Ex Parte Chatel

Patent Trial and Appeal Board

Jun 25, 2014

11945834 (P.T.A.B. Jun. 25, 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.
11/945,834 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.
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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).
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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
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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
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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
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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.
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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,
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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
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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
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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.
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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
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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.
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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.
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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.
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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

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