides evidence that the ordinary artisan can tailor the composition by changing which powders are combined. Kallioinen ¶¶ 75-83 (describing Example 1-3 powders with different concentrations of protein, lactose, and ash) and ¶¶ 88-89 (describing the preparation of milk beverages from Examples 1 to 3's powders in various combinations along with skim milk and low-heat milk powders). Kallioinen discloses making Example 1-3's powders by separating skim milk into different fractions with different concentrations of protein, fat, lactose, ash, and minerals, recombining selected fractions, and drying to make powders with different constituent concentrations (Table 2 (powder 1, powder 2), Table 4 (powder 3), Table 5 (powder 4)). The key is that these powders are used to make milk beverages (Table 7) per different recipes. Kallioinen ¶ 88.

Although Kallioinen seeks to make low lactose milk beverages from the powders, those of ordinary skill in the art would have understood that the concentrations of protein, lactose, and ash would be adjustable to arrive at a milk beverage with desired organoleptic properties including milk beverages with higher levels of lactose particularly for immediate consumption after rehydrating without pasteurization. As the Examiner reasons, the concentrations depend on the intended use, e.g., where the intended use is to make a low-lactose milk beverage, one would formulate a powder with low lactose concentration, but where the intended use is to make an immediately consumed sweeter beverage from powder with a natural concentration of lactose, one would add one of the separated powders containing more lactose in the appropriate amount.

Put another way, Kallioinen teaches the general conditions for forming skim milk powders of various protein, lactose, and ash concentrations workable or optimal for forming milk beverage compositions. Under these circumstances, it is expected that a change in concentration is within the realm of obviousness as discovering the optimum or workable ranges for the constituents is normally arrived at through routine experimentation. In re Aller, 220 F.2d 454, 456 (CCPA 1955). This is because "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflexlnc, 550 U.S. 398, 416 (2007). Thus, the burden has shifted to Appellant to show with objective evidence that their ranges are critical for producing unexpected results. Id.; see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).

Appellant has not provided the necessary objective evidence to support a showing of criticality of the ranges for unexpected results. Appellant describes their compositions as an ideal protein concentrate and states that "Appellant has surprisingly and unexpectedly discovered a process" to make it. Appeal Br. 9. The process...