Ex Parte Burns et al

Patent Trial and Appeal Board

Jan 26, 2015

13009977 (P.T.A.B. Jan. 26, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN WILLIAM BURNS, ANDREA WILLIAMS,
and SHIPING ZHU
____________

Appeal 2013-003710
Application 13/009,977
Technology Center 1700
____________

Before TERRY J. OWENS, GEORGE C. BEST, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

Opinion for the Board filed by ANKENBRAND, Administrative Patent
Judge.

Opinion dissenting filed by OWENS, Administrative Patent Judge.

ANKENBRAND, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–10, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 Appellants identify the Good Humor-Breyers Ice Cream Division of
Conopco, Inc., (which is ultimately owned by Unilever N.V. and Unilever
PLC) as the real party in interest. App. Br. 3.
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Application 13/009,977

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The Invention
Appellants’ invention relates to a process for producing coated frozen
particles, which have a shell/core structure with a shell of a fat-based coating
and a frozen aqueous core. Spec. ¶ 3. Claim 1 is representative of the
claims on appeal, and is reproduced below from the Claims Appendix to the
Appeal Brief:
1. A process for preparing frozen particles having an
average diameter of from 1 to 10mm and comprising from 1 to
50 wt% of a frozen aqueous core and from 50 to 99 wt% of a
fat-based shell, the process comprising:
(a) providing a dispensing device having an inner nozzle and an
outer nozzle which surrounds the inner nozzle;
(b) supplying a fat-based mix to the outer nozzle and an
aqueous mix to the inner nozzle, thereby forming particles with
a fat-continuous shell and a water-continuous core, and then
(c) dropping the particles into a refrigerant.
The References
Jones US 5,126,156 June 30, 1992
De Pedro US 5,556,659 Sept. 17, 1996
Henriet WO 2009/037221 A1 Mar. 26, 2009
Kearsley WO 2009/066074 A1 May 28, 2009
The Rejections
1. Claims 1–9 are rejected under 35 U.S.C. § 103(a) as unpatentable
over De Pedro in view of and Jones and Henriet; and
2. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
De Pedro in view of Jones, Henriet, and Kearsley.
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OPINION
Claims 1–9. Appellants argue that the Examiner’s rejection should be
reversed because the Examiner used impermissible hindsight by relying on
Appellants’ disclosure. App. Br. 5. In particular, Appellants argue that the
Examiner “points to no instance in De Pedro et al. where particles [with a
fat-continuous shell and a water-continuous core, such as those described in
Appellants’ claim 1] are made by coextrusion” and that De Pedro only
mentions co-extrusion in the context of “the liquid coating . . . coextruded
with ice cream from a die to form a center or ripple.” Id. at 6. Appellants
further argue that, because it was their idea to “drop[] into a refrigerant
particles of the recited size of confection made using an outer nozzle and an
inner nozzle such that the particles have a fat continuous shell and a water
continuous core,” neither De Pedro nor Jones would have led one of
ordinary skill to the claimed invention. Id. at 5.
The Examiner relies on De Pedro’s disclosure as “clearly suggest[ing]
a process for preparing frozen products comprising providing a dispensing
device having an inner nozzle and an outer surround[ing] nozzle, and
supplying a fat based mix to the outer nozzle and an aqueous ice cream type
mix to the inner nozzle, thereby forming products with a fat continuous shell
and a single water continuous core.” Ans. 4. Further, in response to
Appellants’ argument that De Pedro’s disclosure would not have led a
skilled artisan to the claimed invention, the Examiner states:
De Pedro teaches of a frozen confectionary, including ice
cream, coated with a fat based, fat continuous mix produced by
coextrusion to form a center. As co-extrusion was known to
encompass a dispensing device having an inner and outer
surrounding nozzle to form single core materials, the teachings
of De Pedro clearly suggest a process for preparing frozen
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Application 13/009,977

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particles comprising providing a dispensing device having an
inner nozzle and outer surround nozzle, and supplying a fat
based, water in oil emulsion mix to the outer nozzle and an
aqueous ice cream type mix to the inner nozzle, thereby
forming particles with a fat continuous shell and a single water
continuous core.
Id. at 13–14.
De Pedro’s invention “relates to a water-in[-]oil emulsion based
coating and its applications as [an] internal and external substitute for
conventional fat in frozen desserts.” De Pedro 1:9–11. De Pedro’s only
disclosure regarding co-extrusion is that “[i]n a further application of the
reduced calorie coating composition, the liquid coating composition can be
co-extruded with ice cream from a die to form a center or ripple.” Id. 3:43–
45. This passage does not describe co-extrusion that produces a product
with a fat-continuous shell and a water-continuous core, as the Examiner
asserts, but rather describes a co-extruded product wherein the fat-based
coating composition forms a center or ripple in ice cream (i.e., the aqueous
mix). In other words, De Pedro describes the inverse of Appellants’
invention.
Here, the Examiner has not provided an explanation why one of
ordinary skill in the art would have switched the locations of De Pedro’s co-
extruded fat-based and aqueous compositions to arrive at Appellants’
invention. Thus, we are not convinced on the record before us that the
Examiner has presented the necessary reasoning with a rational
underpinning to support the obviousness rejection over the combination of
De Pedro, Jones, and Henriet. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006).
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Accordingly, we reverse the rejection of independent claim 1 under 35
U.S.C. § 103(a), as well as claims 2–9, which depend therefrom.
Claim 10. Claim 10 depends directly from claim 1 and also requires
“supplying a fat-based mix to the outer nozzle and an aqueous mix to the
inner nozzle, thereby forming particles with a fat-continuous shell and a
water-continuous core.” The Examiner does not rely on Kearsley to cure the
deficiency in the combination of De Pedro, Jones, and Henriet.
Accordingly, we also reverse the rejection of claim 10 under 35
U.S.C. § 103(a).
DECISION/ORDER
The Examiner’s rejections of claims 1–10 under 35 U.S.C. § 103(a)
are reversed.
It is ordered that the Examiner’s decision is reversed.
REVERSED

mat

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte IAN WILLIAM BURNS, ANDREA WILLIAMS,
and SHIPING ZHU
____________

Appeal 2013-003710
Application 13/009,977
Technology Center 1700
____________

Before TERRY J. OWENS, GEORGE C. BEST, and
MICHELLE N. ANKENBRAND, Administrative Patent Judges.

OWENS, Administrative Patent Judge, dissenting.
The majority interprets De Pedro’s disclosure that “the liquid coating
composition can be coextruded with ice cream from a die to form a center or
ripple” (col. 3, ll. 44–45) as meaning that the center formed by the
coextrusion is made of the liquid coating composition. The majority bases
the reversal on error in the Examiner’s interpretation of the disclosure as
meaning that the coextrusion forms an ice cream center coated with the
liquid coating composition (Ans. 4, 13).
In view of De Pedro’s disclosure that the liquid coating composition
can be coated onto ice cream by dipping (col. 3, l. 18), enrobing (col. 3,
l. 33; col. 5, l. 19) or spraying (col. 3, l. 40), it is reasonable to interpret “the
liquid coating composition can be coextruded with ice cream from a die to
form a center” as meaning that the coextrusion forms an ice cream center
coated with the liquid coating composition. Hence, I do not agree to reverse
on the basis relied upon by the majority.
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Application 13/009,977

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Moreover, the Appellants do not challenge the Examiner’s
interpretation of that disclosure. The Appellants’ argument is that “[w]hen
De Pedro et al. mention coextrusion at column 3, lines 43-45, they say that
the ‘liquid coating composition can be coextruded with ice cream from a die
to form a center or ripple.’ (Emphasis added). This hardly would lead one of
ordinary skill to use De Pedro et al.’s coextrusion to form particles using the
process of Jones” (Br. 6).
Accordingly, I dissent.

TJO