Ex Parte Dufort

Board of Patent Appeals and Interferences

Apr 30, 2009

10899049 (B.P.A.I. Apr. 30, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHRISTIAN DUFORT
____________

Appeal 2008-6292
Application 10/899,049
Technology Center 1700
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Decided:1 April 30, 2009
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Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, 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 through 16. Claims 17 through 20, the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6292
Application 10/899,049

other claims pending in this application, stand withdrawn from consideration
by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM.

STATEMENT OF THE CASE
The subject matter on appeal is directed to a frozen reconstituted
biscuit.
Further details of the appealed subject matter are recited in claim 1,
which is reproduced below:
1. A frozen reconstituted biscuit extrudable at negative temperatures,
which comprises a mixture of:

baked biscuit pieces which have been frozen beforehand, and

a dispersion binder for the biscuit pieces comprising a meringue that
is overrun, wherein the meringue comprises carbohydrates and an overrun-
promoting protein chosen from egg white or egg white substitutes of milk
origin, with the binder being frozen at a negative temperature ranging from
-3 °C to -8 °C,

wherein the mixture of biscuit pieces and dispersion binder has an
overrun of 80 to 150%.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following:

Ehrlich US 3,393,074 July 16, 1968

Mary Berry et al., "Cakes & Quick Breads Know-how," Classic Home
Cooking, Dorling Kindersley Publishing, Inc., p. 462 (1995) (hereinafter
"Classic Home Cooking").

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Appellant’s admitted prior art (Appellant’s Specification, p. 1, l. 10 to p. 2, l.
13, entered July 27, 2004, hereinafter “AAPA”).
Appellant appeals the following rejection of the Examiner:
Claims 1-16 under 35 U.S.C. § 103(a) as unpatentable over the
combined disclosures of Ehrlich, Classic Home Cooking, and AAPA.
Appellant separately argues the rejection of independent claim 1.
(App. Br. 9-14 and Reply Br. 2-6). Appellant does not advance any specific
argument regarding the rejection of the remaining claims, which ultimately
depend from independent claim 1. (App. Br. 9-14 and Reply Br. 2-6).
Instead, Appellant refers to arguments made in connection with the rejection
of independent claim 1. (Reply Br. 6).
Accordingly, we address Appellant's arguments regarding the
rejection with respect to claim 1 only. See 37 C.F.R. §
41.37(c)(1)(vii)(2007).

ISSUES
Appellant argues that "Ehrlich fails to disclose or suggest a frozen
reconstituted biscuit extrudable at negative temperatures with a binder being
frozen at a negative temperature ranging from -3° C to -8° C [and] . . .
Classic [i.e., Classic Home Cooking] also fails to disclose or suggest baked
biscuit pieces with a binder being frozen at a negative temperature ranging
from -3° C to -8° C or a mixture of biscuit pieces and dispersion binder that
has an overrun of 80 to 150% as required, in part, by Claim 1." (Reply Br.
4-5).
Appellant also argues that "the Examiner has applied hindsight
reasoning by selectively piecing together teachings of each of the references
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in an attempt to recreate what the claimed invention discloses." (Reply. Br.
6).
Additionally, Appellant argues that "Ehrlich . . . teaches away from
the combination with Classic. For example, while Ehrlich is designed
specifically for preparation of a solid dessert without baking . . . all of the
products listed in Classic . . . are baked to produce a finished product."
(App. Br. 11). Appellant also argues that
With cake products such as the product disclosed in
Ehrlich, gas and egg/milk protein combine to incorporate
gas into the product to potentially "fluff" the texture of the
product. . . . As a result, cakes such as an angel food cake
are essentially a heterogeneous combination of cake and
air products.
By contrast . . . [i]n this case, the overrun is
possessed, retained and incorporated into the solids to
create a homogeneous composition that has decreased
density due to the incorporation of gas.
(App. Br. 13).
Referring to an affidavit2 under 37 C.F.R. § 1.132 by John Green
(hereinafter "Green Declaration"), Appellant argues that
Ehrlich teaches away from the present claims. . . .
. . . .

2 37 C.F.R. § 1.132 requires that "any evidence submitted to traverse the
rejection or objection on a basis not otherwise provided for must be by way
of an oath [e.g., affidavit] or declaration under this section." Although this
document is not a proper affidavit since no oath was taken before a notary
public, magistrate, or other officer authorized to administer oaths, we
determine that this document meets the requirements for a declaration under
37 C.F.R. § 1.68. See Manual of Patent Examination Procedure (MPEP) §
715.04(II) (8th ed., Rev. 6, Sept. 2007). As such, it qualifies as evidence
under 37 C.F.R. § 1.132.
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. . . because it first needs to be reconstituted with water at
ambient temperature or at warm temperatures in order to
activate the binder and create its cake texture." Id. After
reconstitution the cake mass in Ehrlich is not compatible
with ice cream during storage because texture is not
adapted for ambient or warm consumption. Furthermore,
the cake mass in Ehrlich is not suitable for processing at
freezing temperatures without excessive crumbling of the
cake mass.
(App. Br. 10-11) (quoting the Green Declaration).
Appellant argues that "[b]ecause the resulting biscuit characteristics
were 'suprisingly found,' the presently claimed subject matter provides
significant advantages . . ." such as "provid[ing] a supple biscuit-based
pastry raw material that is extrudable at freezing temperatures. (App. Br.
11) (quoting the Green Declaration).
Thus, the issues are as follows: (1) Has Appellant shown reversible
error in the Examiner's determination that Ehrlich, in combination with the
other cited prior art, would have suggested a frozen reconstituted biscuit
extrudable at negative temperatures having "baked biscuit pieces which have
been frozen beforehand, and . . . the binder being frozen at a negative
temperature ranging from -3°C to -8°C, wherein the mixture of biscuit
pieces and dispersion binder has an overrun of 80 to 150%" as
recited in claim 1 within the meaning of 35 U.S.C. § 103 and (2) if not, are
Appellant's arguments and evidence sufficient to rebut the Examiner's prima
facie case? We decide these issues in the negative.

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FINDINGS OF FACT (FF)
1. The Specification states that the frozen reconstituted biscuit may be
formed by mixing a frozen dispersion binder, which may have an
overrun of 175%, with baked biscuit pieces. (Spec. 5-6). This
dispersion binder may include, inter alia, carbohydrates, water, and an
overrun-promoting protein, which may be an egg white. (Spec. 5-6).
The baked biscuit pieces may be "cooled and cut into pieces" prior to
mixing with the dispersion binder. (Spec. 5).
2. Ehrlich teaches preparing a dessert without baking. (Ehrlich, col. 1, ll.
16-17). This dessert, which may be a cake or cookie, is composed of
pre-baked dough particles mixed with a binder, which may include,
inter alia, carbohydrates, water, and egg white. (Ehrlich, col. 1, ll. 16-
17; col. 2, l. 18 to col. 3, l. 25). This binder holds the pre-baked
dough particles together and may be foamed (i.e., have a high
overrun). (Ehrlich, col. 3, ll. 27-29 and col. 5, ll. 1-4). Ehrlich does
not mention freezing the dessert. Also, Appellant does not direct us to
any teaching in Ehrlich that discourages freezing its dessert.
3. Ehrlich teaches that
[t]he moistened particles when being transferred into
the mold are quite loose. The air space between them
has to be reduced by compressing the loose mass.
The pressure must be sufficient to make the particles
adhere to each other with the help of the binder. But
any compression beyond that point is only necessary
when a more compact dessert is desired . . .
(Ehrlich, col. 4, ll. 69-75).
4. Classic Home Cooking teaches that "there are lots of cakes . . . [and]
cookies . . . that are really quite simple to make." (Classic Home
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Cooking, p. 462). Classic Home Cooking states, "[m]ost cakes are
best eaten freshly made." (Classic Home Cooking, p. 462). Classic
Home Cooking also states that freezing "is a good way of keeping
cakes fresh if they are not eaten immediately. [C]ookies [also] . . .
freeze well." (Classic Home Cooking, p. 462). Although Classic
Home Cooking teaches baking cakes and cookies, Classic Home
Cooking does not limit its disclosure to these baked foods. Moreover,
Appellant does not direct us to any teaching in Classic Home Cooking
that discourages desserts prepared without baking or freezing a
previously baked cake.
5. Appellant has not directed us to any persuasive evidence in the record
to support the argument that Ehrlich's cake is a "heterogeneous
combination of cake and air products" and that Appellant's invention
is "a homogeneous composition that has decreased density due to the
incorporation of gas." (App. Br. 13) (emphasis omitted).
6. Green Declaration (p. 3) states that the "texture [of Ehrlich's cake] is
adapted for ambient or warm consumption. Furthermore, the cake
mass in Ehrlich is not suitable for processing at freezing temperatures
without excessive crumbling of the cake mass." Appellant has
presented no persuasive evidence supporting this opinion evidence.

PRINCIPLES OF LAW
The Examiner has the initial burden of presenting a prima facie case
of unpatentability. In re Thorpe, 777 F.2d 695, 697 (1985). "The
patentability of a product does not depend on its method of production."
Thorpe, 777 F.2d at 697.
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As stated in In re Brown, 459 F.2d 531, 535 (CCPA 1972):
[T]he lack of physical description in a product-by-
process claim makes determination of the
patentability of the claim more difficult, since in spite
of the fact that the claim may recite only process
limitations, it is the patentability of the product
claimed and not of the recited process steps which
must be established. We are therefore of the opinion
that when the prior art discloses a product which
reasonably appears to be either identical with or only
slightly different than a product claimed in a product-
by-process claim, a rejection based alternatively on
either section 102 or section 103 of the statute is
eminently fair and acceptable. As a practical matter,
the Patent Office is not equipped to manufacture
products by the myriad of processes put before it and
then obtain prior art products and make physical
comparisons therewith.

“[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art.” In re Boesch,
617 F.2d 272, 276 (CCPA 1980).
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning . . .” In re McLaughlin,
443 F.2d 1392, 1395 (CCPA 1971). Reconstruction is proper if it relies
upon knowledge within the level of ordinary skill at the time of the invention
and not upon knowledge gained solely from Appellant's disclosure. Id.
"A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant." In re Gurley, 27 F.3d 551, 553
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(Fed. Cir. 1994). "A known or obvious composition does not become
patentable simply because it has been described as somewhat inferior to
some other product for the same use." Id.
A factual finding not shown by Appellant to be erroneous may be
accepted as fact. In re Kunzmann, 326 F.2d 424, 426 n. 3 (CCPA 1964).
“[W]here the prior art gives reason or motivation to make the claimed
[invention] . . . the burden (and opportunity) then falls on an applicant to
rebut that prima facie case. Such rebuttal or argument can consist of . . .
[any] argument or presentation of evidence that is pertinent.” In re Dillon,
919 F.2d 688, 692-93 (Fed. Cir. 1990) (en banc) (emphasis omitted).
"Where a product-by-process claim is rejected over a prior art product
that appears to be identical, although produced by a different process, the
burden is upon the applicants to come forward with evidence establishing an
unobvious difference between the claimed product and the prior art
product." In re Marosi, 710 F.2d 799, 803 (1983).
It is well settled that objective evidence must be factually supported
by an appropriate affidavit or declaration. See In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984). "[A]ppellants have the burden of explaining the
data in any declaration they proffer as evidence of non-obviousness."
Ex parte Ishizaka, 24 USPQ2d 1621, 1624 (BPAI 1992).
Opinion evidence in a declaration has little value without factual
support. In re Beattie, 974 F.2d 1309, 1313 (Fed. Cir. 1992); see also In re
Lindell, 385 F.2d 453, 456 (CCPA 1967) (Although an affiant's or
declarant's opinion on the ultimate legal issue is not evidence in the case,
“some weight ought to be given to a persuasively supported statement of one
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skilled in the art on what was not obvious to him.” (emphasis added)).
"Moreover, an applicant relying on comparative tests to rebut a prima facie
case of obviousness must compare his claimed invention to the closest prior
art." De Blauwe, 736 F.2d at 705.

ANALYSES AND CONCLUSIONS
ISSUE (1): Has Appellant shown reversible error in the Examiner's
determination that Ehrlich, in combination with other cited prior art, would
have suggested a frozen reconstituted biscuit extrudable at negative
temperatures having "baked biscuit pieces which have been frozen
beforehand, and . . . the binder being frozen at a negative temperature
ranging from -3°C to -8°C, wherein the mixture of biscuit pieces and
dispersion binder has an overrun of 80 to 150%" as recited in claim 1 within
the meaning of 35 U.S.C. § 103?

Ehrlich teaches a dessert, which may be a cake or cookie, composed
of pre-baked dough particles mixed with a binder, which may include, inter
alia, carbohydrates, water, and egg white (FF 2). This binder may be
foamed (i.e., have a high overrun). (FF 2).
Ehrlich does not mention freezing its dessert. (FF 2). Classic Home
Cooking teaches, "there are lots of cakes . . . [and] cookies . . . that are really
quite simple to make." (FF 4). Classic Home Cooking states, "[m]ost cakes
are best eaten freshly made." (FF 4). Classic Home Cooking also states that
freezing "is a good way of keeping cakes fresh if they are not eaten
immediately. [C]ookies [also] . . . freeze well." (FF 4).
Thus, like the Examiner, we determine that one having ordinary skill
in the art would have been led to freeze Ehrlich's dessert comprised of pre-
baked biscuit pieces and binder with a reasonable expectation of
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successfully keeping it fresh during storage. Moreover, Ehrlich teaches (FF
3) that
[t]he moistened particles when being transferred into the
mold are quite loose. The air space between them has to
be reduced by compressing the loose mass. The pressure
must be sufficient to make the particles adhere to each
other with the help of the binder. But any compression
beyond that point is only necessary when a more compact
dessert is desired . . .

In other words, Ehrlich recognizes that the air space in the dessert (i.e.,
overrun) is a result effective variable, which is controlled by the amount the
loose mass is compressed.
Thus, we determine that the optimum overrun of the dessert to suit the
particular end use, including the claimed overrun, would have been well
within the ambit of one of ordinary skill in the art.3
Therefore, we determine that the frozen dessert having baked biscuit
pieces and a frozen binder suggested by Ehrlich and Classic Home Cooking
"reasonably appears to be either identical with or only slightly different"
from the claimed frozen reconstituted biscuit. Brown, 459 F.2d at 535.
In reaching this determination, we have considered Appellant's
argument that the cited prior art do not teach a frozen reconstituted biscuit
extrudable at negative temperatures prepared from frozen baked biscuit
pieces and a binder being frozen at a negative temperature ranging from -3
°C to -8 °C. (Reply Br. 4-5). Appellant, however, fails to recognize that the

3 We note that a discussion of AAPA is unnecessary to resolve the issue
raised.
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claims on appeal are directed to a frozen biscuit, and not to a process for
making the same. Thorpe, 777 F.2d at 697.
Appellant also argues that "the Examiner has applied hindsight
reasoning by selectively piecing together teachings of each of the references
in an attempt to recreate what the claimed invention discloses." (Reply Br.
6). Appellant's argument misses the mark.
In reference to our above discussion, Ehrlich teaches a dessert, which
may be a cake or cookie, having pre-baked dough particles mixed with a
foamed binder. Classic Home Cooking teaches freezing cakes and cookies
to maintain freshness. Thus, one having ordinary skill in the art would have
been led to freeze Ehrlich's dessert with a reasonable expectation of
successfully keeping it fresh during storage.
Therefore, we determine that the Examiner does not rely on
impermissible hindsight, but rather on the knowledge of those skilled in the
art at the time of the invention as a reason for making the modification to
Ehrlich.
Appellant also argues, "Ehrlich . . . teaches away from the
combination with Classic. For example, while Ehrlich is designed
specifically for preparation of a solid dessert without baking . . . all of the
products listed in Classic . . . are baked to produce a finished product."
(App. Br. 11). We disagree.
Ehrlich’s product is comprised of pre-baked dough pieces held
together by a binder. (FF 2). Classic Home Cooking teaches that baked
products may be frozen. (FF 4). Ehrlich does not discourage one skilled in
the art from freezing the pre-baked dough pieces and binder product. In fact,
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the combined teachings of Ehrlich and Classic Home Cooking would have
suggested freezing a pre-baked product to maintain freshness. Accordingly,
we determine that Ehrlich does not teach away from freezing the previously
baked products as taught by Classic Home Cooking.
Thus, it follows that Appellant has not shown reversible error in the
Examiner's determination that Ehrlich, in combination with the other cited
prior art, would have suggested a frozen reconstituted biscuit extrudable at
negative temperatures having "baked biscuit pieces which have been frozen
beforehand, and . . . the binder being frozen at a negative temperature
ranging from -3°C to -8°C, wherein the mixture of biscuit pieces and
dispersion binder has an overrun of 80 to 150%" as recited in claim 1 within
the meaning of 35 U.S.C. § 103.
Therefore, because the Examiner has established a prima facie case of
obviousness, we determine that the burden properly shifted to Appellant to
present persuasive arguments or evidence refuting the Examiner’s prima
facie case. We now consider Appellant’s arguments and evidence.

ISSUE (2): If Appellant has not shown error in the Examiner's
determination that Ehrlich, in combination with the other cited prior art,
would have suggested the claimed invention having the disputed features,
are Appellant's arguments and evidence sufficient to rebut the Examiner's
prima facie case?

Appellant argues that the Ehrlich’s product differs from Appellant’s
claimed product. Specifically, Appellant argues that:
With cake products such as the product disclosed in
Ehrlich, gas and egg/milk protein combine to incorporate
gas into the product to potentially "fluff" the texture of the
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product. . . . As a result, cakes such as an angel food cake
are essentially a heterogeneous combination of cake and
air products.

By contrast . . . [i]n this case, the overrun is
possessed, retained and incorporated into the solids to
create a homogeneous composition that has decreased
density due to the incorporation of gas.

(App. Br. 13). We do not find this argument persuasive.
It is well settled that objective evidence must be factually supported
by an appropriate affidavit or declaration. See De Blauwe, 736 F.2d at 705.
In this case, Appellant has not directed us to any objective evidence in an
affidavit or declaration to support this argument. (FF 5). Accordingly,
Appellant’s mere attorney argument is insufficient to establish that Ehrlich’s
product differs from Appellant’s claimed product.

Appellant alleges that
Ehrlich teaches away from [a] frozen reconstituted biscuit extrudable
at negative temperatures. . . . because it first needs to be reconstituted
with water at ambient temperature or at warm temperatures in order to
activate the binder and create its cake texture. After reconstitution the
cake mass in Ehrlich is not compatible with ice cream during storage
because its texture is not adapted for ambient or warm consumption.
Furthermore, the cake mass in Ehrlich is not suitable for processing at
freezing temperatures without excessive crumbling of the cake mass.
(Green Declaration, p. 3). We disagree.
Appellant fails to proffer factual evidence to support the declarant’s
opinion. Beattie, 974 F.2d at 1313. For example, the Green Declaration
states that the "texture [of Ehrlich's cake] is adapted for ambient or warm
consumption (FF 6). Furthermore, the cake mass in Ehrlich is not suitable
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for processing at freezing temperatures without excessive crumbling of the
cake mass." (FF 6). Appellant has presented no persuasive factual evidence
supporting this opinion evidence. (FF 6).
In addition, Appellant alleges that the Green Declaration shows that
the biscuit characteristics were "suprisingly found." (App. Br. 11). Thus,
Appellant argues that the resulting biscuit characteristics provide unexpected
results.
Appellant does not direct us to any persuasive facts supporting
Appellant's allegation of unexpected results. See Beattie, 974 F.2d at 1313.
For example, the Green Declaration (p. 2) states:
Applicants have surprising[ly] found a frozen
reconstituted biscuit product that is compatible with
and can be processed together with an ice cream mass
and with the same equipment and still provides a
biscuit-like texture at frozen consumption
temperatures that contrasts with the soft texture of an
ice confection. For example, a novel aspect of the
present invention is that it provides a supple biscuit-
based pastry raw material that is extrudable at
freezing temperatures and usable in combination with
ice confectionery to prepare composite ice
confectionery products, which allows the production
at industrial throughputs of composite products
having an attractive visual appearance linked to a
textural effect that contrasts with the ice
confectionery.

Appellant’s mere allegation that a frozen, reconstituted biscuit was
"surprising[ly] found" fails to provide persuasive evidence supporting such
an allegation. Beattie, 974 F.2d at 1313.
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Moreover, Appellant in alleging unexpected results has provided no
comparative test with the closest prior art. De Blauwe, 736 F.2d at 705. For
example, Appellant provides no test data showing that the closest prior art
does not have this "textural effect."
Due to the absence of any persuasive factual support, we determine
that Appellant's allegations in Green Declaration of unexpected results and
teaching away constitute unsupported opinion evidence. As such, it carries
little weight.
Thus, it follows that Appellant's arguments and evidence are not
sufficient to rebut the Examiner's prima facie case.
Accordingly, based on the factual findings set forth in the Answer and
above, we determine that the preponderance of evidence weighs most
heavily in favor of obviousness of the subject matter defined by claim 1
within the meaning of 35 U.S.C. § 103.

ORDER
On this record, the decision of the Examiner is affirmed.

TIME PERIOD
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)(v).

AFFIRMED

cam
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K & L GATES, LLP
P. O. BOX 1135
CHICAO, IL 60690

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