Ex Parte Gehan et al

Board of Patent Appeals and Interferences

Jan 4, 2007

09761322 (B.P.A.I. Jan. 4, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte ROBERT F. GEHAN
and ZEINAB M. ALI
____________

Appeal 2006-3314
Application 09/761,322
Technology Center 1700
____________

Decided: January 4, 2007
____________

Before CHUNG K. PAK, CATHERINE Q. TIMM, and LINDA M.
GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This appeal involves claims 1-13, the only claims pending in this
application. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 134.
Appeal 2006-3314
Application 09/761,322

INTRODUCTION
The claims are directed to a novelty cookie product. Claims 1, 4, and
8 are illustrative:
1. A novelty cookie product comprising a base cake having a three-
dimensional image thereon and a layer of confection covering at least a
portion of the image, thereby forming a latent image that can be revealed by
removing at least a portion of the confection.

4. A cookie product according to claim 1 wherein the image on the
base cake is formed by rotary molding to have a pattern of lands and
recesses such that the confection, when partially removed at least partially
fills in the recesses while it is removed from a portion of the image to make
the image visible to a consumer.

8. A method of making a novelty cookie product comprising baking a
base cake having a three-dimensional image thereon and applying thereto,
over the image, a layer of confection to cover at least a portion of the image,
thereby forming a latent image that can be revealed by removing at least a
portion of the confection.

The Examiner relies on the following prior art references to show
unpatentability:
Persson AUS 224485 Feb. 26, 1959
Pappas US 5,534,281 Jul. 9, 1996
Blaschke US 6,312,743 B1 Nov. 6, 2001

The rejections as presented by the Examiner are as follows:
1. Claims 1-3, 5-9, and 11-13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Persson and Blaschke.
2. Claims 4 and 10 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Persson in view of Blaschke and further in view of
Pappas.
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Appeal 2006-3314
Application 09/761,322

OPINION
Claims 1-3, 5-9, and 11-13 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Persson and Blaschke. Claims 4 and 10 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Persson in view of Blaschke
and further in view of Pappas.
The Examiner relies on Persson for a disclosure of a sugar
confectionery having a printed picture on the surface. The picture is placed
in a depression in the surface of the confectionery and covered with an
opaque coating which can be licked off by the consumer to reveal the
picture. (Answer 3). The Examiner concedes that Persson differs from the
present invention in that it is a sugar confectionery and not a cookie.
(Answer 4). However, the Examiner maintains that it would have been
obvious to change the substrate in Persson from a candy to a cookie in view
of Blaschke’s disclosure of a ready-for-use cookie dough provided with
score lines or grooves that define equally sized portions to be broken off and
baked. (Answer 4). The Examiner relies on Pappas for a teaching of using
rotary molding to form designs on foods such as cookies, crackers and'
snacks. (Answer 5).
Appellants argue, inter alia, that Persson’s picture is flat, i.e., two-
dimensional, and covered with a uniform coating. Therefore, Appellants
maintain that the Examiner’s proposed combination fails to disclose or
suggest a three-dimensional image as required by the present claims.
(Br. 6).
The Examiner, however, takes the position that Persson discloses a
three-dimensional image as claimed because the picture, when placed in the
surface depression, “gives the image an illusion of depth.” (Answer 6).
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Appeal 2006-3314
Application 09/761,322

Patentability begins with the legal question “what is the invention
claimed?” See Panduit v. Dennison Mfg. Co., 774 F.2d 1082, 1093, 227
USPQ 337, 344 (Fed. Cir.1985). During examination, patent claims must be
given their broadest reasonable interpretation consistent with the
specification. However, claim language cannot be read in a vacuum, but
instead must be read in light of the specification as it would be interpreted
by one of ordinary skill in the pertinent art. See In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir.1983). In our view, the Specification
clearly sets forth that which Appellants intended to encompass by the claim
language “three-dimensional image,” i.e., an image which itself is three-
dimensional such as an intaglio (see, e.g., Fig. 2), as opposed to a two-
dimensional image such as printed matter on a surface, even if given the
illusion of being three-dimensional.
Accordingly, we reverse the Examiner’s rejection of claims 1-13
under 35 U.S.C. § 103 because it is based on an erroneous interpretation of
the claim language.
REMAND TO THE EXAMINER
While we have not sustained the Examiner's rejections for the reasons
stated above, it appears to us that the propriety of rejections under 35 U.S.C.
§§ 102 and 103 should be evaluated by the Examiner in view of at least the
following additional references:
Gerstman Des. 298,180 Oct. 25, 1988
Concepcion Des. 298,280 Nov. 1, 1988
Tabor Des. 306,790 Mar. 27, 1990
Boehm US 4,948,602 Aug. 14 1990

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Appeal 2006-3314
Application 09/761,322

Boehm teaches that it was known in the art at the time of the present
invention to enrobe filled cookies such as OREO® cookies in a chocolate or
fudge coating. Boehm, col. 1, l. 67- col. 2, l. 7. See
http://www.kraft.com/100/innovations/oreo.html (OREO® cookies were
first introduced in 1912. Fudge Covered OREO® cookies were introduced
in the 1980’s).1 See also Appellants’ Specification, p. 1, ll. 11-15
(“Sandwich coolies [sic] are well known and are available commercially
under a number of names including OREO®, NUTTER BUTTER®,
SNACKWELL'S® and many others.”) The base cake of an OREO® cookie
is a baked product containing a three-dimensional image2 thereon. The
chocolate or fudge coating is a layer of confection covering the image.
Removing a portion of the outer coating would at least partially reveal the
image.

1 OREO® cookies were first introduced by Nabisco.
http://www.kraft.com/100/timeline/time_1910s.html. Philip Morris
Companies Inc., Kraft Foods’ parent company, acquired Nabisco Holdings
in 2000 at which time the Nabisco brands were integrated into the Kraft
Foods business. http://www.kraft.com/100/timeline/time_2000s.html. Kraft
Foods Holdings, Inc. is said to be the real party in interest in the present
appeal Br. 2.

2 We note that appealed claims 6, 7, and 12 recite specific three-dimensional
images. Where claimed features of patent utility claims relate to
ornamentation only and have no mechanical function whatsoever, they
cannot be relied upon for patentability. See In re Seid, 161 F.2d 229, 231,
73 USPQ 431, 433 (CCPA 1947).

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Appeal 2006-3314
Application 09/761,322

Gerstman, Concepcion and Tabor3 disclose ornamental designs4 for a
cookie comprising a base cake having a three-dimensional-image thereon
and a layer of confection covering at least a portion of the image, thereby
forming a latent image that can be revealed by removing at least a portion of
the confection. Gerstman and Concepcion also disclose a top layer having a
three-dimensional image formed thereon.
This Remand to the Examiner pursuant to 37 C.F.R. § 41.50(a)(1)
(effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286
Off. Gaz. Pat. Office 21 (September 7, 2004)) is made for further additional
prior art findings and further consideration of a rejection consistent with our
interpretation of the claim language.

REVERSED and REMANDED

sld

Thaddius J. Carvis
102 North King Street
Leesburg, VA 20176

3 These patents, like the present application, appear to have been assigned to
Nabisco Brands, Inc./Kraft Food Holdings at the time of filing of the present
application.
4 See In re Aslanian, 590 F.2d 911, 914, 200 USPQ 500, 503 (CCPA 1979)
("[T]he specific disclosure of structure in a design patent application may
inherently teach functional features."). See also, In re Meng, 492 F.2d 843,
847, 181 USPQ 94, 97 (CCPA 1974)(a claimed invention may be anticipated
or rendered obvious by a reference drawing).

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