Ex Parte ANDO et alDownload PDFPatent Trials and Appeals BoardMay 14, 201914907884 - (D) (P.T.A.B. May. 14, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/907,884 01/27/2016 106306 7590 05/16/2019 DIEDERIKS &WHITELAW, PLC 13885 Hedgewood Dr., Suite 317 Woodbridge, VA 22193-7932 FIRST NAMED INVENTOR KaoriANDO 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 8014US01 5834 EXAMINER TARAZANO, DONALD LAWRENCE ART UNIT PAPER NUMBER 1791 NOTIFICATION DATE DELIVERY MODE 05/16/2019 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): mail@dwpatentlaw.com gmi.mail@dwpatentlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KAORI ANDO, KANAE TSUKAMOTO, SHOKO KOIZUMI, MASARU HIRAMATSU, KAZUHIKO SEKINE, MASASHI SAGA WA, AKIRA SHINOZAKI, JUN ARATANI, and HAJIME MATSUDA Appeal2018-007267 Application 14/907 ,884 Technology Center 1700 Before JEFFREY T. SMITH, JEFFREY B. ROBERTSON, and BRIAND. RANGE, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL 1 STATEMENT OF THE CASE Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 5-8, 13, 15, and 17-26. (Appeal Br. 4.) We have jurisdiction pursuant to 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed January 27, 2016 ("Spec."); Final Office Action mailed May 16, 2017 ("Final Act."); Appeal Brief filed November 16, 2017 ("Appeal Br."); Examiner's Answer mailed January 5, 2018 ("Ans."); and Reply Brief filed February 28, 2018 ("Reply Br."). 2 Appellants identify General Mills, Inc., as the real party in interest. (Appeal Br. 4.) Appeal2018-007267 Application 14/907 ,884 THE INVENTION Appellants state that the invention relates to a surface patterned frozen dessert as well as manufacturing methods and apparatus for forming a surface patterned frozen dessert. (Spec. ,r 1.) Claim 5 is representative and reproduced below from the Claims Appendix to the Appeal Brief: 5. A surface patterned frozen dessert manufacturing method compnsmg: a step for filling ice cream material into a cup and forming an ice cream layer; a step for flattening a top surface of the ice cream layer; a step for forming a first sauce layer on a flattened ice cream layer; a step for forming, at a top layer portion of the first sauce layer, at least one second sauce layer of a color different from the first sauce layer, in a circle; and a step for moving an inscribing member, supported so that a free end thereof can be displaced relative to a support position in a circumferential direction of the circle, along the circle. (Appeal Br. 22, Claims Appendix.) REJECTIONS The Examiner rejected claims 5-8, 13, 17, 18, and 20-26 under 35 U.S.C. § 103 as obvious over Jones (US 2005/0106301 Al; published May 19, 2005) in view of David Bishop ("Ice Cream Sandwich Cake," (uploaded October 2009) http://www.youtube.com/watch?v=t-DlwnZdT4s (hereinafter "Bishop") and Johan (Cooking with Johan-Plate Painting, Associated Foods Executive Chief, (uploaded November 2008) http://www.youtube.com/watch?v=5b W5HiGota Y) (hereinafter "Johan") 2 Appeal2018-007267 Application 14/907 ,884 and Yamato et al (JP 2002142682 A; published May 21, 2002, hereinafter "Yamato"). The Examiner rejected claims 15 and 19 under 35 U.S.C. § 103 as obvious over Jones, Johan, Yamato, further in view of Atsuji et al. (JPH 1025774 A; published August 18, 1998, hereinafter "Atsuji"). Appellants present arguments for a number of the claims on appeal. (See Appeal Br. 11-12 and 15-20.) We select claims 5, 7, 15, 20, and 21 as representative for disposition of this appeal. 37 C.F.R. § 4I.37(c)(l)(iv). Rejection 1 Claim 5 ISSUE The Examiner found that Jones discloses a method of making a frozen dessert including filling ice cream into a container and adding flavorings including sauces to the ice cream. (Ans. 2.) The Examiner found that Bishop discloses an ice cream cake where the surface is pushed down by spreading, a sauce is applied, and then the sauce is patterned with an inscribing member. (Id.) The Examiner found that Johan discloses ice cream sauces can be used for food design, and formed into a pattern circle, and that sauces of different colors may be used. (Id.) The Examiner found that Yamato discloses that use of sauce on flattened ice cream can provide a product with homemade feel, where sauces of different colors are used, and a pin is moved in a circular manner around the circumference of the surface so that the dripped sauce is deformed into a heart shape, and the cup is sealed. (Id. at 2-3.) The Examiner determined, inter alia, that it would have been obvious to flatten the surface of the ice cream in Jones "for common sense reasons 3 Appeal2018-007267 Application 14/907 ,884 such as so that a level surface was available for design of sauce layers to create a homemade feel in the product as shown by Yamato (paragraphs 0001---0004)." (Id. at 3, 4.) The Examiner determined that it would have been obvious to have used common means of pressing known in food production, such as a spatula as disclosed in Bishop or a cylinder or presser disclosed in Yamato. (J d.) Appellants argue that the step of flattening the top surface of the ice cream layer would not have been obvious because: smoothing the ice cream in Jones with a spatula or cutting the ice cream with a wire does not correspond to the flattening step recited in claim 5; the Examiner improperly took official notice that hand or cylinder pushers are known in the art; and because the Examiner found that Jones discloses a completely filled container, which means none of the other steps recited in claim 5 may be performed. (Appeal Br. 8-9, and 12-13.) Appellants argue also that Jones does not disclose toppings as indicated by the Examiner, but rather discloses filler ingredients, and that because Jones discloses completely filling a container, any sauces added to the top surface of the ice cream would not be contained within the container. (Appeal Br. 9-10, and 14--15.) Accordingly, the dispositive issue is: Have Appellants identified a reversible error in the Examiner's position that it would have been obvious to have flattened the surface of the ice cream layer disclosed in Jones and form sauce layers thereon in view of Yamato and Bishop? 4 Appeal2018-007267 Application 14/907 ,884 DISCUSSION We are not persuaded by Appellants' argument that the combination of prior art relied on by the Examiner fails to disclose a flattening step as recited in claim 5. Initially, we observe that claim 5 does not recite any particular flattening mechanism, such that Appellants' argument referencing the particular flattening mechanisms shown in Figures 1-3 of the instant Specification (see Appeal Br. 8) is not persuasive. In addition, Appellants' argument that the Examiner has taken official notice of hand or cylinder pushers is not persuasive, because as discussed above, the Examiner expressly cited Bishop and Yamato for such devices. (Ans. 8-9.) For similar reasons, we are not persuaded by Appellants' argument that the Examiner improperly took official notice for the pushing member recited in claim 22 without citing to any prior art. (Appeal Br. 18.) Appellant's arguments in the Reply Brief that there would be no reason to use the device of Bishop in a commercial environment or that there would be no reason to press down on a cryogenically cooled and hardened ice cream that has already been loaded into a completely full container as disclosed in Jones using the presser disclosed in Yamato (Reply Br. 2) are also not persuasive, because Appellant fails to address the Examiner's rationale that one of ordinary skill in the art would have provides a level surface for design of sauce layers to create a homemade feel as disclosed in Yamato. (Ans. 3; see also Yamato ,r 4.) In this regard, we are not persuaded by Appellants' arguments, that the flattening step would not have been obvious because the "completely filled" container as disclosed in Jones would result in ice cream that is "flush with an upper rim of the container" and would either not allow the presence 5 Appeal2018-007267 Application 14/907 ,884 of sauces that on the surface of the ice cream where the ice cream is still contained or would result in the surface designs being distorted. ( Appeal Br. 10.) As explained by the Examiner, there is nothing in the claims or the reference that requires the filling to be contained below the upper ridge of the cup, and that even if the level of the sauce layer is over the level of ice cream in cups, the sauce layers may be contained if needed with dome- shaped lids. (Ans. 10.) We are also not persuaded by Appellants' argument that Jones refers to sauces as flavorings rather than "toppings" as indicated by the Examiner. As the Examiner points out, Appellants' argument does not consider the rejection as a whole, which relies on Bishop and Yamato for including sauces on flattened surfaces of frozen confections, which is consistent with Jones' s disclosure of adding flavoring to ice cream at a variety of points during the production process. (Ans. 8; see also Yamato, ,r,r 1-5; and generally Bishop.) As a result, we affirm the Examiner's rejection of claim 5, as well as claims 6, 13,3 22, and 23-26, dependent therefrom and not argued separately. (See Appeal Br. 11-12.) 3 Appellants' argument that the Examiner uses impermissible hindsight to combine the references in order to reject claim 13 (Appeal Br. 12), is not persuasive as Appellants provide no detailed argument and do not address the Examiner's reasons for combining the prior art as discussed above. 6 Appeal2018-007267 Application 14/907 ,884 Claim 7 Claim 7 depends from claim 5 and further recites "having a step for cooling and hardening the surface of the flattened ice cream layer prior to the step for forming a first sauce layer." The Examiner determined that it would have been obvious for the sauce flavoring to be added after hardening, because Jones discloses hardening with cryogen and that flavorings may be added at various points after cryogenic pretreatment as not all flavorings are suitable for treatment with cryogen. (Ans. 4, 8.) The Examiner determined also that it would have been obvious to have flattened the surface before the product was hardened so that the ice cream could be more easily manipulated, pushed and shaped. (Ans. 4.) Appellants contend that Jones discloses pre-hardening the ice cream before it is added to the container, and does not disclose adding ingredients after the ice cream is containerized, cooled, and hardened. (Appeal Br. 11, (citing Jones Fig. 2 (hardener 144)); see also Appeal Br. 14--15.) Appellants set forth similar arguments for claims 17 and 18. (Appeal Br. 15-16.) We agree with the Examiner that Jones specifically discloses that flavorings that are not suited to cryogenic liquids and gases may be added at a variety of points throughout the process (Jones, ,r 31). Appellants' argument does not take into account the rejection as a whole and the specific rationale set forth by the Examiner, which is a modification of the process of Jones to provide a flat surface for decoration. As such, Appellants' argument that the pre-hardening step in Jones does not allow for the claimed step in claim 7 is not persuasive. 7 Appeal2018-007267 Application 14/907 ,884 Accordingly, we affirm the Examiner's rejection of claims 7 and 17, as well as the rejection of claim 8 and 18, dependent therefrom and not separately argued. (See Appeal Br. 11, 16.) Claim 20 Claim 20 depends from claim 5 and recites "wherein a bottom end portion of the inscribing member travels within the first sauce layer, but does not remove the ice cream layer." The Examiner determined that it would have been obvious in view of Yamato to have the inscribing member of Yamato not remove the ice cream when designing the sauce layer, because it would be removing a portion of the product which could be sold. (Ans. 7.) Appellants argue that Yamato discloses piercing the surface, which causes surface defects, and does not disclose not to remove any of the ice cream layer as recited in claim 20. (Appeal Br. 17.) We agree with the Examiner that Yamato discloses deforming the sauce layer and not to remove the ice cream. (Ans. 11.) Indeed, Yamato expressly discloses that "[ t ]he tip part of a thin linear material such as a pin attached to the bottom end part of the sauce dripping apparatus 9 is thrust into the upper layer part of the ice cream and moved so that the dripped sauce is deformed." (Yamato, Abstract) (emphasis added). This understanding is consistent with paragraph 7 of Yamato, which discloses that "serious defects such as scratches on the surface" are to be avoided. Appellants' argument that Yamato discloses piercing the ice cream (Reply Br. 4 ( citing Yamato, ,r 10) ), is at most, an alternative embodiment from that which is relied on by the Examiner. 8 Appeal2018-007267 Application 14/907 ,884 Claim 21 Claim 21 depends from claim 5, and recites "comprising a step for capping the cup." The Examiner found that Jones discloses closing the container after filling it with ice cream and that additionally Yamato discloses that after the surface of the ice cream has been patterned, the cup containing the ice cream is sealed. (Ans. 2, 5, and 11.) Appellants argue that the use of a flat lid in Yamato would engage sauces and destroy the surface design of the ice cream layer. (Appeal Br. 17.) We agree with the Examiner that Jones discloses placing a lid on an ice cream product (Jones, ,r 35.) Appellants' argument does not take into account the rejection as whole, nor does it take into account any modifications that the ordinary skilled artisan would make to preserve the surface design of the ice cream layer in the packaging process. Rejection 2 Claim 15 ISSUE Claim 15 depends from claim 13, and further recites "wherein moving the inscribing member in the circumferential direction through the second sauce layer comprises inserting the inscribing member into the first and second sauce layers and rotating the cup." The Examiner additionally relied on Atsuji in combination with the art cited above in determining that this limitation would have been obvious. (Ans. 7.) 9 Appeal2018-007267 Application 14/907 ,884 Appellants argue that Atsuji is non-analogous art, because it is directed to patterned chocolate, which is not from the same field of endeavor of surface patterned desserts, and Atsuji is not reasonably pertinent to the particular problem with which the inventor was concerned because Atsuji relates to patterns within chocolate, and not surface decoration of frozen desserts. (Appeal Br. 19--20.) Thus, the issue with respect to this rejection is: did the Examiner err in finding that Atsuji is analogous art? DISCUSSION The Examiner determined that Atsuji is both in the same field of endeavor as Appellants as well as being reasonably pertinent to the particular problem, namely, decorating the surface of confections. (Ans. 12.) In particular, the Examiner's position is that both frozen confections and non-frozen confections possess a deformable surface for decorating such that the distinction of frozen versus non-frozen is not sufficient to distinguish Atsuji from the field of Appellants' endeavor or the problem of decorating confections. (Id.) We agree with the Examiner. With respect to analogous art: Two criteria are relevant in determining whether prior art is analogous: "( 1) whether the art is from the same field of endeavor, regardless of the problem addressed[;] and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1351 (Fed. Cir. 2010) (quoting In re Clay, 966 F.2d 656, 658-59 (Fed. Cir. 1992)). Whether a reference in the prior art is "analogous" is a fact question. In re Clay, 966 F.2d at 658. 10 Appeal2018-007267 Application 14/907 ,884 Wyers v. Master Lock Co., 616 F.3d 1231, 1238 (Fed. Cir. 2010). ("The Supreme Court's decision in KSR International Co. v. Teleflex, Inc., 550 U.S. 398 (2007), directs us to construe the scope of analogous art broadly, stating that 'familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle.' Id. at 402 ( emphasis added).") Id. In the instant case, as the Examiner points out, both Atsuji and the instant Application relate to surface decoration of confections. (Atsui, Abstract; see also Spec. ,r 1.) Although Appellants argue that those of ordinary skill in the food art would know that techniques and technical knowledge required are different for making chocolate and making frozen dessert (Appeal Br. 20), Appellants have not provided sufficient support for this position. In this regard, simply by classifying chocolate and frozen sweets in a different classification area necessarily means that chocolate and frozen sweets are from a different field of endeavor. See In re Ellis, 4 7 6 F.2d 1370, 1372 (CCPA 1973) ("While we find the diverse Patent Office classification of the references to be some evidence of 'non-analogy,' we consider the similarities and differences in structure and function of the inventions disclosed in the references to carry far greater weight."); In re Mlot-Fijalkowski. 676 F.2d 666, 670 N5 (CCPA 1982) ("[C]lassification evidence, even when properly of record, is of limited value."). Even if Atsuji and the instant application could be considered to be from different fields of endeavor, we agree with the Examiner that Atsuji is reasonably pertinent to the particular problem with which Appellants are involved. That is, both Atsuji and the instant application involve the 11 Appeal2018-007267 Application 14/907 ,884 penetration of confections in order to create a pattern. We fail to see how the patterns created in the chocolate disclosed in Atsuji amounts to a sufficient distinction from patterns created in the surface of the ice cream layer to render Atsuji not reasonably pertinent to the problem with which the inventor is concerned as argued by Appellants. Therefore, we affirm the Examiner's decision to reject claim 15 and claim 19 dependent therefrom and not argued separately. (See Appeal Br. 20.) DECISION We affirm the Examiner's decision rejecting claims 5-8, 13, 15, and 17-26. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 12 Copy with citationCopy as parenthetical citation