Case: 20-1384 Document: 33 Page: 1 Filed: 12/08/2020
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: DAVID JOHN FULTON,
Appellant
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2020-1384
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 12/789,280.
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Decided: December 8, 2020
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JOSEPH ROGER WILLIAMS, JR., Richards Rodriguez &
Skeith LLP, Austin, TX, for appellant.
WILLIAM LAMARCA, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by MARY L.
KELLY, THOMAS W. KRAUSE, FARHEENA YASMEEN RASHEED.
______________________
Before DYK, TARANTO, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
David John Fulton appeals from the final decision of
the Patent Trial and Appeal Board affirming the rejection
of certain claims in U.S. Patent Application No. 12/789,280
under 35 U.S.C. § 103. The rejected claims cover methods
Case: 20-1384 Document: 33 Page: 2 Filed: 12/08/2020
2 IN RE: FULTON
of making a low-carbohydrate baked food product using
egg-bound water and psyllium fiber instead of traditional
flour. Because substantial evidence supports the Board’s
determination of obviousness, we affirm.
BACKGROUND
Sugar consumption is associated with a variety of
health conditions, including obesity, diabetes, and heart
disease. Conventionally, digestible starch in flour acts to
bind or glue the fiber and protein components of baked
foods when wetted. As a high-calorie digestible carbohy-
drate, however, starch can have a significant impact on
blood glucose levels once consumed. By contrast, fiber-
based flour does not quickly digest to glucose and does not
require insulin to metabolize.
To address the need to reduce digestible starch con-
sumption from baked foods, the ’280 application describes
and claims methods for making low-starch, high-fiber
baked food products using controlled wetting, or hydration,
of mucilaginous hydrocolloids such as psyllium. The appli-
cation recognizes that replacing starch of traditional bak-
ing methods with partially wetted hydrocolloids and fiber
allows for a significant reduction in glucose production and
insulin secretion. The disclosed methods use liquid pre-
dominantly from eggs or other protein or fat source (i.e.,
bound water) along with a limited amount of free water to
allow the dry ingredients to be mixed, shaped, and molded
as traditional dough. The application also identifies cer-
tain problems with wheat glutens found in traditional flour
and discusses the advantages of gluten-free baking.
Claim 22 is representative of the claims at issue in this
appeal:
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
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IN RE: FULTON 3
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.
J.A. 27–28 (emphases added to disputed claim limitations).
After several exchanges between Mr. Fulton and the
Examiner during seven years of prosecution, the Examiner
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4 IN RE: FULTON
issued a final rejection of claims 22, 25–27, 30–33, 36,
39–43, and 45–50. 1 The Examiner rejected these claims
under 35 U.S.C. § 103 as obvious in view of the combina-
tion of three prior-art references: Woestelandt 2,
Zohoungbogbo , and Malby .
3 4
Woestelandt discloses a gluten-free bakery product
made with 30–70% by weight gluten-free wheat flour and
30–70% by weight eggs. Woestelandt 2. Woestelandt ex-
plains that gluten-free products made by conventional
methods using water and gluten-free flour would crumble
because the water would not sufficiently bind the ingredi-
ents. Id. at 1, 3. Woestelandt addresses this problem by
using egg as a binder, which doubled the volume of the
dough. Id.
Zohoungbogbo discloses a flour comprising at least
50% protein, less than 15% carbohydrates (preferably less
than 5%), and 35–50% plant fibers. Zohoungbogbo, Ab-
stract; see also id. at col. 2 ll. 7–10. Zohoungbogbo teaches
that its low-carbohydrate flour can be used as a substitute
for wheat flour in the preparation of dietetic foods such as
pasta, bread, bread sticks, bakery products, and pastries.
Id. at Abstract, col. 1 ll. 18–21, col. 2 ll. 54–58, col. 3
ll. 44–45.
1 Mr. Fulton asserts on appeal that “independent
claims 22, 32, and 40 rise and fall together.” Appellant’s
Br. 4. Though he addresses dependent claim 45 separately,
he asserts that “the dependent claims (25–27, 30–31, 33,
36, 39, 40–41, 43, and 45–50) rise and fall with the inde-
pendent claims.” Id. at 4–5.
2 EP 0 642 737 A1. All citations to Woestelandt in
this opinion are to the English translation cited by the
Board.
3 U.S. Patent No. 6,322,826.
4 Patent Pub. No. U.S. 2007/0275121 A1.
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IN RE: FULTON 5
Malby discloses a gluten-free bread made from eggs
and gel-forming plant material such as psyllium fiber.
Malby ¶¶ 14, 17. Malby teaches that varying the solid-to-
liquid ratio of a mixture including psyllium affects whether
a bread is “very light” and “highly porous” or “compact” and
“finely-pored.” Id. ¶ 19. Malby also teaches that the use of
psyllium eliminates both the need for “energetic agitation”
of the mixture and the traditional fermentation step, i.e.,
proving or raising, before placing the final mixture in the
oven for baking. Id. ¶¶ 19–20, 25.
The Examiner found that Woestelandt teaches most of
the limitations of claim 22, but that because Woestelandt
“discloses using whole wheat flour, which is known to con-
tain about 11% fiber,” it does not “specifically disclose a low
starch flour that has 30–65% fiber” as required by claim 22.
J.A. 557. The Examiner found that Zohoungbogbo dis-
closes a low-carbohydrate flour “that may be used as a sub-
stitute for wheat flour in preparing dietetic food products
such as bread and other bakery products.” Id. The Exam-
iner further found that a person of ordinary skill in the art
would have substituted Woestelandt’s whole wheat flour
with Zohoungbogbo’s low-carbohydrate flour when prepar-
ing a dietetic baked food product having a low-starch con-
tent. Based on the fiber and water contents of the food
compositions reported in the two references, the Examiner
calculated the fiber-to-water weight ratio of the resulting
bakery product of “modified Woestelandt” to be 1:0.64 to
1:0.91, which falls within the claimed range. J.A. 558.
The Examiner next found that though neither Woeste-
landt nor Zohoungbogbo discloses psyllium fiber, Malby
teaches this claim limitation. Specifically, the Examiner
cited Malby’s disclosure of the “remarkable ability of psyl-
lium fiber to swell and rapidly form mucilage on addition
of water,” whereby the “water content of the mucilage
formed can be highly varied while maintaining the viscous
gel rheology.” Id. (citing Malby ¶ 17). The Examiner con-
cluded that it would have been obvious to use psyllium
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6 IN RE: FULTON
fiber as the plant fiber in modified Woestelandt “to obtain
the benefits of varied water content that is needed in mak-
ing baked products of different textual characteristics, and
to simplify and economize the manufacturing process by
eliminating an energetic agitation step, in baked products
made without proving or fermentation” as expressly taught
by Malby. J.A. 558–59.
The Board affirmed the Examiner’s rejection of
claims 22, 25–27, 30–33, 36, 39–43, and 45–50. Ex parte
Fulton, No. 2018-008840, slip op. at 14 (P.T.A.B. July 26,
2019) (Decision). As to claim 22, the Board concluded that
the record supported the Examiner’s finding of a motiva-
tion to combine Woestelandt and Zohoungbogbo. The
Board also rejected Mr. Fulton’s argument that because
psyllium fiber behaves unpredictably when combined with
water, a skilled artisan would have lacked a reasonable ex-
pectation of success in substituting Malby’s psyllium fiber
in Woestelandt’s process (as modified by Zohoungbogbo).
The Board found that Malby demonstrates that hydrating
psyllium fiber was known and could be controlled to vary
the texture and consistency of the bread, and that in light
of the advantageous properties of psyllium disclosed in
Malby, a skilled artisan would have been motivated to use
psyllium. As to the recited fiber and water content limita-
tions in claim 22, the Board concluded that “Malby’s disclo-
sure demonstrates the water content of a psyllium/water
mixture is a result-effective variable, the optimum ranges
of which would have been discoverable through routine ex-
perimentation.” Id. at 11 (citing In re Applied Materials,
Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012)).
Finally, the Board concluded that the record supported
the Examiner’s rejection of claim 45. Claim 45 depends
from claim 22 and further recites “before baking said
dough, partially wetting the fiber component, but not to the
extent that the fiber component reaches a gel stage.”
J.A. 32. The Board found that Woestelandt’s process of
mixing a gluten-free flour with egg without adding free
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IN RE: FULTON 7
water was “substantially identical to [Mr. Fulton’s] process
of providing water mainly from a protein source (e.g., eggs)
so fibers of a dough are hydrated mainly by bound water.”
Decision, slip op. at 13. Mr. Fulton filed a request for re-
hearing, which the Board denied.
Mr. Fulton appeals. We have jurisdiction pursuant to
28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
We review the Board’s legal determinations de novo,
In re Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and its
fact findings for substantial evidence, In re Gartside,
203 F.3d 1305, 1316 (Fed. Cir. 2000). Substantial evidence
is “such relevant evidence as a reasonable mind might ac-
cept as adequate to support a conclusion.” OSI Pharm.,
LLC v. Apotex Inc., 939 F.3d 1375, 1381 (Fed. Cir. 2019)
(quoting Consol. Edison Co. v. N.L.R.B., 305 U.S. 197, 229
(1938)). Obviousness is a question of law based on under-
lying findings of fact. Id. at 1382 (citing In re Kubin,
561 F.3d 1351, 1355 (Fed. Cir. 2009)). “An obviousness de-
termination requires finding that a person of ordinary skill
in the art would have been motivated to combine or modify
the teachings in the prior art and would have had a reason-
able expectation of success in doing so.” Id. (quoting Re-
gents of Univ. of Cal. v. Broad Inst., Inc., 903 F.3d 1286,
1291 (Fed. Cir. 2018)). “Whether a person of ordinary skill
in the art would have been motivated to modify or combine
teachings in the prior art, and whether he would have had
a reasonable expectation of success, are questions of
fact.” Id. (quoting Regents of Univ. of Cal., 903 F.3d
at 1291)).
Substantial evidence supports 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.
Woestelandt discloses a bread product made from essen-
tially the same ingredients as the claimed invention,
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8 IN RE: FULTON
including egg as a binder and water source, except that it
uses wheat flour instead of a low-carbohydrate, psyllium-
fiber flour. Woestelandt 2. Zohoungbogbo discloses a bak-
ing flour composed of 35–50% plant fibers and advanta-
geously less than 5% carbohydrates, and teaches that its
low-carbohydrate, plant-fiber flour is a desirable substitute
for wheat flour to prepare low-carbohydrate dietetic baked
goods. Zohoungbogbo, Abstract, col. 1 ll. 18–21, col. 2
ll. 7–10, 54–58, col. 3 ll. 44–45. These 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.
Moreover, though neither Woestelandt nor
Zohoungbogbo specifically discloses the use of psyllium as
a plant fiber, Malby discloses a gluten-free bread made
with egg and psyllium fiber. Malby’s teachings regarding
the beneficial properties of psyllium support the Board’s
finding that an ordinarily skilled artisan would have sub-
stituted the plant fiber in Woestelandt (as modified by
Zohoungbogbo) with psyllium plant fiber for the reasons
suggested by Malby. Furthermore, Malby’s teaching that
varying the solid-to-liquid ratio of a mixture including psyl-
lium affects whether a bread is light and porous or compact
and finely pored supports the Board’s finding that hydra-
tion of psyllium is a result-effective variable, and thus that
the limitation “a fiber-to-water weight ratio in a range of
1:0.6 to 1:3” would have been discovered with routine ex-
perimentation. Malby ¶ 19; see also Applied Materials,
692 F.3d at 1295 (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to
discover the optimum or workable ranges by routine exper-
imentation.” (quoting In re Aller, 220 F.2d 454, 456 (CCPA
1955))); In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
(“[D]iscovery of an optimum value of a result effective var-
iable in a known process is ordinarily within the skill of the
art.” (citations omitted)). Thus, the Board did not err in
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IN RE: FULTON 9
concluding that it would have been obvious to optimize
compositions comprising psyllium fiber to obtain a baked
food product with a desired texture and consistency as
claimed.
On appeal, Mr. Fulton challenges several of the Board’s
factual findings. For instance, Mr. Fulton contends that
Zohoungbogbo does not teach or suggest a gluten-free flour
and, thus, a skilled artisan would not have used
Zohoungbogbo’s fiber-based flour as a substitute for
Woestelandt’s gluten-free wheat flour. In particular,
Mr. Fulton explains that each of Zohoungbogbo’s examples
are of a flour composition containing wheat gluten or wheat
germ. He also argues that while Zohoungbogbo “mentions
a wide variety of potential flour ingredients, it does not de-
scribe or suggest the desirability of making any gluten-free
flour with any of these ingredients.” Appellant’s Br. 24 (ci-
tation omitted).
Contrary to Mr. Fulton’s argument, Zohoungbogbo dis-
closes the use of rice germ as one source of protein other
than wheat gluten. Zohoungbogbo col. 2 ll. 35–40. The
Board agreed with the Examiner that Zohoungbogbo dis-
closes protein sources other than gluten, including rice,
and Mr. Fulton does not dispute that rice flour is gluten-
free. Moreover, his argument regarding the gluten content
of Zohoungbogbo’s flour also misses the mark, as the point
of the Examiner’s combination was to substitute
Zohoungbogbo’s low-carbohydrate, plant-fiber-based flour
in place of Woestelandt’s wheat flour. Although
Zohoungbogbo’s specific working examples may not have
used gluten-free flour, the evidence supports the Board’s
finding that Zohoungbogbo’s teachings as a whole would
have motivated skilled artisans to make this substitution.
Mr. Fulton also contends that Woestelandt and Malby
teach “incompatible” baking techniques, and that a person
of ordinary skill would not have substituted Malby’s psyl-
lium for the plant fiber in Woestelandt (as modified by
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10 IN RE: FULTON
Zohoungbogbo). Appellant’s Br. 32. In his view, there is
no evidence that the beneficial properties of psyllium dis-
closed in Malby, which used large quantities of free water,
could be achieved using the egg-bound water technique of
Woestelandt. Mr. Fulton further contends that Malby “de-
nies that the[] processing efficiencies [of using psyllium]
could be achieved using the egg-only procedure taught in
Woestelandt.” Id. at 31–32 (citing Malby ¶ 25).
We disagree. The Board found that Mr. Fulton had not
cited “any evidence or persuasive technical reasoning
demonstrating that substituting Malby’s psyllium fiber for
the plant fiber in Zohoungbogbo’s flour would alter the fi-
ber-to-water ratio the Examiner ha[d] determined.” Deci-
sion, slip op. at 11. On appeal, Mr. Fulton likewise fails to
cite anything in the record that undermines the Board’s
factual findings that the benefits taught by Malby would
apply in the asserted combination. As the Examiner and
the Board recognized, Malby teaches that egg can be used
as a primary source of water in a psyllium-fiber mixture.
Although Malby discloses examples using varying amounts
of free water, it does not require the use of free water to
obtain psyllium’s benefits. Malby ¶¶ 27–35. Moreover, in
citing Woestelandt, Malby merely explains that agitation
may be required for certain mixtures containing egg; it
does not disparage the use of egg in a psyllium-fiber mix-
ture. See id. ¶ 25.
Lastly, substantial evidence supports the Board’s find-
ings as to claim 45. Mr. Fulton argues that claim 45 would
not have been obvious in view of Woestelandt because
Woestelandt does not mention any “gel stage.” The Board
found, however, that Woestelandt’s use of bound water
from egg instead of free water allows its flour fibers to be
hydrated in a controlled fashion, thus satisfying the limi-
tation of partially wetting the fibers without those fibers
reaching a gel stage. Though Mr. Fulton contends that the
Board erred in relying on the teachings in Mr. Fulton’s
’280 application to support its findings, the Board was
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IN RE: FULTON 11
merely explaining that Woestelandt’s process and the
claimed process were substantially identical. The Board
did not rely on hindsight in its finding.
CONCLUSION
We have considered Mr. Fulton’s remaining arguments
but find them unpersuasive. Accordingly, the decision of
the Board is affirmed.
AFFIRMED
COSTS
No costs.