Ex Parte Evans et al

Patent Trial and Appeal Board

Sep 25, 2012

10424340 (P.T.A.B. Sep. 25, 2012)

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.
10/424,340 04/28/2003 James R. Evans PIL0031/US/2 1253
33072 7590 09/26/2012
KAGAN BINDER, PLLC
SUITE 200, MAPLE ISLAND BUILDING
221 MAIN STREET NORTH
STILLWATER, MN 55082
EXAMINER
BECKER, DREW E
ART UNIT PAPER NUMBER
1782
MAIL DATE DELIVERY MODE
09/26/2012 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 R. EVANS,
JAMES W. FINKOWSKI and GENE A. RUSSEL
______________

Appeal 2011-004867
Application 10/424,340
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
TERRY J. OWENS, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary
Examiner finally rejecting claims 60-64 in the Office Action mailed
February 23, 2010. We have jurisdiction. 35 U.S.C. §§ 6 and 134(a)
(2002); 37 C.F.R. § 41.31(a) (2005).
We affirm the decision of the Primary Examiner.
Claim 60 illustrates Appellants’ invention of a plurality of dough
products, and is representative of the claims on appeal:
60. A plurality of dough products produced from a continuous dough
sheet having first and second oppositely facing major surfaces and first and
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second exposed lateral edges, the plurality of dough products positioned
together in the form of the dough sheet, but as separated from one another in
a nested arrangement, each of the plurality of dough products comprising a
dough position having a first surface comprising a portion of the first major
surface of the dough sheet and having an outer peripheral shaped capable of
being nested within other similarly shaped geometric figures and a second
surface comprising a portion off the second surface of the dough sheet and
having an outer peripheral shape that is different from and smaller than the
outer peripheral shape of the first surface of the dough portion, the second
surface comprising a drawn dough surface that is drawn substantially all the
way toward and pinched to the first surface to define a substantially rounded
profile to the dough product viewing a side of a dough product extending a
direction generally normal to the first surface.
Appellants request review of the ground of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 60-64 over Ward (US
1,144,953) and McCaffrey (US 4,792,299). App. Br. 9; Ans. 4.
We decide this appeal on claims 60, 63 and 64 argued by Appellants.
Br., e.g., 7. 37 C.F.R. § 41.37(c)(1)(vii) (2010).
Opinion
We are of the opinion Appellants’ arguments do not establish that the
evidence in the totality of the record weighs in favor of the nonobviousness
of the claimed plurality of dough products encompassed by claim 60 and
claims 63 and 64 dependent thereon. In this respect, we are in agreement
with the Examiner’s analysis of the evidence in the Ward and McCaffrey
and the findings of fact and conclusions of law stated in the Answer, to
which we add the following for emphasis with respect to Appellants’
arguments.
We are of the opinion that the language of claims 61, 63 and 64, when
given its broadest reasonable interpretation in light of the Specification and
in consideration of the positions of the Examiner and Appellants, defines the
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claimed “plurality of dough products” as characterized by any process by
which such “products” are “produced from a continuous dough sheet” to
have the specified first surface comprising a portion of the first major
surface” and “second surface comprising a portion of the second major
surface” when “positioned together in the form of the dough sheet, but as
separated from one another in a nested arrangement,” wherein “each of the
plurality of dough products comprising . . . [a] second surface comprising a
drawn dough surface that is drawn substantially all the way toward and
pinched to [a] first surface to define a substantially rounded profile to the
dough product.” See, e.g., In re Suitco Surface, Inc., 603 F.3d 1255, 1259
(Fed. Cir. 2010) (“During reexamination, as with original examination, the
PTO must give claims their broadest reasonable construction consistent with
the specification.”); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997)
(“[T]he PTO applies to the verbiage of the proposed claims the broadest
reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description contained in the applicant’s specification.”); see also
e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited
therein (“even though product-by-process claims are limited by and defined
by the process, determination of patentability is based on the product
itself”); In re Bridgeford, 357 F.2d 679, 680-83 (CCPA 1966).
We determine the language of claim 60, with reference to
Specification Figures 2 and 5, specifies in part that “each of the plurality of
dough products” 12 can be formed when the “second surface comprising a
portion of the second major surface” or top 26 “of the dough sheet” 15 is
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“dawn substantially all the way toward and pinched to the first surface” or
bottom 28, which “comprises a portion of the first major surface of the
dough sheet” 15, by blunt cutting portion 18 of cutter 16 as indicated by
arrows 30, “to define a substantially rounded profile” 14 “ to the dough
product” 12. Spec. 4:3-6. 5:19 to 6:10. We find no description in the
Specification of the deviation from “all the way toward and pinched to the
first surface” and “rounded profile” permitted by the term of approximation
“substantially” in each instance. Accordingly, on this record, we interpret
the claim “substantially all the way” and “substantially rounded profile” as
largely but not wholly all the way and largely but not wholly a rounded
profile. See, e.g., York Prods., Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568, 1572-73 (Fed. Cir. 1996) (“In this case, the patent discloses
no novel use of claim words. Ordinarily, therefore, ‘substantially’ means
‘considerable in . . . extent,’ American Heritage Dictionary Second College
Edition 1213 (2d ed. 1982), or ‘largely but not wholly that which is
specified,’ Webster’s Ninth New Collegiate Dictionary 1176 (9th ed.
1983).”).
We next determine that the language of claim 60, with respect to
Specification Figures 2, 6A, 11AC, 12, 13 and 14AB, further specifies that
the “plurality of dough products” 12 are “produced from a continuous dough
sheet” 15 of any length, however short, wherein the “lateral edges” of sheet
15 “are exposed,” such that the “plurality of dough products” 12 are
“positioned together” in any manner within “the form off the dough sheet”
15 so that the dough products 12 are “separated from one another in a nested
arrangement” by cutter 108 which has cells 110 that have a common
geometric shape and can have same blunt cutting portion 34 as cutter 31.
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Spec. 6:14-21, 15:13-30, 16:8-22. The continuous dough sheet 15 can be on
a conveyor and cutter 108 can be a reciprocating cutter, wherein the cycle is
cutter 108 is lowered to cut continuous dough sheet 15, cutter 108 is then
raised, and sheet 15 advanced by the conveyor to position an uncut section
below cutter 108. Spec. 16:13 to 17:16, 17:30 to 18:28.
We determine that the disclosed methods of producing the plurality of
dough product 12 result in each dough product comprising at least a “first
surface” or bottom 28 comprising at least “a portion of the first major
surface of the dough sheet” 15 and having “an outer peripheral shaped
capable of being nested within other similarly shaped geometric figures;”
and the “second surface” or top 26 comprising at least “a portion of the
second major surface of the dough sheet” 15 and having “an outer peripheral
shape that is different from and smaller than the outer peripheral shape of the
first surface of the dough portion.”
We determine claim 63 further limits the dough products of claim 60
by specifying the combination of dough products 12 “with waste dough from
the dough sheet as trim” attached as “provided along at least one lateral
edge” of each of dough products 12 “as the dough sheet has been separated
into the plurality of dough products.” Spec., e.g., 16:12-22. We determine
claim 64 further limits the dough products of claim 60 by specifying the
“continuous dough sheet” 15 can be of “indefinite,” that is, any, “length,”
and encompasses the combination of the “dough products” 12 and dough
sheet 15 in which dough products 12 “as arranged in the manner of the
dough sheet.”
We find Ward would have disclosed to one of ordinary skill in the art
a method of making pan-biscuits which includes the steps of providing a ball
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of dough of suitable skin texture in pan 2; urging plungers 3 and divider or
cutter blades 4 against the ball of dough to flatten the dough to form a sheet
of dough in pan 2 that is continuous across pan 2; further urging the blunt
edges of divider or cutter blades 4 into the dough sheet to form a plurality of
separate dough biscuit products 5; and lifting or reciprocating plungers 3 and
divider or cutting blades 4 from pan 2. Ware 1:40-64, 2:11-32, 2:66-108,
Figs. 1, 2, 4. Ward discloses
[a]s shown in Figs. 5, 6 and 7, the plungers 3 flatten out the
dough and passes through it, drawing don the upper skin 6 and
pinches it off against the bottom skin 7 at the bottom of the pan.
After the divider [4] is withdrawn, the sides of the fractional
biscuit parts 5 come together as shown in Fig. 7. The drawing
down of the top of the dough will cause the top of the
individual biscuit parts to have the round-shaped appearance
shown in Fig. 2.
Ward 2:118-130; see also Ward 2:109-116. We find Ward Figures 2 and 7
would have disclosed to one of ordinary skill in the art that the bottom
surface of the biscuit part is nested within the form of the dough sheet with
similar geometrically shaped biscuit parts, and the top surface of the biscuit
part is different from and smaller than the bottom surface of the part and has
a substantially rounded profile. We find that Ward further processes the so
prepared plurality of dough products by baking the products in pan 2. Ward
3:60-114, Fig. 3.
We find McCaffrey would have disclosed to one of ordinary skill in
the art a biscuit cutter having a plurality of cavities to form a plurality of
uniformly shaped biscuits from a batch of dough spread on a cutting surface
in the form of a continuous sheet in which the uniformly shaped baskets are
nested. McCaffrey further discloses the cutter may be used with a
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cooperatively shaped mold to insure that no dough is left to be reworked.
McCaffrey abstract, col.1 ll.16-21, col.3 ll.9-60, col.4 l.18 to col.5 l.38, col.6
ll.1-14, Figs. 1-4 and 6.
On this record, we cannot agree with Appellants that the Examiner
erred in determining that one of ordinary skill in the art would have
combined Ward and McCaffrey and thus would have been lead to form a
plurality of dough products in which each of the separated dough products
are nested together in the form of the dough sheet from which the dough
products are formed having the first or bottom surface and the second or top
surface as specified in claims 60, 63 and 64. Ans. 4-5, 6-8; App. Br. 10-14;
Reply Br. 3-4.
We cannot subscribe to Appellants’ contentions that the process
limitations of producing the plurality of separated dough products, having
the specified first or bottom surface and the specified second or top surface,
from a “continuous dough sheet” that after cutting contains the plurality of
separated dough products in a nested arrangement within the dough sheet,
defines the claimed plurality of dough products over the dough products
reasonably obtained by one of ordinary skill in the art routinely following
the combined teachings of Ward and McCaffrey. Indeed, we agree with the
Examiner that the claimed separated plurality of dough products and the
produced by Ward and McCaffrey reasonably appear to be identical or
substantially identical and are formed in an identical or substantially
identical manner, regardless of the length of the “continuous dough sheet”
which is not specified in the claims. In this respect, we found that the cutters
off Ward and McCaffrey are applied to a dough sheet that is “continuous”
under the cutter, and thus the plurality of separated dough products nested
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within the dough sheet resulting from the cutter being applied to the thus
“continuous dough sheet” formed from a batch of dough in the process of
Ward and McCaffrey results in the same “batch” of a plurality of separated
dough products nested in the dough sheet as the reciprocating cutter applied
to a section of a “continuous dough sheet” on a conveyor disclosed by
Appellants. See Reply br. 3-4.
Accordingly, the burden shifted to Appellants to patentably
distinguish the claimed plurality of dough products over the combined
teachings of Ward and McCaffrey even though the ground of rejection is
under § 103(a). Ans. 4, 7-8, 10-11. See, e.g., In re Spada, 911 F.2d 705,
708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that
the products of the applicant and the prior art are the same, the applicant has
the burden of showing that they are not.”); In re King, 801 F.2d 1324, 1326-
28 (Fed. Cir. 1986) (“Here, appellant’s burden before the board was to prove
that Donley’s structure does not perform the so-called method defined in the
claims when placed in ambient light. . . . It did not suffice merely to assert
that Donley does not inherently achieve enhanced color through interference
effects, challenging the PTO to prove to the contrary by experiment or
otherwise. The PTO is not equipped to perform such tasks.”); In re Best, 562
F.2d 1252, 1255 (CCPA 1977) (“Where, as here, the claimed and prior art
products are identical or substantially identical, or are produced by identical
or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the
characteristics of his claimed product. Whether the rejection is based on
‘inherency’ under 35 U.S.C. § 102, on ‘prima facie obviousness’ under 35
U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
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fairness is evidenced by the PTO’s inability to manufacture products or to
obtain and compare prior art products.”)
We, like the Examiner, are not convinced that Appellants have carried
the burden. We are of the opinion Appellants have not established that
Ward’s pan 2 “operates to limit or restrain the initial dough piece” in such a
manner that the plurality of separated dough products obtained are
patentably distinct from the claimed plurality of separated dough products.
App. Br. 11; Ans. 8. On this record, it reasonably appears that Ward’s blunt
dough dividing blades or cutters 4 cut portions of the dough sheet in pan 2 in
the same manner as Appellants’ blunt dough cutting portion 18 of cutter 16
on a continuous dough sheet with “exposed lateral edges” as claimed, and
would work in the same manner in the interior of Ward’s pan 2 because the
cutter would initially hold the dough in place on contact regardless of the
edges of the pan positioning the dough under the cutter.
In this respect, we find that Ward would have disclosed to one of
ordinary skill in the art in Ward’s Figure 4 that the edges of the pan define
one side of the separated dough products formed along the edges of the pan.
We point out that, on this record, all of the plurality of separated dough
products formed in Ward’s pan 2 including the separated products along the
pan edge satisfy the claim limitations that the dough products comprise
dough portions having first and second major surfaces comprising respective
first and second portions or surfaces of any area having the specified
characteristics, including the second surface portion “drawn substantially all
the way toward and pinched to the first surface to define a substantially
rounded profile.” Furthermore, this claim language provides for forming
separated dough products that include trim or waste dough attached along at
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least one edge of the dough portion, as further specified in claim 63, which
would not reasonably appear to result from Ward’s use of dividing blades 4
in pan 2. However, as the Examiner points out, one of ordinary skill in the
art would have known from McCaffrey that waste results from using a cutter
on a continuous sheet with exposed lateral edges in view of McCaffrey’s
teaching that a dough sheet that a continuous dough sheet cut in a pan can
curtails waste. Thus, the combination of Ward and McCaffrey would have
disclosed to one of ordinary skill in the art that the waste resulting from a
continuous dough sheet with exposed lateral edges can be curtailed by using
a pan to contain the dough under the cutter.
Indeed, even if it is held that the pan edge biscuit dough pieces in
Ward’s pan 2 do not meet the claim limitations describing the dough
products, the plurality of biscuit dough products on the interior of Ward’s
pan 2 meet the claim limitations.
Appellants have not advanced argument distinguishing claims 61, 62
and 64 over Ward and McCaffrey with specificity. App. Br. 12-13. Indeed,
Appellants merely recite the limitations of claims 61 and 62, and point out
that claim 64 reinforces certain limitations of claim 60 which we addressed
above.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Ward and McCaffrey with Appellants’ countervailing
evidence of and argument for nonobviousness and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 60-64 would have been obvious
as a matter of law under 35 U.S.C. § 103(a).
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The Primary Examiner’s decision is affirmed.
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)(iv).
AFFIRMED
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