Ex Parte Foley et al

Board of Patent Appeals and Interferences

Jul 17, 2002

08922599 (B.P.A.I. Jul. 17, 2002)

1 The hearing set for Thursday, September 13, 2001 was
waived by appellants (Paper No. 27).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 28
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte MARY M. FOLEY and BEAUFORT M. LANCASTER
____________
Appeal No. 2001-1390
Application No. 08/922,599
____________
ON BRIEF1
____________
Before COHEN, NASE, and BAHR, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 and
6. Claims 2 through 5 stand objected to by the examiner, but
would be allowable if amended as indicated (Paper No. 19; page
4). These claims constitute all of the claims in the
application.

Appeal No. 2001-1390
Application No. 08/922,599
2 The document of record, with pagination 1 through 6, is a
reprint of the specified article from Food Technology. While the
examiner has referred to pages 1 and 2 of this document in the
answer (page 3), the final rejection refers also to page 6,
indicating to us that the entirety of the document (pages 1
through 6) was the applied evidence. We refer to the content of
the applied reference by pages 1 through 6.
2
Appellants' invention pertains to a method for determining
forced-choice preference information. A basic understanding of
the invention can be derived from a reading of exemplary claim 1,
a correct copy of which appears in the APPENDIX to the examiner's
answer (Paper No. 22).
As evidence of obviousness, the examiner has applied the
document specified below:
David R. Peryam and Francis J. Pilgrim (Peryam), "Hedonic Scale
Method of Measuring Food Preferences," Food Technology, Vol. XI,
No. 9, pages 9 through 14 (1957)2
The following rejection is before us for review.
Claims 1 and 6 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the Peryam reference.
Appeal No. 2001-1390
Application No. 08/922,599
3 In our evaluation of the applied reference, we have
considered all of the disclosure of the document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
3
The full text of the examiner's rejection and response to
the argument presented by appellants appears in the answer (Paper
No. 22), while the complete statement of appellants' argument can
be found in the main and reply briefs (Paper Nos. 21 and 24).

OPINION
In reaching our conclusion on the obviousness issue raised
in this appeal, this panel of the board has carefully considered
appellants' specification and claims, the applied document,3 the
declaration of Beaufort M. Lancaster (one of the named
inventors), and the respective viewpoints of appellants and the
examiner. As a consequence of our review, we make the
determination which follows.
Appeal No. 2001-1390
Application No. 08/922,599
4
We sustain the rejection of appellants' claim 1. It follows
that the rejection of claim 6 is likewise sustained since, as
indicated in the main brief (page 3), claims 1 and 6 stand
together. Our reasoning appears below.
Claim 1 is drawn to a method for determining forced-choice
preference information, said method comprising, inter alia,
processing hedonic data from all of a number of test subjects to
determine at least one predicted forced choice preference result,
with said at least one predicted forced choice preference result
being indicative of the likelihood that a test subject would
select one of two or more test samples over another of said test
samples in a forced choice comparison of a pair of the test
samples.
At this point, we refer to appellants' statement in the
"Summary of the Invention" section of the specification (page 4
and 5) that
it is possible to determine the likelihood
that a consumer will choose one product
(product A) over another product (product B)
of the same type simply by conducting hedonic
Appeal No. 2001-1390
Application No. 08/922,599
4 Appellants indicate (specification, page 3) that, in
forced choice testing, a consumer is forced to choose which
product he or she prefers from among a forced selection of two
possible products.
5
testing and without specifically conducting
forced choice testing.4
Simply stated, it is quite apparent to us, from a reading of
the overall Peryam reference, that those having ordinary skill in
the art, at the time of appellants' invention, would have been
able to predict the likelihood that a consumer would select one
product over another from a consideration of or processing of the
data derived from hedonic testing. As expressly revealed by
Peryam (page 2, column 2, lines 20 through 25), the hedonic scale
method yields direct responses for "predicting actual behavior"
toward food. Of particular significance, is the teaching in the
Peryam document of the interpretation and use of hedonic scale
data (page 4, column 2, lines 49 through 58). More specifically,
the reference reveals that, to a food technologist (one having
ordinary skill in the art), hedonic test data yields information
as to the "probable acceptance" of foods by consumers; in other
words, foods are evaluated (consumer preference) indirectly by
making inferences from behavioral measures (hedonic testing).
The hedonic scale method is recognized for yielding information
Appeal No. 2001-1390
Application No. 08/922,599
6
about "probable acceptance" (page 5, column 1, lines 56 through
62). As explicitly stated by Peryam (page 6, column 1, lines 9
through 11),
accept both the measurement of preference and
the prediction of acceptance as the
objectives of hedonic test measurement.
The above teachings within the Peryam reference provide ample
evidence that the method of claim 1 would have been obvious to
one having ordinary skill in the art; in particular, the
reference document would have been suggestive of the step of
processing hedonic test data to determine at least one predicted
forced choice preference result (acceptance), the result
(acceptance) being indicative of the likelihood that a test
subject would select one test sample over another in a forced
choice comparison.
The arguments advanced by appellants (main brief, pages 3
through 7, and reply brief, pages 1 and 2) do not persuade us of
error on the part of the examiner in concluding that claim 1
would have been obvious based upon the overall teaching of the
Peryam document. The argument is presented (main brief, page 4)
that the prior art does not suggest "calculating" a forced choice
Appeal No. 2001-1390
Application No. 08/922,599
7
preference from hedonic data. However, contrary to appellants'
point of view, claim 1 does not address a "calculating" step.
Giving claim 1 its broadest reasonable interpretation, it appears
to us that those having ordinary skill in the art would
comprehend the claimed "processing" of hedonic test data to
determine at least one predicted forced choice result to broadly
denote a mental assessment or review of hedonic test data to
determine at least one predicted forced choice result. For
example, if two consumers, in hedonic testing, tested only
competing food products A and B, on the basis of taste and
appearance categories, and each gave the highest rating in both
categories to product A, it is quite apparent to us that one
having ordinary skill in the art would have been able to process
(mentally assess or consider) this hedonic test data and predict
a forced choice preference result (product A). The latter view
is clearly supported by the Peryam disclosure. Declarant points
out (paragraph 9) that the Peryam reference ("Hedonic Scale
Method of Measuring Food Preferences") has been reviewed but that
the examiner is incorrect in asserting that it would have been
obvious from this reference "to process the hedonic scale data to
obtain forced choice comparison information," since there is no
suggestion in the reference to do so. It appears to us that
Appeal No. 2001-1390
Application No. 08/922,599
8
declarant does not appreciate that the broad language of claim 1
does not require the specific processing (calculating)
methodology disclosed in the present application. Thus, the
teaching of Peryam, as a whole, would have been suggestive of the
claim 1 method, as indicated above.
In summary, this panel of the board has sustained the
rejection of claims 1 and 6 under 35 U.S.C. § 103(a).
The decision of the examiner is affirmed.
Appeal No. 2001-1390
Application No. 08/922,599
9
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
ICC/lbg
Appeal No. 2001-1390
Application No. 08/922,599
10
ROTHWELL FIGG ERNST & KURZ
STE 701-E
555 13TH ST NW
WASHINGTON, DC 20004