At the risk of stating the obvious, cheese matters to Wisconsin. So too does cheese IP. The Wisconsin Alumni Research Foundation fought all the way through appeal to protect a new way to reduce cheese browning when the examiner maintained an obvious rejection using one of the oldest examiner tricks in the book.

The application is 13/800,068 and the inventor is Scott Ranking, chair of the Food Science department at the University of Wisconsin (bio here), with ties to Oregon where he obtained a Ph.D. (cheese is also very important to us here in Oregon).

Claim 1 on appeal is reproduced below.

1. A method to inhibit browning in aged cheeses, the method comprising adding to a cheese during its manufacture an amount of a reducing agent, wherein the amount is effective to inhibit methylglyoxal-mediated browning of the cheese, then aging the cheese, wherein the cheese is selected from the group consisting of Asiago, Grana Padano, Parmesan, and Romano.

Dependent claims then specified a particular range that would be effective as to browning (e.g., about 1 to 100 μg per gram added to the cheese).

The specification explains that the claimed process will work with any type of cheese, but is particularly beneficial for use with the relatively harder, low-moisture cheeses typically used for grating or shredding (e.g., Asiago, Grana Padano, Parmigiano- Reggiano (i.e., Parmesan), and Pecorino Romano cheeses).

The Examiner rejected the claims as obvious in view of a primary reference (Reddy) that added a sulfur compound, such as L-glutathione, to Parmesan cheese in an amount of from about 0.01% to 1.00% by weight of the composition, which allegedly overlaps the range disclosed in the specification and claimed in the dependent claims. In other words, while Reddy did not mention browning, but instead was focused on taste, the Examiner relied on the notion that the prior art would inherently inhibit browning because it used the same ranges of the same compounds that the inventor states are “effective.”

For the examiner’s rejection to hold up, the examiner needed to show that the added sulfur compound range in the prior art at least overlapped the percent by weight range in the application. However, as is often the case with rejections relying on overlapping ranges, the issue is not so much the numbers by themselves, but whether the ranges disclosed are really for the same composition. For example, if the weight percentage in the prior art uses a different composition in the denominator than was is disclosed by the applicant, then the examiner cannot easily show overlap. And that was exactly the issue here.

The examiner relied on the prior art disclosure of adding L-glutathione in an amount of from about 0.01% to 1.00% by weight, which allegedly showed the claimed range of about 1 to 100 μg per gram. And at first glance, the prior art range looks to overlap the disclosed range. But looking to the actual disclosure of the prior art (Reddy) in more detail, the disclosure was actually of the sulfur-containing substrates, such as L-glutathione, being used in an amount of about 0.01% to about 1% to prepare the flavor component of the cheese, not the cheese itself. The flavor component, once formed according to Reddy’s range, was then added to the actual cheese. As noted above, Reddy was concerned with flavoring, not browning, and thus was focused on the sulfury-cheddar flavor component that was then added to the milk substrate used to produce the cheese.

Claim 1 requirs that a reducing agent is added to a cheese during its manufacture in an amount “effective to inhibit methylglyoxal-mediated browning of the cheese.” Thus, in reality, the examiner’s rejection is built on a false assumption. Because the ranges do not actually overlap (because they are not defined in the same way), there is insufficient evidence to find that Reddy effectively addresses browning:

On this record, the Examiner has failed to show, in the first instance, that Reddy’s flavor component, when added to a milk substrate to produce cheese, would have been expected to comprise a sufficient amount of L-glutathione to inhibit browning of the cheese as recited in claim 1

So, when an examiner cites disclosure of a range that might initially seem to overlap a claimed range, make sure there really is disclosure of the same parameter as claimed/disclosed. Even a small distinction can carry the day.