Ex Parte Cathenaut et al

Board of Patent Appeals and Interferences

Mar 24, 2008

10300030 (B.P.A.I. Mar. 24, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte PHILIP IGNOR CATHENAUT,
VERONIQUE COSSIN, and BRUNO DELANDE
______________

Appeal 2008-0654
Application 10/300,030
Technology Center 1700
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Decided: March 24, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 1 through 13 in the Office Action mailed
January 11, 2006, of which claim 13 was subsequently amended in the
Amendment filed May 10, 2006 entered in the Office Action mailed May 25,
2006. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2006).

Appeal 2008-0654
Application 10/300,030
The appeal was heard March 11, 2008.
We affirm the decision of the Primary Examiner.
Claims 1 and 12 illustrate Appellants’ invention of an iced
confectionery article, and are representative of the claims on appeal:
1. A molded iced confectionery article based on water ice and having
a soft-core texture, comprising:
i) a core of water ice containing 20 to 40% by weight of solids, and
having a degree of overrun of 20 to 80% and a texture which is similar to
that of an extruded ice-cream, and
ii) a shell of water ice having no overrun and containing 20 to 35%
by weight of solids.
12. Iced confectionery article based on water ice and having a soft-
core texture, comprising a core of water ice containing 20 to 40% by weight
of solids, and having a degree of overrun of 20 to 80% and a texture which is
similar to that of an extruded ice-cream, wherein the core contains edible
pieces that are 1 to 10 mm is size, and in that the core is coated with a fatty
composition.
The Examiner relies upon the evidence in these references (Ans. 3):
Huber US 4,826,656 May 2, 1989
Busse US 6,194,014 B1 Feb, 27, 2001
Cox US 6,436,454 B1 Aug. 20, 2002
Oldroyd EP 0 886 475 B1 Jul. 18, 2001
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal (App. Br. 8):
Claims 1 through 10 as unpatentable over Cox in view of Huber (Ans. 3);
Claim 11 as unpatentable over Cox in view of Huber as applied to claims
1 through 10, and further in view of Oldroyd (Ans. 6); and
Claims 12 and 13 as unpatentable over Huber in view of Oldroyd and Busse
(Ans. 7).
Appellants argue the claims in the first and third grounds of rejection
as a group (App. Br. 11-14 and 15-16). Thus, we decide this appeal based
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on claims 1, 11, and 12 as representative of the grounds of rejection and
Appellants’ groupings of claims. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
The issues in this appeal are whether the Examiner has carried the
burden of establishing a prima facie case of obviousness in each of the
grounds of rejection advanced on appeal.
The plain language of independent claim 1 specifies any molded iced
confectionary article based on water ice and having a soft-core texture
comprising at least a core of water ice containing solids and overrun in the
specified ranges and has “a texture which is similar to that of an extruded
ice-cream,” and a shell of water ice having no overrun and containing solids
in the specified range. The term “solids” used to define both components
can include such liquids as fruit juice and glucose syrup. See claims 6 and 7.
Independent claim 11 specifies an ice confectionary article which
additionally includes edible inclusions, that is, solid pieces, of any edible
material in the core but does not require a molded article. See Spec., e.g.,
5:11-16. Independent claim 12 specifies an iced confectionary article based
on water ice and having a soft-core structure comprising at least a core
which includes edible pieces and is coated to any extent with a fatty
composition, such as chocolate (dependent claim 13).
We find Cox would have disclosed to one of ordinary skill in this art a
coated frozen confectionery article prepared by freezing a supercooled
aqueous solution applied to a pre-frozen element of the product, to form a
coated frozen confectionery product. Cox, e.g., col. 1, l. 33 to col. 2, l. 7.
The aqueous solution can include, among other things, water ice solutions
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Application 10/300,030
containing, among other things, sweeteners, optional flavoring ingredients,
and stabilizers in amounts of 0.01 to 50 wt. %. Cox, e.g., col. 2, ll. 8-32.
“The supercooled aqueous solution is caused to freeze while
contacting it with a pre-frozen element . . . by any suitable way,” wherein the
pre-frozen element is contacted with the solution by any suitable means,
including coextrusion, immersion, spraying, such as “onto a pre-frozen layer
or core of water-ice or ice-cream,” and pouring, such as onto a horizontal
layer of ice cream. Cox, e.g., col. 2, ll. 33-50, and col. 5, l. 23 to col. 6, l. 8.
“A very preferred embodiment of the invention involves the dipping of a
pre-frozen core into a supercooled aqueous solution, such as a water ice
solution,” which “method therefore allows for the preparation of coated
confectionery products . . . without the need for complicated methods or
moulds.” Cox, col. 2, ll. 51-66.
“The pre-frozen component to which the aqueous solution is applied
can be any pre-frozen element,” such as “frozen cores,” that “[p]referably
. . . is made of ice-cream or water-ice.” Cox col. 3, ll. 1-11. The frozen
aqueous solutions obtained from the “supercooled liquids provide a smooth
layer” of characteristic structure that is predominately unaligned dendritic
ice crystals. Col. 3, ll. 12-35. A preferred embodiment is “a frozen
confection comprising an ice-cream core surrounded by a smooth water-ice
layer.” Col. 3, ll. 53-56.
Cox illustrates in Example 2, coating an ice cream blank blast frozen
to - 33°C, that is, -27.4°F, by dipping into supercooled liquid for 30 seconds.
This results in a semi-solid water ice encasing the ice cream core and the
product is hung in the blast freezer at - 33°C for 20 minutes and stored at -
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Application 10/300,030
25°C, that is, - 13°F. Cox col. 4, l. 61 to col. 5, l. 20. Cox illustrates in
Example 3, pouring a liquid water ice mix onto a horizontal layer ice cream
held at -7°C, that is, 19°F. and placing a second layer of
-7°C ice cream onto the water ice layer. The layered product is placed into a
blast freezer at - 34°C, that is, -29.2°F, for 40 minutes, and stored at - 25°C.
Cox col. 5, l. 23 to col. 6, l. 8.
We find Huber would have disclosed to one of ordinary skill in this
art “[a] smooth textured soft frozen water ice having a consistency similar to
soft frozen fat containing diary products” having a solids content of about
18-26 wt.% and an overrun of about 25-70%. Huber, e.g. Abstract, col. 1, ll.
5-9, col. 3, l. 22, to col. 4, l. 11, and col. 4, l. 57 to col. 5, l. 9; see also, e.g.,
Huber Examples VII and X. The soft frozen water ice product is “relatively
slow melting” and “can be frozen and served from conventional soft serve
freezers used for diary products” “at a drawn temperature of between about
18°-21° F,” that is, between about -7.7°-6.1°C. Huber col. 1, ll. 31-53; see
also, e.g., Huber Example 1.
Specific mixtures of stabilizers are “critical to the obtaining of a
smooth, stable, slow melting mixture,” and the homogeneity of the dry blend
of ingredients, including uniform dispersal of the mixture of stabilizers,” is
critical to the formation of a smooth, creamy textured soft frozen ice.”
Huber, e.g., col. 1, l. 40 to col. 3, l. 10, and col. 4, ll. 17-49. In this respect,
“it is imperative that the stabilizer mixture be soluble in cold water, i.e., at
50° F[, that is, 10° C,] or lower.” Huber col. 2, ll. 27-29. The aqueous
solution is “quickly frozen” and “the formation of ice crystal size is
controlled to give the desired degree of smoothness in body and texture.”
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Application 10/300,030
Huber col. 4, ll. 50-56. “[T]he soft frozen product drawn from the freezer
for service is a ternary mixture of ice crystals, air cells and unfrozen liquid
containing sugars or other sweetening agents, stabilizers and flavoring
agents.” Col. 5, ll. 10-28. The type of freezer can affect the draw
temperature and the hardness of the product. Huber col. 6, ll. 64-68.
We find Oldroyd would have disclosed to one of ordinary skill in this
art that pieces of unripe fruit can be included as “inclusions” in frozen
confections, such as ice cream, ice milk, and water ices, wherein “[g]enerally
the volume of the individual fruit pieces will be less than
8 cm3.” Oldroyd col. 1, l. 54 to col. 2, l. 28. Appellants do not dispute the
Examiner’s finding “a diameter of 1 mm would yield an inclusion of
0.52 cm3.” Ans. 6. “Preferably the food product has a temperature of from
-5°C to -25°C[, that is, 23°F to -13°C,] when the fruit pieces are added,” and
appropriately when the frozen confection is soft enough to mix the
ingredients but hard enough to support the fruit pieces. Oldroyd col. 3,
ll. 42-43.
We find Busse would have disclosed to one of ordinary skill in this art
that coatings of chocolate, which can contain fat, are applied to any
confectionery or ice cream product by dipping, “enrobing,” or spraying, or
by coating a mold therewith and then filling the mold with, for example, ice
cream, “and if desired, a stick may be added.” Busse col. 2, l. 7, to col. 3,
l. 35.
We find Appellants acknowledge the use of molds to prepare iced
confections based on water ice is well known in the art. Spec. 1-2.
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With respect to the first ground of rejection, we determine that the
combined teachings of Cox and Huber, the scope of which we determined
above, provide convincing evidence supporting the Examiner’s case that the
claimed invention encompassed by claim 1, as we interpreted this claim
above, would have been prima facie obviousness to one of ordinary skill in
the frozen confectionary arts familiar with methods of forming water ices.
We agree with the Examiner that the combined teachings of Cox and Huber
would have reasonably led this person to use Huber’s soft frozen water ice
as the pre-frozen water ice component to which a smooth coating layer is
applied by Cox’s method in a mold, in the reasonable expectation of
obtaining a molded coated iced confectionery article based on water ice with
consumer appeal. Ans. 3-6 and 8. Indeed, this person would further have
knowledge of molding water ices and thus, would have recognized in Cox’s
Example 3 a process requiring a container or mold to retain the water ice and
ice cream layers.1 The weight percent of solids in Huber’s water ice and
Cox’s water ice shell overlap with the claimed ranges for these ingredients,
and the degree of overrun in Huber’s water ice is encompassed by and thus,
anticipates the claimed range for this ingredient. There is no evidence Cox’s
water ice shell contains overrun.

1 It is well settled that a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in this art would have
reasonably been expected to draw therefrom, see In re Fritch, 972 F.2d
1260, 1264-65 (Fed. Cir. 1992); In re Preda, 401 F.2d 825, 826 (CCPA
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Application 10/300,030
Accordingly, we are of the opinion that, prima facie, one of ordinary
skill in this art routinely following the combined teachings of Cox and
Huber would have reasonably arrived at the claimed molded iced
confectionery article based on water ice encompassed by claim 1, including
all of the limitations thereof, without recourse to Appellants’ Specification.
See, e.g., KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct. 1727, 1739 (2007) (a
patent claiming a combination of elements known in the prior art is obvious
if the improvement is no more than the predictable use of the prior art
elements according to their established functions); In re Kahn, 441 F.3d 977,
985-88 (Fed. Cir. 2006); In re Keller, 642 F.2d 413, 425 (CCPA 1981)
((“[T]he test [for obviousness] is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”);
Sovish, 769 F.2d at 743.
Upon reconsideration of the record as a whole in light of Appellants’
contentions, we are of the opinion that Appellants’ contentions do not
successfully rebut the prima facie case.2 Appellants argue “Cox is
essentially directed to a composite iced confection stick bar comprising a
frozen solid hard core of an ice cream product,” and “[i]f the core were soft,
the water ice coating would not be sufficiently formed or would be formed

1968), presuming skill on the part of this person. In re Sovish, 769 F.2d 738,
743 (Fed. Cir. 1985).
2 An appeal, whether on brief or heard, is decided on the record. 37 CFR
§ 41.37(c)(1)(vii) (2006) provides in pertinent part: “Any arguments or
authorities not included in the brief or reply brief filed pursuant to § 41.41
will be refused consideration by the Board, unless good cause is shown.”
See also Manual of Patent Examining Procedure §§ 1205.02 and 1209 (8th
ed., Rev. 3, August 2005; 1200-14 and 1200-48).
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Application 10/300,030
unevenly over the core because of its malleable character.” App. Br. 11
(original emphasis omitted). Appellants point out “Huber is entirely
directed to a non-composite soft-frozen (i.e.) flowable, slow-melting water
ice that is capable of being used in a specific freezer designed for dispensing
soft serve ice.” App. Br. 11 (original emphasis omitted); see also App. Br.
11-12. Thus, Appellants argue the references cannot be combined because
Huber’s “soft-frozen and flowable iced product” cannot be used as Cox’s
“frozen solid hard core.” App. Br. 11-12; Reply Br. 2-3. Appellants further
contend Cox teaches away from a molded article in disclosing “using a
frozen solid hard core to dip into a solution so that a water ice coating can
form over the core” and that the disclosed coated confectionery articles can
be prepared “without the need for complicated methods or moulds.” App.
Br. 12-13 (original emphasis omitted); Reply Br. 3-4. Appellants contend
“Cox and Huber fail to disclose or suggest any molded iced confectionery
article.” App. Br. 14 (original emphasis omitted).
On this record, we are of the opinion Appellants’ contentions do not
reflect the teachings one of ordinary skill in this art would have found in
Cox and Huber as whole. Cox teaches the pre-frozen core must only be
capable of being coated with the water ice aqueous solution, and not that the
pre-frozen core must be “frozen solid hard.” Indeed, this person would have
found in Cox’s Example 3, evidence that a water ice aqueous solution is
applied to ice cream held at 19°F, which is within the freezer draw
temperature range for Huber’s soft frozen water ice. This person would
have been led by this teaching to apply Cox’s coating to Huber’s soft frozen
water ice by pouring the coating solution onto Huber’s water ice in a
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Application 10/300,030
container or mold, and then freezing the coating solution to obtain the
smooth water ice coating surface taught by Cox on Huber’s soft-frozen
water ice. Indeed, Cox teaches the coating can be applied in ways other than
by dipping a stick containing pre-frozen core in a coating solution, and
suggests only the dipping application method may avoid the use of a mold.
Thus, the elements constituting a “teaching away” from the claimed
invention are missing from Cox, Huber, and the combination thereof. See,
e.g., Kahn, 441 F.3d at 985-89 (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)); In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (prior art
“disclosure does not criticize, discredit, or otherwise discourage the solution
claimed”).
Considering now the second ground of rejection based on the
combined teachings of Cox and Huber as applied to claim 1 and further
combined with Oldroyd, Appellants contend that Oldroyd would not have
suggested putting fruit pieces into a core/shell frozen confection in the
manner specified in claim 11, and does not remedy the deficiencies relied on
in Cox and Huber. App. Br. 14-15. The Examiner applies Oldroyd to the
combination of Cox and Huber to establish that, prima facie, one of ordinary
skill in this art would have been led to put fruit pieces in Huber’s soft frozen
water ice. Ans. 6. Upon reconsideration of the record as a whole,
Appellants’ contentions do not successfully rebut the prima facie case. The
mere allegation of “no suggestion” in Oldroyd to modify Huber does not
contest the rejection with specificity or provide a position requiring further
consideration of the combination of Cox and Huber with this reference. Cf.
In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“It is not
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Application 10/300,030
the function of this court to examine the claims in greater detail than argued
by appellant, looking for nonobvious distinctions over the prior art.”). On
this record, we find it sufficient that Huber discloses the soft frozen water
ice product can contain solids.
With respect to the third ground of rejection, we determine the
combined teachings of Huber, Oldroyd, and Busse, the scope of which we
determined above, provide convincing evidence supporting the Examiner’s
case that the claimed invention encompassed by claim 12, as we interpreted
this claim above, would have been prima facie obviousness to one of
ordinary skill in the frozen confectionary arts familiar with methods of
forming water ices. See Ans. 7-8. Appellants’ contentions do not
successfully rebut the prima facie case. Appellants do not support their
contention that Huber’s “soft product is incapable of receiving or sustaining
any type of coating as it is easily deformable and capable of fluid-like
movement.” App. Br. 15. Indeed, Huber’s freezer draw temperature range
for the soft frozen water ice is between about 18°-21°F, and Appellants do
not submit scientific argument or objective evidence establishing that
Busse’s method will not coat Huber’s product. Unsupported contentions of
counsel are entitled to little, if any, weight. See, e.g., In re De Blauwe,
36 F.2d 699, 705 (Fed. Cir. 1984); In re Payne, 606 F.2d 303, 315 (CCPA
1979); In re Lindner, 457 F.2d 506, 508 (CCPA 1972). Appellants’
contention that Busse is limited in teachings to “a solid hard composition
. . . on a stick” ignores the teachings of the reference that a mold can be used
wherein a stick is optional.
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Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Cox and Huber alone and further combined with
Oldroyd and the combined teachings of Huber, Oldroyd, and Busse with
Appellants’ countervailing evidence of and argument for nonobviousness
and conclude that the claimed invention encompassed by appealed claims
1 through 13 would have been obvious as a matter of law under 35 U.S.C.
§ 103(a).
The Primary Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007).
AFFIRMED

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