Ex Parte Appleby

Board of Patent Appeals and Interferences

Feb 7, 2008

10407738 (B.P.A.I. Feb. 7, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte DOUGLAS EDWARD APPLEBY
____________________

Appeal 2008-0957
Application 10/407,738
Technology Center 1700
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Decided: 7 February 2008
____________________

Before FRED E. MCKELVEY, Senior Administrative Patent Judge, and
SALLY G. LANE, and JAMES T. MOORE, Administrative Patent Judges.

MOORE, Administrative Patent Judge.

DECISION ON APPEAL
1
STATEMENT OF CASE 2
The Appellants appeal under 35 U.S.C. § 134 (2002) from a final 3
rejection of claims 1-11 and 23-31.1 We have jurisdiction under 35 U.S.C. 4
§ 6(b) (2002). 5

1 Claims 12-22 stand withdrawn pursuant to 37 CFR 1.142(b) as being
drawn to a nonelected invention.

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The Appellant’s claims are directed to caramel coated food casings 1
and methods of manufacturing the casings. 2
Claims 1, 11, 23, 27 and 31 are the independent claims in the 3
application. The Appellant does not argue any claims separately in the 4
Appeal Brief.2 Therefore, we select independent claim 1 to decide this 5
appeal. 37 C.F.R. § 41.37(c)(1)(vii)(2006). 6
Claim 1 reads as follows: 7
1. A coated food casing comprising a substantially uniform 8
caramel coating on a surface of a food casing, wherein said 9
caramel coating comprises at least about 40% by weight of 10
solids having a molecular weight greater than about 10,000. 11
12
THE REJECTIONS 13
The Examiner relies upon the following as evidence in support of the 14
rejections: 15
Chiu US 4,219,574 Aug. 26, 1980 16
Oxley US 5,084,283 Jan. 28, 1992 17
Stall US 6,086,929 Jul. 11, 2000 18
19
The following rejections are before us for review: 20

2 We note that the Appellant raises an argument in the Reply Brief that
relates to the Examiner’s rejection of independent claims 23, 27 and 31 with
regard to the “fractionated caramel composition” limitation, asserting that it
would add expense. See Reply Br. 2; see also claims 23, 27 and 31. We
note that this belated attorney argument is also unpersuasive. It has long
been known in the art to fractionate caramel by ultrafiltration to remove the
fraction with molecular weight up to 10,000 (US 4,330,561) and improve
coloring power by removing lower molecular weight constituents (US
4,325,743), despite its added cost.

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1. Claims 1-5, 7, 11, 23, 25, 27, 29, and 31 stand rejected under 35 U.S.C. § 1
103(a) (2004) over the combination of Chiu and Oxley. 2
2. Claims 6, 8-10, 24, 26, 28, and 30 stand rejected under 35 U.S.C. 3
§ 103(a) (2004) over the combination of Chiu, Oxley and Stall. 4
We AFFIRM. 5
ISSUE 6
Has the Appellant established that the Examiner erred in determining 7
that it would have been obvious to one of ordinary skill in the art at the time 8
the invention was made to combine and optimize the known elements of the 9
prior art for their known functions to arrive at the claimed subject matter? 10
FINDINGS OF FACT 11
The record supports the following findings of fact by a preponderance 12
of the evidence: 13
1. Chiu describes a food casing suitable to impart an apparent smoke 14
color to at least a portion of a food product and its casing. (Chiu 1:1-7). 15
2. Chiu describes that the food casing has interior and exterior 16
surfaces and a coating comprising caramel and an antiblock agent on at least 17
a portion of one of the surfaces. (2:13-17). 18
3. Chiu describes one embodiment of the coating wherein the coating 19
is preferably substantially uniform over the entire interior surface of the food 20
casing. (2:37-38). 21
4. Chiu describes that suitable antiblocking agents include 22
hydrophobic substances, for example, vegetable oil. (3:34-37). 23
5. Chiu describes that the amount of caramel in the coating of the 24

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invention, i.e, the concentration of the caramel in the solution applied to the 1
coating, depends upon the degree of coloring desired. (4:5-9). 2
6. Chiu describes that the term “caramel” includes commercially 3
available caramel, but is not limited to this class of materials. The term 4
“caramel” also includes any carbohydrate containing material which has 5
been caramelized and can include other substances such as flavoring 6
ingredients. (3:26-33). 7
7. Chiu differs from the claimed invention in that Chiu does not 8
expressly describe that the caramel coating comprises at least 40% by weight 9
of solids having a molecular weight greater than about 10,000. 10
8. Oxley describes a food casing having distinguishing indicia, such 11
as a pattern or logo on one surface of the casing. (Oxley 1:6-20). 12
9. Oxley describes that preferred indicia material for the food casing 13
is a caramel based coloring material. (4:45-46). 14
10. Oxley describes that when caramel is applied to the casing 15
surface, it remains substantially on the surface and does not significantly 16
migrate or diffuse into the casing wall due to the molecular weight of the 17
caramel, which is composed of constituents having molecular weights from 18
below 2,000 to over 10,000. (4:47-54). 19
11. Oxley describes that natural or synthetic caramel, or other high 20
molecular weight, water soluble coloring that is edible is suitable for the 21
invention. (4:56-59). 22
12. Oxley describes one example of the invention using a caramel 23
color with 27% of the caramel constituents having molecular weights above 24

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10,000; 14 wt.% are in the 2,000-10,000 range; and 59 wt.% are below 1
2,000. (10:7-14). 2
13. Oxley describes using a dark higher molecular weight caramel to 3
simulate a dark brown color and a lower molecular weight caramel to 4
provide a lighter brown color. (12:37-40). 5
14. Stall describes an improved shirring solution for coating a 6
cellulosic sausage casing comprising carboxymethylcellulose, polyethylene 7
glycol and methylcellulose. (6:14-20). 8
15. Stall describes that, in the art, propylene glycol is often used as a 9
humectant in shirring solutions. (1:23-26; 3:54-55; 7:48-49). 10
16. Stall describes that propylene glycol is used in the casing to 11
prevent water loss. (3:56-57). 12
17. Stall describes that using a 60% concentration of propylene 13
glycol in the shirr spray was typical in the art and that concentrations have 14
“more recently” decreased to about 10%. (4:11-16). 15
PRINCIPLES OF LAW 16
“Section 103 forbids issuance of a patent when ‘the differences 17
between the subject matter sought to be patented and the prior art are such 18
that the subject matter as a whole would have been obvious at the time the 19
invention was made to a person having ordinary skill in the art to which said 20
subject matter pertains.’” KSR International Co. v. Teleflex Inc., 127 S. Ct. 21
1727, 1734 (2007). 22
When the “claimed ranges are completely encompassed by the prior 23
art, the conclusion [that a prima facie case of obviousness exists] is even 24

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more compelling than in cases of mere overlap.” In re Peterson, 315 F.3d 1
1325, 1330 (Fed. Cir. 2003). 2
ANALYSIS 3
I. The Rejection of Claims 1-5, 7, 11, 23, 25, 27, 29, and 31 under 4
35 U.S.C. § 103(a) (2004) over Chiu and Oxley. 5
Claims 1-5, 7, 11, 23, 25, 27, 29, and 31 stand rejected under 6
35 U.S.C. § 103(a) over Chiu and Oxley. The Examiner found that Chiu 7
describes a fiber-reinforced cellulose food casing having an interior surface 8
coating composed of a solution containing caramel and vegetable oil. (Non-9
Final Rejection, Mar. 14, 2006, p. 2, incorporated by reference in Final 10
Rejection, Sep. 20, 2006, p. 2). The Examiner also found that Chiu 11
describes that the coating transfers to a food product that is encased in the 12
coating. (Non-Final Rejection, Mar. 14, 2006, p. 2, incorporated by 13
reference in Final Rejection, Sep. 20, 2006, p. 2). 14
Additionally, the Examiner found that Oxley describes a caramel 15
composed of constituents having molecular weights above 10,000. (Non-16
Final Rejection, Mar. 14, 2006, p. 2, incorporated by reference in Final 17
Rejection, Sep. 20, 2006, p. 2). 18
From these findings, the Examiner determined that it would have been 19
obvious to one of ordinary skill in the art at the time of the invention to 20
select Oxley’s caramel, composed of constituents having molecular weights 21
above 10,000, as the caramel used in Chiu. (Non-Final Rejection, Mar. 14, 22
2006, p. 2, incorporated by reference in Final Rejection, Sep. 20, 2006, p. 2). 23
The Examiner further determined that it would have been obvious to one of 24
ordinary skill in the art at the time of the invention to select a fractionated 25

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caramel to use as the caramel described in Chiu because it was well known 1
in the art at the time of the invention to prepare a cellulose casing having a 2
fractionated caramel coloring. (Id.). 3
The Examiner also determined that finding the optimum percent of 4
caramel solids having a molecular weight above 10,000 for use in the 5
coating of a food casing would have required nothing more than routine 6
experimentation by one of ordinary skill in this art. (Non-Final Rejection, 7
Mar. 14, 2006, p. 2, incorporated by reference in Final Rejection, Sep. 20, 8
2006, p. 2). The Examiner then concluded that it would have been obvious 9
for one skilled in the art at the time of the invention to use a caramel 10
comprising at least about 40% by weight of solids having a molecular 11
weight of 10,000. (Id.). 12
The Appellant argues that the Examiner erred in rejecting claims 1-5, 13
7, 11, 23, 25, 27, 29, and 31 as being obvious over the combination of Chiu 14
and Oxley because the cited references “fail to teach or suggest each and 15
every limitation of the claim [sic] invention.” (App. Br. p. 3). Specifically, 16
the Appellant argues that the combination of references does not teach a 17
caramel coating that “comprises at least about 40% by weight of solids 18
having a molecular weight greater than about 10,000.” (App. Br. p. 3). The 19
Appellant asserts that Oxley “merely teaches generic caramel” having a 20
“distribution of molecular weights.” (Id.). 21
This argument is not persuasive. To begin, the combination of prior 22
art references need not teach or suggest all claim limitations for an Examiner 23
to properly rely upon the references for an obviousness rejection. Dann v. 24
Johnson, 425 U.S. 219, 230 (1976)(“mere existence of differences between 25

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the prior art and an invention does not establish the invention’s 1
nonobviousness”). Rather, the principal issue is whether the claimed 2
invention would have been obvious to one of ordinary skill in the art at the 3
time of the invention. 4
Further, the Appellant has not distinguished its claim from the prior 5
art by asserting that Oxley teaches “generic caramel” having “a distribution 6
of molecular weights.” The Appellant’s claim, as written, does not preclude 7
the caramel coating solids from having a distribution of molecular weights. 8
The claim language only requires that the caramel coating “comprises at 9
least 40% weight of solids having a molecular weight greater than about 10
10,000.” (App. Br. 8). The claim, therefore, does not require that all of the 11
constituents comprising the 40 or more percent weight of solids to have the 12
same molecular weight greater than 10,000. In other words, this portion of 13
the constituents could comprise a distribution of molecular weights greater 14
than 10,000. 15
Similarly, the Appellant’s claim does not require the constituents 16
making up the remaining percent weight of solids, i.e., up to 60% of the 17
weight solids, to have the same molecular weight. Indeed, the molecular 18
weights for this portion of the solids content are unlimited. Therefore, we 19
find that the Appellant’s claim does not exclude having a caramel coating 20
comprised of solids having a distribution of molecular weights, as described 21
by Oxley. 22
The primary difference between the claimed invention and the 23
combined prior art is that the Appellant claims a more narrow range of 24
molecular weights for a portion, i.e., “at least 40%,” of the caramel 25

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constituents in its coating. The Appellant’s claimed range for this portion of 1
constituents is “greater than about 10,000” and Oxley describes a molecular 2
weight range for the entire portion of its caramel constituents “from below 3
2,000 to over 10,000.” (4:47-54). Therefore, the molecular weight range 4
described by Oxley encompasses the range of molecular weights claimed by 5
the Appellant. As explained by the Court in In re Peterson, 315 F.3d 1325, 6
1330 (Fed. Cir. 2003), when the “claimed ranges are completely 7
encompassed by the prior art, the conclusion [that a prima facie case of 8
obviousness exists] is even more compelling than in cases of mere overlap.” 9
Such is the case here. 10
Additionally, as the Examiner properly determined, limiting the 11
molecular weight of “at least 40 % weight of solids” in the caramel to 12
greater than about 10,000 would have been obvious to one of ordinary skill 13
in the art at the time of the invention who reviewed the references. Oxley 14
describes that the molecular weight of the caramel allows the caramel to 15
remain on the surface of the casing without significantly migrating or 16
diffusing into the casing wall. (4.47-54). Oxley also describes that there is 17
a direct relationship between the molecular weight of the caramel and the 18
shade of brown color simulated: higher molecular weight provides darker 19
brown color and lower molecular weights provide lighter brown color. 20
(12:37-40). 21
Thus, it would be obvious from these teaching to one of ordinary skill 22
in the art to adjust the percentage of higher molecular weight solids in the 23
caramel based upon the characteristics of the casing surface selected and/or 24
the shade of caramel color desired. Consequently, the Appellant’s claimed 25

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range represents an optimization, through routine experimentation, of the 1
range of molecular weights described by Oxley. This discovery of an 2
optimum range is not inventive. In re Aller, 220 F.2d 454, 456 (C.C.P.A. 3
1955). 4
Moreover, the Appellant has not argued or presented evidence that its 5
claimed optimum percent of caramel solids having molecular weight greater 6
that 10,000 is critical to improving the caramel coating on a food casing, or 7
that the “results of optimizing the range are unexpectedly good.” See In re 8
Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)(internal quotes omitted). 9
For these reasons, we do not find error with the Examiner’s 10
obviousness rejections. 11
The Appellant next argues that the rejections of claims 1-5, 7, 11, 23, 12
25, 27, 29, and 31 are improper because the Examiner failed to provide 13
evidence of a motivation to combine Chiu and Oxley, and, without such 14
evidence, the rejections “amount to no more than an impermissible hindsight 15
reconstruction of Applicant’s invention.” (App. Br. 4-6). The Appellant 16
urges that the only statement that the Examiner offered as the motivation to 17
combine Chiu and Oxley was “that the combination would have been 18
obvious ‘depending on [sic] desired results, personal preference and 19
consumer appeal.’” (App. Br. 5)(quoting Final Rejection, Sep. 20, 2006, p. 20
3). “Chiu teaches away from using a caramel coating having a concentrated 21
molecular [sic] as claimed.” (Br. p. 4). 22
This argument is not persuasive. In rejecting these claims, the 23
Examiner referenced teachings in Chiu and Oxley. (See Non-Final 24
Rejection, Mar. 14, 2006, p. 2, incorporated by reference in Final Rejection, 25

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Sep. 20, 2006, pp. 2-3). The reason to combine these references to arrive at 1
the claimed subject matter is provided, although not expressly, in the 2
references themselves. Chiu teaches a coated food casing comprising a 3
caramel coating that is preferably substantially uniform over the surface of 4
the casing. (2:13-17, 37-38). Chiu also describes that the caramel selected 5
is not limited to commercially available caramel, (3:26-33), and that the 6
concentration of caramel used depends upon the degree of coloring desired, 7
(4:5-9). Oxley describes applying a caramel color comprised of constituents 8
having molecular weights above 10,000 to a food casing. (4:47-54). Oxley 9
also describes that a higher molecular weight caramel will simulate a dark 10
brown color. (12:37-40). The Examiner discussed that one skilled in the art 11
at the time of the invention who reviewed Chiu and Oxley and desired a 12
darker colored caramel coating would select a caramel comprised of solids 13
having molecular weights over 10,000 as the caramel used in the coating 14
described by Chiu. The appellant has put forth no persuasive argument that 15
the examiner erred in this regard. 16
Therefore, we conclude that the Examiner supported the obviousness 17
rejections with a rational basis and did not err in determining that it would 18
have been obvious to one of ordinary skill in the art at the time of the 19
invention to combine the references to arrive at the claimed invention. Such 20
a determination is not the result of inappropriate hindsight. See In re 21
McLaughlin, 443 F.2d 1392, 1395 (C.C.P.A. 1971)(reconstruction is not 22
improper if it relies on ordinary skill at the time of the invention and not on 23
knowledge gained solely from the applicant’s disclosure). 24

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II. The Rejection of Claims 6, 8-10, 24, 26, 28, and 30 under 35 1
U.S.C. § 103(a) (2004) over Chiu, Oxley and Stall. 2
Claims 6, 8-10, 24, 26, 28, and 30 stand rejected under 35 U.S.C. § 3
103(a) over Chiu, Oxley and Stall. The Examiner found that it would have 4
been obvious to one of ordinary skill in the art at the time of the invention to 5
select soybean oil as the vegetable oil in the casing coating in Chiu because 6
soybean oil is a well known lubricant for coating the interior of a cellulose 7
casing. (Non-Final Rejection, Mar. 14, 2006, p. 3, incorporated by reference 8
in Final Rejection, Sep. 20, 2006, p. 2). 9
The Examiner also found that it would have been obvious to include 10
propylene glycol and methylcellulose in the coating because, as described by 11
Stall, these components are conventionally used in cellulose casing coatings 12
to improve coherency of the casing. (Id.). Additionally, the Examiner 13
determined that selecting an optimum amount of propylene glycol to use in 14
the coating requires only routine experimentation by one reasonably skilled 15
in the art. (Id.). 16
The Appellant asserts that the Examiner failed to provide any teaching 17
or suggestion in Stall that addresses the “missing elements” that the 18
Appellant asserted with regard to claims 1-5, 7, 11, 23, 25, 27, 29, and 31. 19
The Appellant does not raise any separate arguments to support this 20
assertion. Rather, the Appellant contends only that claims 6, 8-10, 24, 26, 21
28, and 30 are allowable because they depend from claims 1, 23, and 27. As 22
set forth, supra, we have affirmed the rejection of claims 1, 23 and 27. 23
Consequently, the Appellant has not persuaded us that the Examiner erred in 24
rejecting dependent claims 6, 8-10, 24, 26, 28, and 30. 25

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CONCLUSION OF LAW 1
On the record before us, the Appellant has not shown error on the part 2
of the Examiner. It would have been obvious to one of ordinary skill in the 3
art at the time the invention was made to combine and optimize the known 4
elements of the prior art for their known functions to arrive at the claimed 5
subject matter. 6
DECISION 7
The Rejection of claims 1-5, 7, 11, 23, 25, 27, 29, and 31 under 35 8
U.S.C. § 103(a) as being unpatentable over the combination of Chiu 9
(US 4,219,574) and Oxley (US 5,084,283) is AFFIRMED. 10
The Rejection of claims 6, 8-10, 24, 26, 28, and 30 under 35 U.S.C. 11
§ 103(a) as being unpatentable over the combination of Chiu (US 12
4,219,574), Oxley (US 5,084,283), and Stall (US 6,086,929) is AFFIRMED. 13
14
No time period for taking any subsequent action in connection with 15
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2006). 16

AFFIRMED

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P.O. Box 1022
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