Ex parte Ganesan

Board of Patent Appeals and Interferences

Jul 26, 2000

08349300 (B.P.A.I. Jul. 26, 2000)

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not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GANESH S. GANESAN,
MICHAEL A. HELSER
MYRON M. UECKER
and TODD W. GUSEK
_____________
Appeal No. 1997-0164
Application 08/349,300
______________
ON BRIEF
_______________
Before OWENS, WALTZ and JEFFREY SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the
examiner’s refusal to allow claims 1 through 9, 11 through 15,
and 22 through 29 as amended subsequent to the final rejection
(see the amendment dated Mar. 7, 1996, Paper No. 9, entered as
per the Advisory Action dated Mar. 19, 1996, Paper No. 10).
Appeal No. 1997-0164
Application 08/349,300
The examiner has failed to list this reference under1
“Prior Art of record” on page 3 of the Answer but has included
this reference in the statement of the rejection on page 4 of
the Answer. Since this reference was included in the Final
2
These are the only claims remaining in this application.
Claims 5 through 9, 11 and 25 were indicated as objected to by
the examiner as being dependent upon a rejected base claim but
would be allowable if rewritten in independent form including
all of the limitations of the base claim and any intervening
claims (Answer, page 7). Accordingly, claims 1 through 4, 12
through 15, 22 through 24 and 26 through 29 remain under
appeal.
According to appellants, the invention is directed to a
method of forming popcorn bars where unpopped and partial
kernels are removed from popped popcorn, a molten binder in
the form of a caramel syrup is coated on the popped popcorn,
this mixture is compressed into a sheet, cooled, and cut into
bars (Brief, pages 1-2). Illustrative claims 1 and 22 are
reproduced and attached as an Appendix to this decision.
The examiner has relied upon the following references as
evidence of obviousness:
Dodge 2,181,109 Nov. 21, 19391
Appeal No. 1997-0164
Application 08/349,300
Rejection (Paper No. 8, page 2) and discussed in the Brief
(pages 3 and 5), we hold this omission in the Answer to be
harmless error.
3
Bell 3,009,427 Nov. 21, 1961
Tay 3,958,018 May 18, 1976
Appeal No. 1997-0164
Application 08/349,300
The examiner apparently includes a separate rejection of2
claims 12 and 13 under § 103 over “the combined art above as
applied ... further in view of Simelunas.” (Answer, page 7).
However, Simelunas was already applied in the first ground of
rejection (Answer, page 4). Since this rejection stated on
page 7 of the Answer was not in the Final Rejection (see Paper
No. 8), we consider this rejection to be part of and an
elaboration of the rejection restated on page 4 of the Answer.
Furthermore, we note that the examiner has not considered
claims 26 through 28 in the Answer. For purposes of this
appeal, we consider claims 26 through 28 with the rejected
claims as per the Final Rejection (see Paper No. 8). The
omission of these claims from the Answer is harmless error in
view of our decision infra.
4
Knechtel 4,098,914 Jul. 4, 1978
Simelunas 4,719,117 Jan. 12, 1988
Ban et al. (Ban) 5,106,636 Apr. 21, 1992
The claims on appeal stand rejected under 35 U.S.C. § 103
as unpatentable over Bell or Knechtel, Ban, Dodge, Simelunas
and Tay (Answer, page 4). We reverse this rejection for2
reasons which follow.
OPINION
The examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). “It is
insufficient to establish obviousness that the separate
elements of the invention existed in the prior art, absent
Appeal No. 1997-0164
Application 08/349,300
175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999).3
5
some teaching or suggestion, in the prior art, to combine the
elements.” Arkie Lures, Inc. v. Gene Larew Tackle, Inc., 119
F.3d 953, 957, 43 USPQ2d 1294, 1297 (Fed. Cir. 1997). As
stated by our reviewing court in In re Dembiczak:3
We have noted that evidence of a suggestion,
teaching, or motivation to combine may flow from
the prior art references themselves, the knowledge
of one of ordinary skill in the art, or, in some cases,
from the nature of the problem to be solved,
[citations omitted], although ‘the suggestion more
often comes from the teachings of the pertinent
references’ [citation omitted]. The range of
sources available, however, does not diminish the
requirement for actual evidence. That is, the showing
must be clear and particular. (Emphasis added).
The examiner finds that Bell discloses a process of
making a confection of peanuts by coating the peanuts with
syrup, plasticizing the nuts, compressing the mixture to a
uniform thickness, conveying the product on a belt, and
cooling the product (Answer, page 4). The examiner also finds
that Knechtel discloses comminuting popcorn to add to a peanut
brittle mixture, using a conveyor, binder and a cooling device
(id.). The examiner recognizes the differences between the
claimed subject matter and the primary references to Bell and
Appeal No. 1997-0164
Application 08/349,300
6
Knechtel (id.). Accordingly, the examiner applies Dodge, Ban,
Simelunas and Tay to show other limitations of the claimed
subject matter (Answer, pages 4-5). However, the examiner’s
conclusion of obviousness is not based on any evidence of why
it would have been obvious to combine the teachings of the
applied references, even assuming the individual references
taught each and every limitation of the claims (Answer, page
5; see the Brief, page 8).
Bell is directed to peanut brittle only while Knechtel is
drawn to a peanut brittle product with a small amount of
comminuted popcorn added (see Bell, col. 1, ll. 9-10;
Knechtel, col. 2, ll. 33-39). The examiner has not
established any convincing evidence or reasoning as to why one
of ordinary skill in the peanut brittle art would have used
the rollers of Ban to compress the peanut brittle mixture of
Bell or Knechtel, especially considering that Ban is directed
to “dough or other similar viscoelastic materials.” (col. 1,
ll. 7-8). Similarly, the examiner has not established any
motivation or suggestion to support the proposed combination
of Bell or Knechtel with Tay, who discloses an apparatus with
Appeal No. 1997-0164
Application 08/349,300
7
transversely mounted blades for cutting a ribbon material into
distinct pieces (Answer, page 5). It is noted that Bell
teaches that his peanut brittle may be scored and broken into
any desired shape while Knechtel teaches fracturing the ribbon
so that it is broken into individual pieces of peanut brittle
by use of a roller 55 having a plurality of
Appeal No. 1997-0164
Application 08/349,300
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projecting spikes 56 (see Bell, col. 4, ll. 3-10; Knechtel,
col. 5, ll. 28-41).
Dodge is directed to a popcorn coated with a thin candy
syrup (col. 2, ll. 4-8). The examiner has not established
what suggestion would have led the ordinary artisan to combine
this reference with the peanut brittle mixtures of Bell or
Knechtel. It is noted that the examiner appears to apply this
reference alone against claim 22 on appeal, which is in
product-by-process form (Answer, page 6). However, the
reference to Dodge, although exemplifying a popcorn bar (see
Figure 5), does not disclose or teach the limitations recited
in claim 22 that the popcorn has been compressed, that the
binder is a caramel syrup, or that a confectionary coating has
been drizzled on the top of the bar (see Dodge, col. 2, ll. 9-
13 and 24-28). Thus the examiner has failed to establish that
the prior art reasonably appears to disclose a product which
is identical to or only slightly different than the claimed
product.
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA
1980).
Appeal No. 1997-0164
Application 08/349,300
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Simelunas is directed to co-extrusion of two dissimilar
materials such as dough pieces (col. 1, ll. 10-27; col. 2, ll.
46-54). The examiner has not set forth any suggestion as to
why one of ordinary skill in the art would have been led to
combine
Appeal No. 1997-0164
Application 08/349,300
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the teachings of this reference with the primary references to
peanut brittle as taught by Bell and Knechtel.
General statements regarding the motivation or suggestion
are not sufficient, such as the examiner’s general statements
regarding the “confection art” (Answer, page 8), “well known”
process steps (Answer, pages 9 and 11), and the use of
apparatus for “their known functions” (Answer, page 10). The
showing of evidence regarding the motivation or suggestion to
combine the references as proposed by the examiner “must be
clear and particular.” Dembiczak, supra.
For the foregoing reasons, we determine that the examiner
has failed to establish a prima facie case of obviousness in
view of the reference evidence. Accordingly, the rejection of
the claims on appeal under 35 U.S.C. § 103 is reversed.
Appeal No. 1997-0164
Application 08/349,300
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The decision of the examiner is reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY SMITH )
Administrative Patent Judge )
Appeal No. 1997-0164
Application 08/349,300
12
L. Meroy Lillehaugen
P.O. Box 1113
Minneapolis, MN 55440
Appeal No. 1997-0164
Application 08/349,300
1
Appendix
1. Method for forming popcorn bars having a width and a
length comprising the steps of: providing popped popcorn;
providing a molten binder; removing any unpopped and any
partial kernels from the popped popcorn; coating the popped
popcorn with the molten binder after removal of any unpopped
and partial kernels; compressing a mass of the coated popped
popcorn into a compressed sheet; reducing the temperature of
the coated popped popcorn to a temperature to solidify the
binder and to bind the popped popcorn; cutting the compressed
sheet with knives into a plurality of strips having a width
equal to the width of the popcorn bars; and cutting the
plurality of strips with at least one knife to a length equal
to the length of the popcorn bars.
22. Popcorn bar having a top, a bottom, first and second
ends, and first and second sides comprising, in combination:
popped popcorn; a binder for binding the popped popcorn in the
form of a caramel syrup formed by heating a mixture of water,
sugar, corn syrup, molasses, salt, oil and lecithin to a
temperature in the order of 82 C and then cooking the mixtureO
at a temperature in the order of 149 C, with the top andO
bottom being defined by a mass of the popped popcorn coated
with the binder in a molten form compressed into a sheet, with
the ends and sides being formed by cutting the sheet with
knives, with the coated popped popcorn between the ends and
sides being substantially free of unpopped and partial
kernels; and confectionery coating drizzled in a zig-zag
pattern on the top.