McDonnell Boehnen Hulbert & Berghoff LLP

Last month, the Federal Circuit affirmed the final determination by the U.S. Patent and Trademark Office Patent Trial and Appeal Board affirming the Examiner's rejection of certain claims in U.S. Patent Application No. 12/789,280 as obvious.

The rejected claims of the '280 application are directed to methods of making a low-carbohydrate baked food product using egg-bound water and psyllium fiber instead of traditional flour.  Psyllium is the common name for several members of the plant genus Plantago whose seeds are used commercially for the production of mucilage.  The panel opinion explains that digestible starch in flour acts to bind the fiber and protein components of baked foods when wetted, but notes that starch can have a significant impact on blood glucose levels once consumed.  The '280 application describes the reduction of digestible starch from baked foods by preparing low-starch, high-fiber baked food products using controlled hydration of mucilaginous hydrocolloids such as psyllium.  The opinion notes that claim 22 is representative (wherein disputed claim limitations are italicized):

22.  A method for producing a baked food product, comprising:
    mixing dry components together to form a dry mix, wherein said dry mix comprises a fiber component and baking soda, wherein said fiber component constitutes about 30% to 65% by weight of said dry mix, wherein said fiber component is substantially free of digestible carbohydrate, wherein said fiber component comprises psyllium fiber comprising ground psyllium husk, ground psyllium seed, or a mixture thereof, and wherein said fiber component is the only fiber component in said dry mix;
    mixing liquid components together to form a liquid mix, wherein said liquid mix comprises a liquid protein component and a fat component, wherein said liquid protein component comprises egg white or fresh whole egg;
    blending said dry mix with said liquid mix to form a dough, wherein said dry mix or said liquid mix or both comprise one or more additives selected from the group consisting of processing aids, emulsifiers, leavening agents, flavoring agents, sweeteners, bracers, colors, preservatives and acidulants, wherein proper hydration of said fiber is achieved by maintaining a fiber-to-water weight ratio in a range of 1:0.6 to 1:3 in said dough, wherein water from egg white or fresh whole egg or both provides over 90% of total water in said dough, and wherein said dough has a digestible starch content of 2% or less by weight and a digestible carbohydrate content of 4% or less by weight; and
    baking said dough without the use of yeast to allow an internal network to encapsulate hot gases re-leased during the baking process to inflate said dough into a baked food product selected from the group consisting of a bread or muffin.

During prosecution of the '280 application, the Examiner rejected claims 22, 25–27, 30–33, 36, 39–43, and 45–50 as obvious in view of in view of the combination of three prior-art references:  European Patent Publication No. EP 0 642 737 A1 (Woestelandt), U.S. Patent No. 6,322,826 (Zohoungbogbo), and U.S. Patent Application Publication No. U.S. 2007/0275121 A1 (Malby).  Woestelandt discloses a gluten-free bakery product made with 30–70% by weight gluten-free wheat flour and 30–70% by weight eggs, and also discloses that the problem of crumbling in gluten-free products made by conventional methods using water and gluten-free flour can be addressed by using egg as a binder.  Zohoungbogbo discloses a low-carbohydrate flour comprising at least 50% protein, less than 15% carbohydrates (preferably less than 5%), and 35–50% plant fibers, and also discloses that this low-carbohydrate flour can be used as a substitute for wheat flour in the preparation of dietetic foods.  Malby discloses a gluten-free bread made from eggs and gel-forming plant material such as psyllium fiber, and also discloses that the use of psyllium eliminates the traditional fermentation step (i.e., proving or raising).

In rejecting the claims of the '280 application, the Examiner found that Woestelandt discloses most of the limitations of claim 22, and that a person of ordinary skill in the art would have substituted Woestelandt's whole wheat flour with Zohoungbogbo's low-carbohydrate flour when preparing a dietetic baked food product.  The Examiner also found that the fiber-to-water weight ratio of the resulting bakery product would be 1:0.64 to 1:0.91, falling within the range recited in claim 22.  The Examiner concluded that it would have been obvious to use psyllium fiber as the plant fiber in baked products made without proving or fermentation (such as in the method of claim 22).

The Board affirmed the Examiner's rejection of claims 22, 25–27, 30–33, 36, 39–43, and 45–50, finding that the record supported the Examiner's finding of a motivation to combine Woestelandt and Zohoungbogbo, and also finding that a skilled artisan would have lacked a reasonable expectation of success in substituting psyllium fiber in Woestelandt's process.  The Board also found that Woestelandt's process of mixing a gluten-free flour with egg without adding free water was substantially identical to the claimed process of the '280 application of providing water mainly from a protein source (e.g., eggs).

In affirming the Board's decision, the Federal Circuit determined that substantial evidence supported the Board's finding that a person of ordinary skill in the art would have modified Woestelandt in view of Zohoungbogbo and Malby to arrive at a baked food product containing psyllium-fiber flour.  The panel noted that Woestelandt discloses a bread product made from essentially the same ingredients as the claimed invention, including egg as a binder and water source, with the exception that Woestelandt uses wheat flour instead of a low-carbohydrate, psyllium-fiber flour, and that Zohoungbogbo discloses a baking flour composed of 35–50% plant fibers and less than 5% carbohydrates that is a desirable substitute for wheat flour to prepare low-carbohydrate dietetic baked goods.  The panel determined that "[t]hese teachings support the Board's determination that a skilled artisan would have found it obvious to substitute the wheat flour in Woestelandt with the plant-based flour in Zohoungbogbo in preparing a low-carbohydrate dietetic baked product."  The panel also noted that Malby's teachings regarding the beneficial properties of psyllium support the Board's finding that a skilled artisan would have substituted the plant fiber in the Woestelandt-Zohoungbogbo baked product with psyllium plant fiber for the reasons suggested in Malby.

The Federal Circuit disagreed with the Appellant's argument that Zohoungbogbo does not teach or suggest a gluten-free flour, finding that Zohoungbogbo discloses the use of rice germ as one source of protein other than wheat gluten.  The Federal Circuit also disagreed with the Appellant's argument that Woestelandt and Malby teach incompatible baking techniques, finding that the Appellant failed to cite anything in the record that undermined the Board's factual findings that the benefits taught by Malby would apply in the asserted combination.  Having found the Appellant's arguments to be unpersuasive, the Federal Circuit affirmed the decision of the Board.

In re Fulton (Fed. Cir. 2020)
Nonprecedential disposition
Panel: Circuit Judges Dyk, Taranto, and Stoll
Opinion by Circuit Judge Stoll