Ex Parte Gimelli

Board of Patent Appeals and Interferences

Mar 25, 2010

10262743 (B.P.A.I. Mar. 25, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte KENNETH GIMELLI
____________

Appeal 2009-002454
Application 10/262,743
Technology Center 1700
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Decided: March 25, 2010
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Before JEFFREY T. SMITH, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision final rejection of claims 1, 3-6, 8-10, and 12-15 (Office Action,
mailed November 28, 2005. We have jurisdiction under 35 U.S.C. § 6(b).1

1 In rendering this decision we have considered Appellant’s Brief dated
December 6, 2006.
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Application 10/262,743

We AFFIRM.
STATEMENT OF THE CASE
Claim 1 is illustrative of the subject matter on appeal, and is
reproduced from the Claims Appendix to the Appeal Brief (“App. Br.”):
1. A pasta composition comprising:
(a) a lattice having at least one leg comprising a tapered
portion; and
(b) at least one intersection joined by the tapered portion of
the leg,
the pasta composition being one that heats uniformly and
comprises elite 65% by weight semolina flour; and
wherein the leg has a middle portion cross-sectional volume
that is about 2.0% to about 25.0% larger than a middle portion
cross-sectional volume of the tapered portion.

The Examiner relies upon the following references in rejecting the
subject matter on appeal:
Starck D 311,626 Oct. 30, 1990
Villota D 394,535 May 26, 1998
Graverini EP 0 450,428 A2 Oct. 9, 1991
Sautier D 212,580 Nov. 5, 1968
Scharschmidt D 207,699 May 23, 1967
Scharschmidt D 205,027 Jun. 14, 1966

Pasta and Semolina Technology, KILL et al, pp. 119-157, 2001

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Application 10/262,743

THE REJECTIONS
I. Claims 1, 3-6, 8-10, and 12-15 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Kill, Starck, Villota,
Graverini, Sautier, Sascharschmidt ‘699 and Sascharschmidt ‘027.2
II. Claims 1, 3-6, 8-10, and 12-15 stand rejected under 35 U.S.C. §
103(a) as unpatentable over the combined teachings of Sautier, Villota,
Starck, Graverini, Sascharschmidt ‘699 and Sascharschmidt ‘027 .
PRINCIPLES OF LAW
It is well established that “it is not necessary that the inventions of the
references be physically combinable to render obvious the invention under
review.” In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983). In addition,
“[c]ombining the teachings of references does not involve an ability to
combine their specific structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA
1973) (emphasis in original). In an obviousness rejection, the combination
of references must be considered as a whole, rather than the specific
teaching of each reference. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA
1971); In re Simon, 461 F.2d 1387, 1390 (CCPA 1972).
In KSR, the Supreme Court explained, “[w]hen a work is available in
one field of endeavor, design incentives and other market forces can prompt
variations of it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, §103 likely bars its
patentability.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A

2 The Examiner in the Answer has listed a separate rejection for all the
claims utilizing the same combination of references, but varying the primary
references between Kill and Villota. Appellant has not separately listed
these grounds of rejection in the Brief.
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person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 U.S. at 417.
It is also well settled that where patentability is predicated upon a
change in a condition of a prior art composition, such as a change in size,
concentration or the like, the burden is on the applicant to establish with
objective evidence that the change in critical, i.e., it leads to a new,
unexpected result. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In
re Aller, 220 F.2d 454, 456, (CCPA 1955).
“[I]n considering the disclosure of a reference, it is proper to take into
account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw
therefrom.” In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Having acknowledged that certain claimed elements are taught by the
prior art, Appellants cannot now defeat an obviousness rejection by asserting
that the cited references fail to teach or suggest these elements. See
Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1570 (Fed. Cir.
1988) (“A statement in a patent that something is in the prior art is binding
on the applicant and patentee for determinations of anticipation and
obviousness.”); In re Nomiya, 509 F.2d 566, 571 n.5 (CCPA 1975) (It is a
“basic proposition that a statement by an applicant, whether in the
application or in other papers submitted during prosecution, that certain
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matter is ‘prior art’ to him, is an admission that that matter is prior art for all
purposes.”).

ISSUE
Did the Examiner err in determining that it would have been obvious
to one having ordinary skill in the art to form shapes comprising at least one
intersection joined by at least one leg, and a tapered portion as required by
the independent claims? 3 We answer this question in the negative.
Therefore, we AFFIRM.
ANALYSIS
Appellant has not presented arguments for all the claims subject to the
obviousness rejections. Appellant has also argued all the independent claims
together. Any claim not separately argued will stand or fall with
independent claim 1. We will address all of the separately argued claims.
We begin our discussion with claim 1.
Appellant in the Specification states “[t]here is no limitation with
respect to the type of pasta dough that may be used to make the pasta
composition of the present invention, as long as the pasta dough is suitable
to be extruded from a commercial or domestic pasta making machine.”
(Spec 4). Consequently, Appellant's argument (App. Br. 9, 10) regarding the
composition and type of flour described in the cited prior art are not
persuasive.
The Examiner found that a variety of pasta shapes including shapes
having an open framework and lattice type structure are known to persons of

3 The issue presented for review in both rejections is the same. Thus we will
address the rejections together.
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ordinary skill in the art. (Ans. 3-4). The Examiner found that lattice shapes
having tapered leg portions are conventional and suitable for food products
as evidenced by Kill, Starck, Villota, Graverini, Sautier, Sascharschmidt
‘699 and Sascharschmidt ‘027. (Ans. 4-5). Appellant in the Brief does not
specifically dispute the Examiner’s position. (See Brief generally). The
Examiner concluded that it would have been obvious to use conventional
food shapes for pasta.
Appellant is basing patentability on the shape of the pasta structure.
(App. Br. 9-16). Specifically, Appellant argues the claimed invention is
characterized by the lattice structure having a middle portion cross-sectional
volume of about 2.0% to about 25% larger than the middle portion cross-
sectional volume of the tapered portion. (App. Br. 9). It is well settled that
where patentability is predicated upon a change in a condition of a prior art
composition, such as a change in size, concentration or the like, the burden
is on the Appellant to establish with objective evidence that the change in
critical, i.e., it leads to a new, unexpected result. Appellant has failed to
specifically identify how the lattice structure having a middle portion cross-
sectional shape as claimed leads to a new, unexpected result. That is,
Appellant in the Brief has not explained how the alleged uniform heating of
the pasta is a new, unexpected result. Further, Appellant has not explained
how uniform heating of the pasta is determined and evaluated.
In rebuttal to the Examiner's rejections, Appellant in the Brief relies
on the data presented in the Specification (pages 7-8) as exhibiting evidence
of unexpected results. (App. Br. 17). Appellant asserts that the examples in
the Specification compare the pasta according to the present invention and
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conventional pasta that does not have tapered portions as required by the
claimed subject matter.
We agree with the Examiner that the data presented in the
Specification is insufficient to establish the existence of unexpected
properties for the claimed subject matter. (Ans. 5-6). The Examiner
properly recognized that the shape and structure of the “conventional” pasta
has not been provided and the single example representative of the claimed
invention does not encompass the entire claimed range. Appellant has not
explained how this single example is representative of the claimed tapered
leg portion cross-sectional volume that ranges from about 2.0% to about
25.0% larger than a middle portion cross-sectional volume of the tapered
portion. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980). Consequently,
Appellant’s evidence in the Specification is insufficient to establish that the
claimed lattice structure produces results that would have been unexpected.
Under these circumstance, we cannot conclude that the Examiner
erred in the determination that the appealed subject matter is obvious under
35 U.S.C. § 103. Therefore, the rejections of claims 1, 3-6, 8-10, and 12-15
under § 103 are affirmed.
CONCLUSION
The decision of the Examiner rejecting claims 1, 3-6, 8-10, and 12-15
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).

AFFIRMED
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