Ex parte Donovan

Board of Patent Appeals and Interferences

Aug 31, 1999

07959995 (B.P.A.I. Aug. 31, 1999)

Application for patent filed October 13, 1992. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARGARET E. DONOVAN
____________
Appeal No. 1997-2014
Application No. 07/959,9951
____________
ON BRIEF
____________
Before JOHN D. SMITH, GARRIS and KRATZ, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1 through 20 which are all of the claims in the
application.
The subject matter on appeal relates to a no fat, no
cholesterol cake, to a dry premix for making such a cake and
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Application No. 07/959,995
2
to a process for making such a cake. This appealed subject
matter is adequately illustrated by independent claim 1 which
reads as follows:
1. A no fat, no cholesterol cake, consisting
essentially of:
flour;
sugar;
baking soda;
egg whites; and
an acidic component consisting of fruit and/or fruit
juice which reacts with the baking soda to leaven the cake,
said cake being substantially free of added fat and containing
not more than 0.5 grams of fat and not more than 2 mg. of
cholesterol per 100 gram serving.
The references relied upon by the examiner as evidence of
obviousness are:
Fahlen 4,971,823 Nov. 20,
1990
Dobbin, “Applesauce Cake,” The Low Fat, Low Cholesterol Diet,
Doubleday & Company, Inc., New York (1951) pp. 242-243.
Matz, “Chemically Leavened Bread and Rolls,” Formula and
Processes for Bakers, Pan Tech International, Inc., Texas
(1987)
pp. 102-105.
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California Prune Board, “Utilization of Dried Plums in
Reduced-Fat/Cholesterol-Free Bakery Products,” Research
Report, dated 1992.
Claims 1 through 11 and 13 through 19 stand rejected
under 35 U.S.C. § 103 as being unpatentable over Dobbin in
view of Fahlen and Matz.
Claims 1 through 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over the California Prune Board
reference.
According to the appellant (e.g., see page 2 of the Brief
and page 2 of the Reply Brief), the claims on appeal are
grouped separately as follows:
(1) claims 1, 4, 5;
(2) claims 2, 3, 8-12;
(3) claims 6, 7; and
(4) claims 13-20.
We refer to the several Briefs and Answers of record for
a complete exposition of the opposing viewpoints expressed by
the appellant and the examiner concerning the above noted
rejections.
OPINION
Appeal No. 1997-2014
Application No. 07/959,995
We here clarify and emphasize that the disclosure2
relied upon by the examiner in support of her rejection of
claims 1 through 20 constitutes the “oat bran muffins”
teachings in the California Prune Board reference which bears
the date “2/92” on the last page thereof. The examiner’s
referrals to other documents such as the California Prune
Board reference which bears the date “1/91” and a Washington
Post article are not relevant to the obviousness issues raised
by this rejection. It follows that we have not considered
these other documents in assessing the propriety of the
rejection in question.
4
For the reasons which follow, we will sustain the § 103
rejection of claims 1 through 11 and 13 through 19 as being
unpatentable over Dobbin in view of Fahlen and Matz but not
the
§ 103 rejection of claims 1 through 20 as being unpatentable
over the California Prune Board reference.
Concerning this last mentioned reference, the appellant
and the examiner disagree as to whether the reference, vis à
vis its publication date, has been established on this record
as prior art against the here claimed invention . Even2
assuming that the California Prune Board reference
constitutes prior art with respect to the appealed claims,
however, it is clear to us that the examiner’s rejection based
on this references cannot be sustained. This is because the
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reference disclosure concerning “oat bran muffins”, which the
examiner relies upon as support for her obviousness
conclusion, quite plainly would not have suggested the here
claimed invention.
More specifically, the aforementioned disclosure relates
to a muffin product having a fat content many times higher
than the maximum allowed by independent claims 1 and 8.
Moreover, the examiner’s position that it would have been
obvious to lower the fat content of this product so as to be
within the here claimed range simply is not supported by the
requisite teaching/ suggestion and reasonable expectation of
success. In re O’Farrell, 853 F.2d 894, 903-904, 7 USPQ2d
1673, 1680-1681 (Fed. Cir. 1988). Similarly, the California
Prune Board reference contains no teaching or suggestion of a
dry premix having the ingredients and proportions defined by
appealed independent
claim 6.
In light of these evidentiary deficiencies, we cannot
sustain the examiner’s § 103 rejection of claims 1 through 20
as being unpatentable over the California Prune Board
reference.
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On the other hand, it is appropriate that we sustain the
examiner’s § 103 rejection of claims 1 through 11 and 13
through 19 as being unpatentable over Dobbin in view of Fahlen
and Matz.
Notwithstanding the appellant’s arguments to the
contrary, it is our opinion that Fahlen would have suggested
to one with an ordinary level of skill in the art substituting
a fruit material such as fruit paste for the oil used in
Dobbin’s “Applesauce Cake” recipe based upon a reasonable
expectation of success. This suggestion and expectation of
success would have arisen from Fahlen’s teaching of desirably
and successfully replacing fat with fruit paste in a bread
product (e.g., see lines 17 through 23 and 26 through 38 in
column 1). While we appreciate the appellant’s point that
such products are distinct from cake products of the type
under consideration, an artisan with ordinary skill would have
considered the benefits associated by Fahlen with this
replacement (e.g., a more healthy food product while
maintaining flavor and processability) as being applicable to
cake products of the type taught by Dobbin.
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Concerning the matter of leavening, the appellant3
argues that Dobbin relies upon heat, soda and salt to produce
a leavening reaction, rather than a fruit acid component and
baking soda as here claimed, and that the applesauce of
Dobbin’s recipe is not believed to contain sufficient acid to
effect the here claimed reaction. On the record before us,
however, this argument is without evidentiary support of any
kind and thus must be regarded as purely speculative.
7
Further, the leavening reaction between fruit acid and
baking soda, which is recited in appealed independent claims 1
and 8, would have been suggested and expected to the artisan
in view of the Matz disclosure (e.g., see the first and second
paragraphs on page 102, the paragraph bridging pages 102 and
103, the first full paragraph on page 103 and the first and
second paragraphs on page 105) . As support for her3
nonobviousness position, appellant argues that Matz teaches
that acidic fruit products are undesirable. From our
perspective, however, Matz simply teaches that premature and
nonuniform leavening reactions between baking soda and acidic
food ingredients such as fruit juices are undesirable (again
see the first two paragraphs on page 105). Clearly, the Matz
teaching as a whole would not have dissuaded the artisan from
using fruit products in the manner under consideration.
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Application No. 07/959,995
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We also agree with the examiner that it would have been
obvious for an artisan to modify the applesauce cake recipe of
Dobbin so as to utilize flour, sugar and baking soda
proportions (e.g., see appealed claims 2, 3, 8-12) within the
ranges here claimed and concomitantly to eliminate salt (see
appealed claims 13-19) from this recipe motivated by a desire
and reasonable expectation of success in relation to obtaining
a flavorful and healthy food product. As for the dry premix
feature of independent claim 6 and the claims which depend
therefrom, it would have been obvious for the artisan to
combine the dry ingredients of Dobbin’s applesauce cake recipe
as a dry premix, thereby obtaining the handling and processing
advantages associated with a dry premix, in view of, for
example, Matz’s teaching of dry premixes as well known in the
prior art (e.g., see the first paragraph on page 105).
In light of the foregoing, it is our determination that
the Dobbin, Fahlen and Matz references establish a prima facie
case of obviousness with respect to appealed claims 1 through
11 and 13 through 19. As support for her nonobviousness
position, the appellant proffers several affidavits which
praise the taste of cake samples given to the affiants by the
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appellant. Clearly, however, these cake samples were limited
to specific ingredients and proportions and thus much more
narrow in scope than the appealed claims. Indeed, in the
appellant’s submission “What was Learned from the baking
experiments” (referred to in the paragraph bridging pages 16
and 17 of the Brief), it is stated (apparently by the
appellant) “you must have a high acidic fruit that employs
LOTS of flavor in the cake and in chunk form, this is what
differentiates my cakes from all the rest” (see the last
sentence of this submission). Significantly, none of the
appealed claims are limited to high acidic fruit in chunk
form. It follows that the affidavit evidence of
nonobviousness, even when viewed in its most favorable light,
is considerably more narrow in scope than the here claimed
subject matter and accordingly that this evidence is not
sufficient to rebut the prima facie case of obviousness
established by the Dobbin, Fahlen and Matz references. In re
Dill, 604 F.2d 1356, 1361, 202 USPQ 805, 808 (CCPA 1979).
In addition, it is questionable whether the flavorful
taste referred to in these affidavits would have been
unexpected to one with an ordinary skill in the art. This is
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because Fahlen explicitly teaches that replacing fat with a
fruit product (i.e., fruit paste) yields an acceptable food
product. Although the food product of Fahlen is bread, an
artisan with ordinary skill would have expected similar
acceptable results in the context of a cake food product as
discussed previously.
Under these circumstances, it is our ultimate conclusion
that all the evidence of record, on balance, weighs most
heavily in favor of an obviousness conclusion. We shall,
therefore, sustain the examiner’s § 103 rejection of claims 1
through 11 and 13 through 19 as being unpatentable over Dobbin
in view of Fahlen and Matz.
The decision of the examiner is affirmed-in-part.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
BRADLEY R. GARRIS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
PETER F. KRATZ )
Administrative Patent Judge )
bae
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Robert E. Purcell
Reilly & Purcell
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