Ex Parte Cross et al

Patent Trial and Appeal Board

Nov 5, 2014

12195264 (P.T.A.B. Nov. 5, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
12/195,264 08/20/2008 James C. Cross 36178-DIV1 8159
23589 7590 11/05/2014
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
MAIL DATE DELIVERY MODE
11/05/2014 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 JAMES C. CROSS, FEDERICO T. CORCORO JR.,
ANKE E. GOLDE, and SENGNGEUNE KATTHANAME
____________________

Appeal 2012-008210
Application 12/195,264
Technology Center 1700
____________________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and
ROMULO H. DELMENDO, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellants seek review of the Examiner’s decision to reject claims 1–
8, 10–14, 16–23, 25–29, and 31–34. We have jurisdiction under 35 U.S.C.
§§ 6(b) and 134(a).
We AFFIRM.

The claims are directed to methods of preparing a coated food
product. See, e.g., claims 1 and 16. Claim 1 is illustrative:
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1. A method of preparing a coated food product that
resembles a fat-coated confection, said method comprising the
steps of:
providing a food piece having an outer surface;
applying a fat-based liquid coating composition to said
outer surface; and
applying a particulate material to said outer surface,
wherein at least a portion of said particulate material applying
step is carried out simultaneous to said liquid coating
composition applying step so as to yield said coated food
product that resembles a fat-coated confection, wherein said
coated food product comprises a coating with a melting point of
at least about 125°F.
Claims Appendix at Appeal Br. 31.
The Examiner rejects all the pending claims under 35 U.S.C. §112, ¶ 2
as indefinite, and also rejects all of the pending claims under 35 U.S.C.
§ 103(a) as obvious over Green.1

OPINION
Indefiniteness
With regard to the indefiniteness rejection, it is the language “a coated
food product that resembles a fat-coated confection” in claims 1 and 16 that
is at issue. As Appellants do not argue the claims separately, we select
claim 1 as representative.
The Examiner determines that “[i]t is not clear what properties the
claimed coated food product must exhibit to ‘resemble’ a fat-coated

1 Green et al., US 6,139,886, patented Oct. 31, 2000.
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confection or what types of confections are encompassed by the term ‘fat-
coated confection.’” Ans. 4–5.
Appellants contend that, based upon the description of the invention
in the Specification and the working examples, “it would be immediately
apparent to one of ordinary skill in the art that a food product that
‘resembles’ a fat-coated confection is one that has a fat-based coating similar
to traditional fat-coated confections, but has improved properties that are
achieved using the described methods of the claimed invention.” Appeal Br.
16. According to Appellants, the “use of this term differentiates the claimed
methods from methods of making other types of coated food pieces, such as
aqueous, sugar-frosted cereals, etc.” Appeal Br. 16–17.
The definiteness of the language must be analyzed in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971). Thus, we
start with a review of the written description of the Specification.
The written description characterizes the invention as directed to “new
heat-stable, lower fat, coated food products.” Spec. 2:2–3.
The food product is formed by applying a liquid coating composition
and a particulate material to the outer surface of a food piece. Spec. 2:3–19.
Appellants exemplify, for instance, coating almonds with a chocolate-
flavored coating and a sugar/dextrose/cocoa powder dust blend. Example 1
at Spec. 5–7. The Specification further includes examples directed to
preparing a yogurt-flavored coating on cereal flakes, a chocolate-flavored
coating on oat-based cereal rings, a raspberry yogurt-flavored coating on
expanded cereal pieces, a cheese-flavored coating on pretzels, and a mixed
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berry-flavored coating on expanded cereal pieces. Examples 2–6 at Spec. 7–
17.
After applying the liquid coating composition and particulate, the
coated food product is exposed to hot air. Spec. 2:20–28. In Example 1, the
Appellants explain that “[w]hen the bed of the product was about 95°F
(typically anywhere from about 85-95°F), the product lost its dusty
appearance and began to resemble a fat-coated confection.” Spec. 7:16–18
(emphasis added). The other examples contain similar language equating a
confection that “resembles a fat-coated confection” with a product that loses
its dusty appearance upon exposure to hot air. See Examples 2–6 at Spec. 7–
17.
The second paragraph of 35 U.S.C. § 112 requires the specification
“conclude with one or more claims particularly pointing out and distinctly
claiming the subject matter which the applicant regards as his invention.” 35
U.S.C. § 112, ¶ 2. “As the statutory language of ‘particular[ity]’ and
‘distinct[ness]’ indicates, claims are required to be cast in clear—as opposed
to ambiguous, vague, indefinite—terms.” In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014). Exact precision is not required. The test for
determining the question of indefiniteness may be formulated as whether the
claims “set out and circumscribe a particular area with a reasonable degree
of precision and particularity.” Moore, 439 F.2d at 1235. With regard to the
reasonableness standard, one must consider the language in the context of
the circumstances. Packard, 751 F.3d at 1313.
During prosecution, the burden of precise claim drafting is on the
applicant as the applicant is in the best position to resolve ambiguities
through amendment and argument. In re Morris, 127 F.3d 1048, 1056 (Fed.
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Cir. 1997); see also Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244,
1255 (Fed. Cir. 2008). “Only in this way can uncertainties of claim scope be
removed, as much as possible, during the administrative process.” In re
Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989).
Appellants have not resolved the question of ambiguity as it relates to
the phrase “resembles a fat-coated confection.”
As a first matter, Appellants’ arguments do not adequately respond to
the Examiner’s determination that it is unclear “what types of confections
are encompassed by the term ‘fat-coated confection.’” Ans. 4–5.
Appellants’ Specification does not define the term. The Specification does
not indicate whether the term means confections coated with fat only and/or
confections coated with a coating material containing some specified amount
of fat, or confections coated with a coating material having some other
property that identifies the genus of materials encompassed by the term.
Although the Specification appears to use the term “fat-coated confection”
in the context of prior art fat-coated confections, the Specification merely
describes these prior art confections as “relatively high in fat” without any
discussion of coating materials, coating properties, and/or coating
appearances. Spec. 4:26-28; Appeal Br. 16. In contrast to the “relative high
fat” prior art fat-coated confections, the Specification states that the coated
product can contain less than about 10% by weight fat, and another
preferable range of from about 4-9%. Spec. 4:26–29. Thus, based on
Appellants’ description in the Specification, we agree with the Examiner that
the scope of what constitutes a “fat-coated confection” is unclear.
Appellants seek to use the term “resembles” in the claims to refer to a
confection “that has a fat-based coating similar to traditional fat-coating
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confections, but has improved properties that are achieved using the
described methods of the claimed invention.” Appeal Br. 16 (emphasis
added).
There is no guidance in the Specification for the use of the word
“resemble” in the manner advanced by Appellants. Nor do Appellants
identify the degree of similarity required to “resemble” a fat-coated
confection. Although the Specification uses the term “resemble” in a visual
sense to describe the appearance of the confection as different than dusty, it
does not define any visual or physical attributes associated with the phrase
“resembles a fat-coated composition.”. In particular, we agree with the
Examiner, that it is not clear what visual attributes (smoothness, glossiness,
oiliness, etc.) define a product as resembling a fat-coated confection. Ans.
13. Nor is there any guidance on what levels of those attributes
(smoothness, glossiness, oiliness, etc.) would suffice to make the coated
product “resemble a fat-coated confection.”
We sustain the indefiniteness rejection.

Obviousness
Appellants contend that the term “resembles” “differentiates the
claimed methods from methods of making other types of coated food pieces,
such as aqueous, sugar-frosted cereals, etc.” Appeal Br. 16–17. But the
meaning of “resembles” is unclear.
Appellants further contend that independent claims 1 and 16 require
applying a “fat-based” liquid coating composition to the outer surface of a
food piece, and there is no teaching or suggestion of a coating in Green that
is “fat-based.” But given the indefiniteness of the language “resembles a fat-
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coated confection,” it is further unclear what compositions are encompassed
by “fat-based” as that term is used in claims 1 and 16. The Specification
does not provide any guidance regarding what compositions are within the
genus of fat-based compositions. Perhaps there is some ratio of oil to water
one of ordinary skill in art would understand would render a coating
composition to be “fat-based” rather than water-based, but there is no
evidence relied upon by Appellants allowing us to determine what that ratio
might be. The “resembles” language further blurs the boundary.
The indefiniteness issue forecloses us from reaching the merits of the
obviousness rejection. We would have to make assumptions about the
meaning of “resembles a fat-coated confection” and the scope of “fat-based
liquid coating composition” as it relates to “[a] method of preparing a coated
food product that resembles a fat-coated confection” in order to decide the
issue of obviousness. It is not appropriate to engage in such speculation to
render a decision on a prior art rejection. In re Steele, 305 F.2d 859, 862
(CCPA 1962).
Thus, we procedurally reverse the obviousness rejection. In other
words, we do not consider whether Green would have taught or suggested
the method of the claims. We emphasize that this is a technical reversal of
the rejection under 35 U.S.C. § 103(a), and not a reversal based upon the
merits of the rejection.

CONCLUSION
We sustain the Examiner’s rejection under 35 U.S.C. § 112, ¶ 2, and
procedurally reverse the rejection under 35 U.S.C. §103(a) without reaching
the merits of that rejection.
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DECISION
The Examiner’s decision is affirmed.

TIME PERIOD FOR RESPONSE
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).

AFFIRMED

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