Domingues, David J.

Patent Trials and Appeals Board

Aug 22, 2019

14511952 - (R) (P.T.A.B. Aug. 22, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/511,952 10/10/2014 David J. Domingues 7932US01 3417
106306 7590 08/22/2019
DIEDERIKS &WHITELAW, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
EXAMINER
TURNER, FELICIA C
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
08/22/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
gmi.mail@dwpatentlaw.com
mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DAVID J. DOMINGUES
____________________

Appeal 2018-005437
Application 14/511,952
Technology Center 1700
____________________

Before N. WHITNEY WILSON, DEBRA L. DENNETT, and LILAN REN,
Administrative Patent Judges.

REN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appellant1 requests rehearing of our June 19, 2019 Decision (“Op.”).
See Request for Rehearing filed July 24, 2019 (“Request”). In the Decision,
we affirmed the Examiner’s decision of rejecting claims 1–7, 9, 10, 12, and
14–20 based on the references listed below.2
Rubio
Aliberto et al.
Wu
US 3,653,915
US 4,504,510
US 5,882,712
Apr. 4, 1972
Mar. 12, 1985
Mar. 16, 1999

1 The real party in interest is identified as “General Mills Inc.” Appeal Brief
of January 22, 2018 (“Br.”), 4.
2 In this Rehearing Decision, we also refer to Final Office Action of July 24,
2017 (“Final Act.”), the Examiner’s Answer of March 9, 2018 (“Ans.”) and
the Reply Brief of April 26, 2018 (“Reply Br.”).
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Narayanaswamy et al.
Hahn
Stanton
O’Connor et al.
Koike et al.
US 6,165,524
US 6,217,929 B1
US 2007/0042099 A1
US 2007/0065554 A1
US 7,468,395 B2
Dec. 26, 2000
Apr. 17, 2001
Feb. 22, 2007
Mar. 22, 2007
Dec. 23, 2008
Li et al. US 2011/0129575 A1 June 2, 2011

In a request for rehearing, an Appellant is charged with stating the
points believed to have been misapprehended or overlooked by the Board.
37 C.F.R. § 41.52. We review the points of the Decision contested by
Appellant and determine whether we erred in fact finding or applying the
law, and further determine whether any such error changes the outcome of
the Decision when viewing all the evidence and arguments anew in light of
the preponderance of the evidence standard. See In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992) (“patentability is determined on the totality of
the record, by a preponderance of evidence with due consideration to
persuasiveness of argument”).
In the Request, Appellant provides that after the Final Rejection of
July 24, 2017, the Examiner entered an amendment to claim 1 by including
in claim 1 the limitation of claim 8. Request 3 (citing an Advisory Action of
November 17, 2017). According the Appellant, “[a]s a result, the rejections
of claims 1, 2, 5 and 14 based on Hahn and Narayanaswamy were
withdrawn, and the rejection of claim 1 based on Aliberto, Stanton and
Narayanaswamy was now based on Li as well.” Id.
As we noted in our Decision, the Examiner’s Answer issued March 9,
2018 – postdating the Final Rejection as well as the advisory actions3 in this

3 Advisory Action of October 10, 2017 and Advisory Action of November
17, 2017.
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case, provides the “following grounds of rejection [which] are applicable to
the appealed claims” (Ans. 3):
• Claims 1, 2, 4, 5, 7, 12, and 15 are rejected under 35 U.S.C. § 103 as
being unpatentable over Aliberto in view of Stanton and
Narayanaswamy. Ans. 3; see also Final Act. 2.
• Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view
of Rubio. Ans. 7; see also Final Act. 6.
• Claim 6 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view
of Wu. Ans. 7; see also Final Act. 7.
• Claim 9 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view
of Kioke. Ans. 9; see also Final Act. 8.
• Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over
Aliberto in view of Stanton and Narayanaswamy and in further view
of O’Connor. Ans. 9; see also Final Act. 9.
• Claims 1, 2, 5, 14, and 16–20 are rejected under 35 U.S.C. § 103 as
being unpatentable over Hahn in view of Narayanaswamy. Ans. 10;
see also Final Act. 9.
We note, however, that in the Advisory Action of November, 2017,
the Examiner states that the “amendments if entered would overcome the
rejections of the claims under Hahn” (Advisory Action of November, 2017,
2) while the accompanying PTOL-303 form box 7(b) is checked indicating
that “the proposed amendment(s) . . . will be entered . . . .” The Examiner
additionally states that “although the limitation of claim 8 has been
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incorporated into claim 1, the Examiner maintains the rejection in view of Li
since Li discloses pancake batter as having a yield point within the claimed
range.” Advisory Action of November, 2017, 3.
Given these ambiguities in the record before us – particularly between
the grounds of rejection stated in the Examiner’s Answer and in the
Advisory Action of November, 2017, we modify our Decision in part by
removing the summary affirmance of the rejection of claims 1, 2, 5, and 14
over Hahn and Narayanaswamy (as indicated in the Final Rejection and the
Examiner’s Answer). See Op. 4–5. We, however, decline to provide the
declaration sought by Appellant that “the rejection of claims 1, 2, 5 and 14
over Hahn and Narayanaswamy was withdrawn by the Examiner.” Request
5. Our Decision is modified only to remove the summary affirmance of the
rejection of claims 1, 2, 5, and 14 over Hahn and Narayanaswamy.
The Examiner cites Li for the teaching of claim 8 as presented in the
Final Action of July 24, 2017 (Final Act. 8) and consequently claim 1 in the
event that claim 8 has been incorporated in claim 1 by amendment. Compare
Advisory Action of November, 2017, 3, with Ans. 8–9 (rejecting claim 8
based on Aliberto, Stanton, Narayanaswamy, and Li). The substantive issues
on appeal do not involve the teachings of Li. See Br. 7–16; see also Request
2–8 (requesting “a declaration that the rejection of claims 1, 2, 5 and 14 over
Hahn and Narayanaswamy was withdrawn by the Examiner” and arguing for
the patentability of the claims solely based on Aliberto). In light of the
ambiguities in the record noted in the preceding paragraph, we modify the
Decision to emphasize that (other than the rejection of claims 1, 2, 5 and 14
over Hahn and Narayanaswamy which we decline to reach), to the extent our
analysis and affirmance in the Decision and the Rehearing Decision are
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solely based on the rejections as stated in the Final Action of July 24, 2017
for the claims presented at the time of the Final Action of July 24, 2017, the
substance of the Decision applies to the rejections in the event that the
claims have been amended to include claim 8 for which the Examiner relies
on Li. Compare Final Act. 2–14, with Advisory Action of November 17,
2017; see also Ans. 3–14. We therefore decline Appellant’s request to
remand the case. Request 5.
With regard to Aliberto’s teachings, Appellant repeats the argument
that the limitation “the emulsion maintains the form of an emulsion after a
refrigerated storage period of four weeks,” as recited in claim 1, is not taught
or suggested by Aliberto’s pancake batter which “can be held in a
refrigerator for more than 10 days without separation.” Compare Request 6,
with Br. 8; Aliberto 1:48–54.
Appellant argues that we overlooked or misapprehended the argument
that “if the batter of Aliberto was capable of still remaining as an emulsion
after being stored for fifty days, for example, Aliberto would have stated this
explicitly.” Request 6. As we did in the Decision, we decline Appellant’s
invitation to go beyond the text of Aliberto which provides that a pancake
batter “can be held in a refrigerator for more than 10 days without
separation,” encompassing the recited date range of “four weeks”. See
Aliberto 1:48–54. Appellant’s argument that Aliberto’s teaching does not
teach or suggest an infinite number of days is not based on the claim
language and therefore cannot impart patentability. Request 6.
As we stated in the Decision, Appellant’s arguments regarding
Aliberto are also unpersuasive because they are neither based on the claim
limitations nor supported by factual evidence. See Johnston v. IVAC Corp.,
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885 F.2d 1574, 1581 (Fed. Cir. 1989) (“Attorneys’ argument is no substitute
for evidence.”). For example, Appellant asserts that “one would expect the
batter of Aliberto to have a reduced storage life as compared with the present
invention” because “the batter of Aliberto has a relatively higher water
content than the batter of the present invention. Request 6–7. Claim 1,
however, is an open-ended claim without reciting a particular level of water
content. Appellant’s argument, not based on the claim language, does not
show that we overlooked or misapprended issues in the Decision. As we
noted in the Decision, the record also lacks factual evidence in support of
such a conclusion from the skilled artisan.
We further note that the Appellant’s argument is self-contradictory
and therefore unpersausive. On the one hand, Appellant states that “one
would expect the batter of Aliberto to have a reduced storage life as
compared with the present invention” because “[a]s discussed in the
Applicant’s specification, a lower water content results in a lower water
activity, thereby extending storage life.” Id. On the other hand, Appellant
argues that “[w]hether or not the batter of Aliberto can remain as an
emulsion when stored in a refrigerator for more than four weeks . . . depends
only on the features of Aliberto, which are disclosed in Aliberto’s
specification.” Id. at 8.
As in our Decision, we again decline to consider arguments raised for
the first time in Appellant’s Reply Brief which are repeated in the Request.
Compare Reply Br. 3 (arguing that “the batter of Aliberto is kept in a freezer
for long-term storage and in a refrigerator only for short-term storage”), with
Br. 8–9 (arguing instead that “the batter of Aliberto is used regularly in a
commercial setting and does not need to last in a refrigerator for 4 weeks as
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required by claim 1); Request 7 (“When long-term storage is desired, the
batter of Aliberto is frozen.”); Ex parte Nakashima, 93 USPQ2d 1834 (BPAI
2010) (informative) (explaining that arguments and evidence not timely
presented in the principal Brief will not be considered when filed in a Reply
Brief, absent a showing of good cause explaining why the argument could
not have been presented in the Principal Brief); Ex parte Borden, 93
USPQ2d 1473, 1477 (BPAI 2010) (informative) (“Properly interpreted, the
Rules do not require the Board to take up a belated argument that has not
been addressed by the Examiner, absent a showing of good cause.”).
CONCLUSION
For the foregoing reasons, we grant-in-part, and deny-in-part
Appellant’s Request for Rehearing. More specifically, we decline to reach
and remove from the Decision the summary affirmance of the rejection of
claims 1, 2, 5, and 14 over Hahn and Narayanaswamy as presented in the
Final Action of July 24, 2017. We affirm the Examiner’s follow rejections of
the claims as presented in the Final Action of July 24, 2017:
• Claims 1, 2, 4, 5, 7, 12, and 15 under 35 U.S.C. § 103 as being
unpatentable over Aliberto in view of Stanton and Narayanaswamy.
• Claim 3 under 35 U.S.C. § 103 as being unpatentable over Aliberto in
view of Stanton and Narayanaswamy and in further view of Rubio.
• Claim 6 under 35 U.S.C. § 103 as being unpatentable over Aliberto in
view of Stanton and Narayanaswamy and in further view of Wu.
• Claim 9 under 35 U.S.C. § 103 as being unpatentable over Aliberto in
view of Stanton and Narayanaswamy and in further view of Kioke.
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• Claim 10 under 35 U.S.C. § 103 as being unpatentable over Aliberto
in view of Stanton and Narayanaswamy and in further view of
O’Connor.
• Claims 16–20 under 35 U.S.C. § 103 as being unpatentable over Hahn
in view of Narayanaswamy.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

GRANTED-IN-PART; DENIED-IN-PART