Ex Parte Burgess et al

Patent Trial and Appeal Board

Jul 18, 2014

11272764 (P.T.A.B. Jul. 18, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/272,764 11/15/2005 Laurie Burgess GMI6442 3835
7590 07/18/2014
John A. O'Toole, Esq.
GENERAL MILLS, INC.
Number One General Mills Blvd.
Minneapolis, MN 55426
EXAMINER
LEFF, STEVEN N
ART UNIT PAPER NUMBER
1792
MAIL DATE DELIVERY MODE
07/18/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LAURIE BURGESS,
JENNIFER M. MAACK, and THOMAS LUEHRS
____________

Appeal 2012-010618
Application 11/272,764
Technology Center 1700
____________

Before MARK NAGUMO, KAREN M. HASTINGS, and
GEORGE C. BEST, Administrative Patent Judges.

HASTINGS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 96-99 and 101-112. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
Claim 96 is illustrative of the claimed subject matter:
96. A method of preparing a shaped food product,
comprising the steps of:
A. providing a hot plastic food mass having a
temperature of between about 60-102° C;
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B. co-extruding the hot plastic food mass to form a first
extrudate rope having an exterior and at least a second extrudate
rope wherein the first extrudate rope includes a longitudinally
extending exterior fin and the second extrudate rope forms a
helical coil around the exterior of the first extrudate rope,
wherein the fin creates a non contiguous contact between said
first and second extrudate ropes to form a combination center
extrudate rope and a coiled string, and wherein the fin provides
reduced surface-to-surface contact between the coiled string
and the center extrudate rope to provide ease and assurance of
peelability of the coiled string from the center extrudate rope;
C. curing the combination extrudate rope and coiled
string at a temperature of between about 24-45° C; and
D. cutting the combination extrudate rope and coiled
string to form individual pieces in the form of a center piece
and a string removably coiled around the center piece.
Claim 109, the only other independent claim, recites a method that is
similar to that of claim 96 (Claims App’x). Claim 106 is drawn to the
product prepared by the process of claim 96 (id.).
The Examiner maintains, and the Appellants appeal, the following
rejections under 35 U.S.C. §103(a)1:
1) Claims 96-99, 101-106, and 108-112 as being unpatentable over
Smylie (US 3,806,617, issued Apr. 23, 1974 ) in view of Lauro
(EP 1 036 500A 1, issued Sept. 20, 2000); and
2) Claim 107 as being unpatentable over Smylie, Lauro, and Borek
(US 5,874,120, issued Feb. 23, 1999).

1 The Examiner withdrew rejections of claims 109-112 under 35 U.S.C. §
112, first and second paragraphs (see, Ans. 10).
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OPINION
The Examiner bears the initial burden of presenting a prima facie case
of obviousness. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“[R]ejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (quoted with
approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
The fact finder must be aware “of the distortion caused by hindsight
bias and must be cautious of arguments reliant upon ex post reasoning.”
KSR, 550 U.S. at 421 (citing Graham v. John Deere Co., 383 U.S. 1, 36
(1966) (warning against a “temptation to read into the prior art the teachings
of the invention in issue”)).
After review of the respective positions provided by Appellants and
the Examiner, we agree with Appellants that the Examiner has not met the
burden in this case. A preponderance of the evidence supports Appellants’
assertions that the Examiner’s rejection is based on improper hindsight in
proposing to modify Smylie based on Lauro so as to result in the claimed
invention “to provide ease and assurance of peelability of the coiled string
from the center extrudate rope” as recited in claim 96 (a similar climitation
is recited in claim 109). As detailed by the Appellants in their Briefs,
Smylie is directed to a cooked licorice type candy formulation and the
Examiner has not come forward with evidence and an explanation indicating
that one of ordinary skill in the art would have looked to Lauro’s method of
producing shortbread by plaiting at least two different doughs (e.g., Lauro,
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paras. [0001], [0004]) to modify Smylie’s method of producing licorice
candies (e.g., App. Br. 6-9; Reply Br. 2-6).
Accordingly, we agree with Appellants that the Examiner has not
articulated a sufficient reason for combining Lauro’s teachings with Smylie
absent the use of impermissible hindsight.
For the foregoing reasons, and those presented by Appellants in the
Briefs, the Examiner has not satisfied the initial burden of presenting a prima
facie case of obviousness, and we conclude that the Examiner’s rejection is
improperly based upon hindsight reasoning. KSR, 550 U.S. at 421.
The only other reference, Borek, is applied only in the rejection of
claim 107, and has not been relied upon by the Examiner to cure the
deficiencies noted above.2
For these reasons and those set out in the Briefs, we reverse the
Examiner’s § 103 rejections on appeal.

2 Borek states that the apparatus and techniques to produce multistrand twist
food pieces disclosed in Borek may be employed with RTE (ready to eat)
cereals and “a wide variety of extrudable food products, especially such
plastic foods as low moisture fruit products” (Borek, col. 3, ll. 15-19). It
appears that the Examiner also attempts to rely upon this passage of Borek to
support the proposition that one of ordinary skill in the art would have
recognized that “hot plastic food mass” encompasses both confections and
farinaceous products (Ans. 17). Nonetheless, a preponderance of the
evidence on this record still supports Appellants position that there is no
apparent reason to modify Smylie’s method of making licorice candy with
Lauro’s method of plaiting two distinct doughs for biscuits/shortbread so as
to result in the claimed subject matter (e.g., Reply Br. 6).
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CONCLUSION
In summary, the appealed rejections are reversed.
REVERSED

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