Ex Parte Blaun

Board of Patent Appeals and Interferences

Mar 29, 2006

10317530 (B.P.A.I. Mar. 29, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte RANDALL S. BLAUN

____________

Appeal No. 2005-1586
Application No. 10/317,530
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ON BRIEF
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Before WALTZ, KRATZ and JEFFREY T. SMITH, Administrative Patent Judges.
JEFFREY T. SMITH, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1
to 14, all of the pending claims. We have jurisdiction under 35 U.S.C. ' 134.
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OPINION
Appellant's invention relates to dry mix potato products and processes for
preparing them. In one aspect, the invention provides a dry mix useful for
preparing a low-carbohydrate potato product, comprising: dried potato and
cauliflower. (Brief, pp. 2-3). Representative claims 1 and 2 are reproduced
below:
1. A dry mix for preparing a low-carbohydrate potato product,
comprising: dried potato and cauliflower.

2. A method for preparing the mix of claim 1 for serving by mixing
with water to provide a suitable consistency for final preparation.

As evidence of unpatentability, the Examiner relies on the following references:
Cremer 3,987,210 Oct. 19, 1976
Bosley, Jr. et al. (Bosley, Jr.) 4,238,517 Dec. 09, 1980

Hamann et al. (Hamann) 4,293,582 Oct. 06, 1981

Fazzolare et al. (Fazzolare) 4,834,996 May 30, 1989

Pirrotta et al. (Pirrotta) 4,970,084 Nov. 13, 1990

Gagliardi et al. (Gagliardi) 5,955,130 Sep. 21, 1999

Appeal No. 2005-1586
Application No. 10/317,530

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The Examiner entered the following rejections:1
1. Claims 1, 4, 5 and 7-14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Gagliardi.
2. Claims 2, 3 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gagliardi as applied to claims 1, 4, 5 and 7-14 and further in
view of Pirrotta, Fazzolare, Hamann, Cremer or Bosley.
We have carefully reviewed the claims, specification and applied prior art,
including all of the arguments advanced by both the Examiner and Appellant in
support of their respective positions. Based upon our review we agree with the
Examiner’s obviousness determination.2
We start with the claim language. Gechter v. Davidson, 116 F.3d 1454,
1457, 1460 n.3, 43 USPQ2d 1030, 1032, 1035 n.3 (Fed. Cir. 1997); In re
Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994). In
proceedings before the U.S. Patent and Trademark Office (USPTO), claims must
be interpreted by giving words their broadest reasonable meanings in their
ordinary usage, taking into account the written description found in the
specification. In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed.

1 The Examiner’s reasons for rejecting the claims appear in the Office Action mailed May 29, 2003.
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Cir. 1997)("[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary usage as they would
be understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by the
written description contained in the applicant's specification."); In re Zletz, 893
F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989)("During patent
examination the pending claims must be interpreted as broadly as their terms
reasonably allow.").
Applying these principles, we note that the subject matter of claim 1 is
directed to a dry mix that is capable of preparing “a low-carbohydrate potato
product.” The specification discloses “[b]y the term ‘low-carbohydrate’ is meant
an amount of a food in a 100 gram serving which supplies less than about one
fourth of the daily recommended intake of carbohydrate for a low-carbohydrate
diet. Generally, a ‘low-carbohydrate diet’ is defined as any diet that includes less
than 100 grams of carbohydrate for an average person per day. Thus, all of the
products of the invention will have carbohydrate in minor amounts, preferably in
an amount of no more than 25 grams per serving.” (Specification, pp. 4-5).

2 Appellant has not provided separate arguments for the appealed claims. Thus, we will limit our
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However, the claimed invention does not specify the conditions that are required
to transform the “dry mix” to a "low-carbohydrate potato product.” Thus, the
subject matter of claim 1 is directed to a dry mix comprising dried potato and
cauliflower.
The Examiner has determined that Gagliardi “discloses preparation of a
dehydrated potato product, including potato powder and egg yolk (binder), which
can also include cauliflower (Example 3, [Ex. 3] and Claim 8). The product can be
shaped and heated and used as a filling or topping. It would have been obvious
to select a mixture of potato and cauliflower as part of the final product to obtain
the added benefits of both vegetables as well as simply depending upon
consumer appeal and personal preference.” (Office Action mailed May 29, 2003,
p. 3).
Appellant argues that “[t]he claims defining this invention have been
rejected over Gagliardi, et al., alone or in combination with other references.
However, none of these references taken in any possible combination address
either the preparation of a low-carbohydrate potato product or Appellant's
invention.” (Brief, p. 5).

discussion to claims 1 and 2 as representative of the rejected claims.
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Appellant’s argument is not persuasive. It is well known that an intended
use of an old composition does not render the composition claim patentable.
See In re Pearson, 494 F.2d 1399, 1403 [181 USPQ 641] (CCPA 1974); In re
Zierden, 411 F.2d 1325, 1328, 162 USPQ 102, 106 (CCPA 1969). As stated
above, the claimed invention is directed to a dry mix. Gagliardi is suggestive of a
dry mix comprising potato and cauliflower. The claimed subject matter is not
limited to a low carbohydrate product, i.e., the dry mix does not have to have low
carbohydrate properties. The dry mix must be capable of being mixed with other
ingredients to produce a low carbohydrate product. Appellant has not argued or
directed us to evidence that establishes the product of Gagliardi is not capable of
being mixed with components suitable for producing a low carbohydrate product.
Claims 2, 3 and 6 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Gagliardi, in view of Pirrotta, Fazzolare, Hamann, Cremer or
Bosley. We select claim 2 as representative.
Appellant traversed this rejection for the reasons presented in the
discussion of the § 103 rejection over Gagliardi alone and because the secondary
references do not allegedly supply the teachings missing from the Gagliardi
reference. (Brief, p. 10). Specifically, Appellant argues that without the present
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invention teaching of how to modify the processes and formulations from among
those known generally, to achieve a low-carbohydrate potato product, there
would be no teaching at all of this basic feature of the invention. (Brief, p. 10).
Appellant’s arguments are not commensurate in scope with the claimed
subject matter. The subject matter of claim 2 is directed to a method of preparing
the dry mix of claim 1. As stated above, the dry mix of claim 1 is not limited to
having “low carbohydrate” properties. Gagliardi is suggestive of a dry mix
comprising potato and cauliflower and thus is suggestive of a method of making
such a dry mix. The addition of the secondary references does not detract from
the teachings of Gagliardi.
Based on our consideration of the totality of the record before us, having
evaluated the stated rejections in view of Appellant’s arguments, we conclude
that the subject matter of claims 1 to 14 is unpatentable under § 103 as stated in
the Examiner’s rejections.
Appeal No. 2005-1586
Application No. 10/317,530

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TIME FOR TAKING ACTION
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 CFR § 1.136(a)(1)(iv).

AFFIRMED

THOMAS A. WALTZ )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )

JTS/sld
Appeal No. 2005-1586
Application No. 10/317,530

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