Ex Parte ChatelDownload PDFPatent Trial and Appeal BoardJun 25, 201411945834 (P.T.A.B. Jun. 25, 2014) Copy Citation 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. 11/945,834 11/27/2007 Robert CHATEL CQKER.2894 8067 110933 7590 06/26/2014 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER LATHAM, SAEEDA MONEE ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 06/26/2014 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 ROBERT CHATEL ____________ Appeal 2013-000455 Application 11/945,834 Technology Center 1700 ____________ Before ROMULO H. DELMENDO, DONNA M. PRAISS, and JEFFREY W. ABRAHAM, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-18. We have jurisdiction pursuant to 35 U.S.C. § 6(b). We reverse. BACKGROUND Appellant’s claimed invention is said to be directed to a method of preparing low bulk density food products with fibrous fillings. See Spec. ¶ 1; Abstract. Appeal 2013-000455 Application 11/945,834 2 Claim 1 is the sole independent claim on appeal, and reproduced below from the Claims Appendix: 1. A method for producing a food product comprising: preparing first and second layers for an outer shell of the food product; preparing a dough; preparing a plurality of food strands for forming a center-fill mat for the food product; wherein the food strands are formed by passing the dough through small holes; depositing the food strands randomly on the first layer, entangling with one another as the plurality of food strands fall to form the center-fill mat thereon; covering the first layer and the center-fill mat with the second layer to form an intermediate product; and post-processing the intermediate product to form the food product having a filling, wherein the food product comprises a lower bulk density than the same food product in which the filling dough comprises cereal shreds. The Examiner maintains, and the Appellant appeals, the rejection of: 1. Claim 1 under 35 U.S.C. §112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1-5, 7, 8, and 13-16 under 35 U.S.C. §103(a) as being unpatentable over Leibfred (US 4,696,825, issued Sept. 29, 1987) in view of Kenneally (US 4,738,859, issued Apr. 19, 1988). Appeal 2013-000455 Application 11/945,834 3 3. Claims 1-4, 7, 8, 10, 11, and 13-16 under 35 U.S.C. § 103(a) as being unpatentable over Karwowski (US 2006/0246193 A1, published Nov. 2, 2006) in view of Kenneally. 4. Claims 6, 9, 12, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Leibfred in view of Kenneally and Olson (US 6,626,660 B1, issued Sept. 30, 2003). 5. Claims 6, 9, 12, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Karwowski in view of Kenneally and Olson. 6. Claims 1-4, 7, 8, 10, 11, and 13-16 under 35 U.S.C. § 103(a) as being unpatentable over Kostival (US 2003/0035876 A1, published Feb. 20, 2003) in view of Karwowski and Kenneally. 7. Claims 6, 9, 12, 17, and 18 under 35 U.S.C. § 103(a) as being unpatentable over Kostival in view of Karwowski, and further in view of Olson. ISSUES The dispositive issues for the rejections are: 1. Did the Examiner reversibly err in determining that claim 1 fails to comply with the written description requirement of 35 U.S.C. § 112, first paragraph, on the basis that the Specification does not “specifically refer[] to the density of cereal shreds.” Ans. 3. We decide this issue in the affirmative. 2. Did the Examiner reversibly err in determining that Leibfred’s disclosure of a process for making paste-filled shredded cereal Appeal 2013-000455 Application 11/945,834 4 biscuits combined with Kenneally’s disclosure of randomly depositing strings of dough over edible bits (such as chocolate or nuts) in forming cookie dough pieces would have rendered obvious the subject matter of claim 1? We decide this issue in the affirmative. 3. Did the Examiner reversibly err in determining that Karwowski’s disclosure of a process for forming whole grain shredded products combined with Kenneally’s disclosure of randomly depositing strings of dough over edible bits (such as chocolate or nuts) in forming cookie dough pieces would have rendered obvious the subject matter of claim 1? We decide this issue in the affirmative. 4. Did the Examiner reversibly err in determining that Kostival’s disclosure of ready-for-use dough products comprising a filling combined with Karwowski’s disclosure of a process for forming whole grain shredded products and Kenneally’s disclosure of randomly depositing strings of dough over edible bits (such as chocolate or nuts) in forming cookie dough pieces would have rendered obvious the subject matter of claim 1? We decide this issue in the affirmative. FINDINGS OF FACT AND ANALYSIS Issue 1- Written Description Claim 1 requires that the “food product comprises a lower bulk density than the same food product in which the filling dough comprises Appeal 2013-000455 Application 11/945,834 5 cereal strands.” This limitation was introduced into the claim by an amendment on September 20, 2011. Reply filed September 20, 2011 at 2. The Examiner finds that claim 1 contains subject matter which was not adequately described in the Specification because “specifically referring to the density of cereal shreds is not disclosed.” Ans. 3. Appellant argues that paragraph [0005] discloses that the food products according to the invention have a lower bulk density than conventional food products, and paragraphs [0002]-[0003] specify “conventional” cereal filling as being cereal shreds. Therefore, the application clearly discloses the feature of “wherein the food product comprises a lower bulk density than the same food product in which the filling dough comprises cereal shreds.” In addition, paragraphs [0018] and [0032] disclose that food products such as cereal biscuits, in which the dough of the center filling comprises food strands randomly deposited and entangled with one another as they fall to form a center-fill mat, have a lower bulk density than conventional cereal biscuits, further supporting the recited feature. App. Br. 11. Appellant further argues that the Specification discloses details of cereal strands, including methods for making them, and contrasts them with conventional cereal shreds. Id. at 11-12. Appellant also argues that because the claim refers to a lower bulk density of the food product and not the density of cereal strands specifically, the density of the dough of the cereal shreds may be irrelevant. Id. at 11. In response, the Examiner finds that “no quantitative measurements for the density are disclosed with regard to the density of strands versus shreds,” and that the Specification “does not explain the difference and does Appeal 2013-000455 Application 11/945,834 6 not give any measurement as to the width and structure of a shred versus a strand.” Ans. 20. Further, the Examiner concludes that cereal shreds and strands appear to be synonymous structures. Id. In the Reply Brief, Appellant argues that there is nothing in the Specification that suggests the term “shreds” is synonymous with “strands.” Applicant notes that “[t]he specification explains the difference between cereal strands and shreds” (Reply Br. 7), including a clear disclosure of how “cereal strands are made by different processes and are manipulated differently than cereal shreds” (id at 4-5 (citing ¶¶ 17, 18, 24-30, 32, and 36 of the Specification)). Additionally, Appellant points to paragraph 18 of the Specification as disclosing quantitative characteristics of cereal strands, including reduced bulk densities of cereal biscuits made using the claimed invention. Id. at 5. Appellant further argues that the Specification “highlights multiple ways of achieving the recited food product lower bulk density, for example by employing expanded food strands (containing voids within the strands) or by optimizing the depositing velocity (containing voids between the strands).” Id. at 8. Therefore, according to Appellant, the individual densities of conventional cereal shreds as compared to cereal strands need not be specified, such as in the example of manipulating the deposition process to form more voids within the food product filling than provided by cereal shreds. The finished food product will have a lower bulk density due to the presence of the voids, even if the density of the food strands is not less than those of conventional cereal shreds. Appeal 2013-000455 Application 11/945,834 7 Id. at 9. We find Appellant’s arguments to be persuasive. With regard to the written description requirement of 35 U.S.C. § 112, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The description requirement does not “demand any particular form of disclosure . . . or that the specification recite the claimed invention in haec verba.” Id. at 1352. Paragraph 2 of the Specification, as filed on the date of the application, explains that conventional breakfast products “include a cereal shell containing shredded cereal as the filling.” Spec. ¶ 2. Paragraph 5 of the Specification explains that the claimed invention results in food products having a “lower bulk density than conventional food products,” and paragraph 18 not only teaches how to produce the claimed lower density food product using cereal strands, but also provides quantitative density values of the claimed food product compared to conventional cereal biscuits. Id. at ¶¶ 5, 18. We find this disclosure “reasonably conveys to those skilled in the art” that Appellant had possession of a food product having “a lower bulk density than the same food product in which the filling dough comprises cereal strands.” We are not convinced otherwise by the Examiner’s position. Although the Examiner may be correct that there is no specific reference to the density of cereal shreds in the Specification, none is required. See Ariad, Appeal 2013-000455 Application 11/945,834 8 598 F.3d at 1352. Additionally, the Specification describes how to achieve the required lower density food product using cereal strands. See, e.g., Spec. ¶¶ 18, 32. Therefore, on this record, we reverse the Examiner’s rejection of claim 1 under 35 U.S.C. § 112, first paragraph. Issue 2 – Leibfred and Kenneally Claim 1 requires “depositing the food strands randomly on the first layer, entangling with one another as the plurality of food strands fall to form the center-fill mat thereon.” The Examiner finds that Leibfred teaches a method for producing paste-filled shredded cereal biscuits, wherein a first plurality of shredded cereal dough layers are laminated, followed by a deposition of an extrudate rope, then a second plurality of shredded cereal dough layers is laminated upon the rope to obtain a filled laminate. Each of the layers has a plurality of longitudinal strands and a plurality of crosshatchings to form an integral net-like sheet. Ans. 3. The Examiner concludes that “Leibfred does not specifically teach depositing food strands randomly,” but finds that “Kenneally teaches a layer of dough in the form of randomly placed strings or strips on the top surface of a dough rope.” Id. at 4. According to the Examiner, [s]ince Leibfred and Kenneally teach the deposition of dough strands onto dough, it would have been obvious to one having ordinary skill in the art at the time of the invention to have utilized the teaching of Kenneally’s deposition of randomly placed strings or strips on the top surface of a dough rope to Appeal 2013-000455 Application 11/945,834 9 achieve bends, twists and winding rather than straight lines in the laminated shredded cereal dough of Leibfred. Id. Appellant argues that “[t]here clearly was no apparent reason to develop the instant claims from the elements and disclosure of Leibfred and Kenneally” (App. Br. 13) and that Kenneally teaches away from the combination suggested by the Examiner. Appellant notes that Kenneally is directed to a process for preparing cookies, including “forming a dough rope, creating a channel on its top surface, placing bits in the channel, [and] covering the bits with a partial layer of additional dough in the form of randomly placed strings or strips.” Id. at 18 (citing Kenneally Abstract). Appellant thus argues that whereas Kenneally “is concerned with prominently displaying edible bits on top of cookies,” Leibfred teaches the need for “sufficiently dense shredded cereal layers to contain a center paste filling.” Id. at 20 (emphasis added). Therefore, Appellant argues that the combination of Leibfred and Kenneally “would render the inventions of each of Leibfred and Kenneally unsuitable for their intended purposes.” Id. at 20-21. The Examiner responds that Leibfred does not “preclude a randomly deposited formation of food strands and one skilled in the art would reasonably conclude that strands would be presented in a randomized arrangement.” Ans. 21. Further, the Examiner finds that Kenneally is “a reasonably pertinent reference, because it teaches randomized strands on Appeal 2013-000455 Application 11/945,834 10 dough, which is a function especially pertinent to the invention at hand.” Id. at 22. In the Reply Brief, Appellant argues that [m]erely because the disclosures of Kenneally and Leibfred might be considered pertinent references in the art does not provide any motivation to combine any specific elements of Kenneally and Leibfred; rather the particular disclosures of the documents will dictate whether or not one of skill in the art would have had a reason to do so. Reply Br. 10 (emphasis omitted). Appellant notes that Leibfred identifies the problem of the center paste migrating towards the outer layers of the cereal biscuit during baking, and solves the problem by surrounding the paste with net-like sheets formed from linearly arranged shredding mills having specific dimensions. Id. (citing Leibfred at col. 2, l. 65 to col. 3, l. 5). Accordingly, Appellant argues that [t]he use of [Kenneally’s] randomized dough strings or strips in the filling of the products of Leibfred would not prevent migration of the pastes, thus the invention of Leibfred would be rendered inoperable for its intended use if the dough strings or strips of Kenneally were employed instead of integral nets of shredded cereal. Accordingly, it would not have been obvious to combine such elements of Leibfred and Kenneally. Id. at 11. Appellant further argues that “the only motivation to deposit ‘food strands randomly on the first layer, entangling with one another as the plurality of food strands fall to form the center-fill mat thereon’ . . . is from Appellant’s own specification.” Id. Appeal 2013-000455 Application 11/945,834 11 We find Appellant’s arguments to be persuasive. An Examiner’s proposed modification of a prior art reference cannot render that reference inoperable for its intended purpose. In re Gordon, 733 F. 2d 900, 902 (Fed. Cir. 1984). Leibfred teaches the use of interior layers having a specific configuration in order to contain a center-filled paste so that the paste does not migrate towards the outer layers during baking. Kenneally teaches only partially covering edible bits with randomly placed food strips, so that the bits remain visible from the exterior. Therefore, modifying the Leibfred interior layers by using the randomly placed dough strips of Kenneally would leave Leibfred’s method inoperable for its intended purpose. We are not convinced otherwise by the Examiner’s conclusion that it would have been obvious to combine these references because “Leibfred and Kenneally teach the deposition of dough strands onto dough” (Ans. 4), or that “Kenneally is[] . . . a reasonably pertinent reference, because it teaches randomized strands on dough” (id. at 22). For a reference to be “reasonably pertinent,” it must “logically [] have commended itself to an inventor's attention in considering his problem.” In re Icon Health & Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (quoting In re Clay, 966 F.2d 656,658 (Fed. Cir. 1992)). As the Appellant notes, the problems identified in the Specification to which the claimed invention is directed include “high food product bulk density and shredding roll wear.” Reply Br. 10. The Examiner offers no persuasive evidence demonstrating how or why Kenneally addresses these problems. Nor does the Examiner identify any “design incentives and other market forces” that would have prompted one of Appeal 2013-000455 Application 11/945,834 12 ordinary skill in the art to modify Leibfred in view of Kenneally in the manner claimed. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). As a result, we agree with Appellant that the only motivation to combine the teachings of Leibfred and Kenneally comes from Appellant’s own Specification, and therefore find that the Examiner’s obviousness objection is based on improper hindsight reasoning. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). In view of the above, we reverse the Examiner’s rejections of the pending claims based on the combination of Leibfred and Kenneally. Issue 3 – Karwowski and Kenneally The Examiner finds that Karwowski discloses a method for making shredded whole grain products, but does not “specifically teach depositing food strands randomly.” Ans. 7. As with Leibfred, the Examiner concludes that [s]ince Karwowski and Kenneally teach the deposition of dough strands onto dough, it would have been obvious to one having ordinary skill in the art at the time of the invention to have utilized the teaching of Kenneally’s deposition of randomly placed strings or strips on the top surface of a dough rope to achieve bends, twists and winding rather than straight lines in the shredded grain of Karwowski. Id. Appeal 2013-000455 Application 11/945,834 13 Appellant argues that there was no reason to combine Karwowski and Kenneally, pointing out that Karwowski alone teaches the use of a “decreased number of crosshatchings so as to provide a region of lighter texture or lower density in the interior of the chip.” App. Br. 23 (citing ¶ 75 of Karwowski). Therefore, Appellant contends that [t]he only motivation to deposit “food strands randomly on the first layer, entangling with one another as the plurality of food strands fall to form the center-fill mat thereon” and to provide a food product having “a lower bulk density than the same food product having the filling dough provided in the form of cereal shreds” is from Applicant’s own specification. Id. The Examiner responds with findings and conclusions identical to those presented with regard to Leibfred. Ans. 20-22. In the Reply Brief, Appellant argues that Karwowski discloses a food product “having a substantially uniform shredded net-like appearance.” Reply Br. 12 (citing Karwowski ¶ 34). According to Appellant, modifying Karwowski to include the random dough strings or strips of Kenneally, would “prevent achievement of a substantially uniform shredded net-like appearance.” Id. In addition, because Karwowski already “provides a suitable method for adjusting the density of layers of the shredded chip like snack to be higher or lower,” Appellant argues that “there would not have been any motivation to develop the invention of claim 1 from the proposed combination of Karwowski and Kenneally.” Id. Appeal 2013-000455 Application 11/945,834 14 For the same reasons as discussed above, we find Appellant’s arguments to be persuasive. Kenneally’s use of random strings teaches away from Karwowski’s disclosure of a food product having a “substantially uniform shredded net-like appearance.” Additionally, as Karwowski already discloses a method for adjusting the density of the layers, we agree with Appellant that the only motivation to combine the teachings of Kenneally and Karwowski came from Appellant’s Specification. Therefore, we reverse the Examiner’s obviousness rejections based on Karwowski and Kenneally. Issue 4 – Kostival, Karwowski, and Kenneally The Examiner finds that Kostival teaches a “ready to bake dough product with shaped filling (abstract).” Ans. 13. The Examiner further finds that Kostival does not teach “entangling to form the center-fill mat” (id. at 14) or “depositing food strands randomly” (id. at 15). The Examiner concludes that it would have been obvious to a person of ordinary skill in the art to utilize the combination of Kostival with Karwowski and Kenneally to arrive at the claimed subject matter. Applicant argues that “Kostival teaches the use of shaped filling (e.g., rectangle, triangle, pentagon, etc.) ‘to minimize or avoid exposure or spilling during processing, handling, or baking,’ (Abstract) thus to instead use randomly deposited food strands would render the invention of Kostival unsuitable for its intended purpose.” App. Br. 26. Appeal 2013-000455 Application 11/945,834 15 The Examiner did not address this argument other than to conclude that Kostival does not “preclude a randomly deposited formation of food strands.” Ans. 21. For all of the reasons discussed above with regard to Karwowski and Kenneally, and in the absence of any further response from the Examiner, we find Appellant’s argument to be persuasive. Accordingly, we reverse the Examiner’s obviousness rejections based on Kostival in combination with Karwowski and Kenneally. CONCLUSION For the reasons set forth above, we reverse the rejection under 35 U.S.C. § 112, ¶ 1and the rejections under 35 U.S.C. § 103(a) of claims 1-18. REVERSED bar Copy with citationCopy as parenthetical citation