Ex Parte Goedeken et al

Board of Patent Appeals and Interferences

Nov 14, 2011

10677029 (B.P.A.I. Nov. 14, 2011)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
10/677,029 10/01/2003 Douglas L. Goedeken P6187US 9524
7590 11/14/2011
KAGAN BINDER, PLLC
Maple Island Building, Suite 200
221 Main Street North
Stillwater, MN 55082
EXAMINER
TRAN LIEN, THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
11/14/2011 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
____________________

BOARD OF PATENT APPEALS AND INTERFERENCES
____________________

Ex parte DOUGLAS L. GOEDEKEN, DAVID J. DOMINGUES,
JOHN J. FENSKE, MICHAEL J. ANTINONE, JILL M. WESTLUND
and CURTIS M. DEMULLING
____________________

Appeal 2011-003533
Application 10/677,029
Technology Center 1700
____________________

Before: FRED E. McKELVEY, RICHARD E. SCHAFER, and
SALLY GARDNER LANE, Administrative Patent Judges.

McKELVEY, Administrative Patent Judge.

DECISION ON APPEAL

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Statement of the case
General Mills Marketing, Inc. (General Mills), the real party in interest 1
(Brief, page 3), seeks review under 35 U.S.C. § 134(a) of a final rejection mailed 2
26 January 2010. 3
The application was filed on 1 October 2003. 4
The application has been published as U.S. Patent Application Publication 5
2005/0074534 A1. 6
Claims 1-3, 6, 10-11, 21-25 and 28-32 are in the application and are on 7
appeal. 8
The Examiner mentions the following evidence. 9
Freyn U.S. Patent 5,451,417 19 Sept. 1995
Moder U.S. Patent 6,579,554 B2 17 June 2003
10
Freyn is prior art under 35 U.S.C. § 102(b). 11
Moder is prior art under 35 U.S.C. § 102(a). 12
General Mills calls attention to (Brief, page 12): 13

McGee, Harold
On Food and Cooking,
The Science of Lore of
the Kitchen, page 305

No date given
14
In view of the arguments made by General Mills and our disposition of the 15
appeal, we have not found it necessary to consider Moder. 16
We have jurisdiction under 35 U.S.C. § 134(a). 17

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Analysis 1
The necessary facts appear in our discussion of the issues raised by General 2
Mills in the appeal contesting the Examiner’s refusal to allow the claims on appeal. 3
The rejections 4
The Examiner has declined to allow Claims 1-2, 10-11 and 28-32 as being 5
anticipated under 35 U.S.C. § 102(b) by Freyn. Answer, page 3. 6
The Examiner also has declined to allow Claims 3, 6 and 21-25 as being 7
unpatentable under 35 U.S.C. § 103(a) over Freyn. Answer, page 4. 8
Evidentiary matters 9
General Mills has cited and relied upon a quote said to come from page 305 10
of McGee. Brief, page 12. We decline to consider the quote. 11
According to General Mills, on page 305, McGee is said to state (italics 12
added): 13
Both milk and eggs contribute three major ingredients: water, protein, 14
and fat. The first must be taken into account when determining how 15
much liquid to add to the flour. 16
McGee is not entitled to be considered on appeal. General Mills has not 17
complied with the requirements of the evidence appendix provisions of 37 C.F.R. 18
§ 41.37(c)(1)(ix). General Mills does not tell us where McGee was “entered” by 19
the Examiner and General Mills did not provide a copy of the relevant pages of 20
McGee in the evidence appendix. The Examiner properly did not discuss McGee 21
in the Answer. 22
General Mills discusses a Rule 132 Domingues Declaration filed on 23
7 October 2008. The Examiner declined to consider the Rule 132 Declaration 24

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because it was held to be not legible. Answer, page 7. The Examiner states that a 1
legible declaration was never submitted. Accordingly, we will not consider the 2
7 October 2008 declaration and arguments based on the declaration because it was 3
not admitted or considered by the Examiner. 4
Position of General Mills 5
General Mills maintains that the rejections are incorrect and asks for 6
reversal. 7
We proceed directly to an analysis of the reasons advanced in the Brief by 8
General Mills. 9
With respect to the anticipation rejection, General Mills does not single out 10
any particular claim for separate consideration—indeed General Mills argues the 11
claims as a group. Accordingly, as to the anticipation rejection we select Claim 28 12
to resolve the appeal. See 37 C.F.R. § 41.37(c)(1)(vii). 13
Claim 28 14
Claim 28 reads [bracketed matter added, limitations in issue in italics]: 15
An unproofed frozen dough composition comprising leavening agent 16
comprising 17
[1] yeast, and 18
[2] chemical leavening agent comprising 19
[2.1] acidic active agent selected from the group 20
consisting of monocalcium monohydrate, glucono-delta-lactone, 21
sodium acid pyrophosphate, and combinations thereof, 22
[2.2] basic active agent, 23
[2.3] flour, and 24

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[2.4] water 1
[3] the weight ratio of flour to water is in the range from 1.67 to 2
1.82; 3
[4] the dough composition, after thawing, can proof at retarder 4
conditions; and 5
[5] retarder conditions comprise a temperature in the range of 6
32 ºF to 46 ºF. 7
Issue 1—anticipation—the flour-to-water ratio 8
The Examiner found that Freyn describes, in Example 6, a flour-to-water 9
ratio of 1.70: “Example 6 shows a ratio of 1.70 which falls within the claimed 10
range in claims 28 and 1.” Answer, page 4:9-10. 11
General Mills maintains that the Examiner erred in finding that Freyn 12
describes a ratio of 1.70. Brief, page 11. Example 6 of Freyn describes a dough 13
prepared using the following ingredients (col. 9:7-2): 14

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Ingredients Percent by weight

Bread Flour, Treated 70.94%
Bread Flour, Hi Gluten 29.06%
Sucrose 8.19%
Shortening-Liquid (partially
hydrogenated soybean and
cottonseed oils)

16.37%
Non Fat Dry Milk 2.73%
Dough Conditioner 0.50%
Paniplus M Salt 1.43%
Baking Soda 3.41%
Sodium Aluminum Phosphate 3.79%
Yeast (dry yeast) 4.77%
Liquid Egg 5.46%
Water 58.6%
1
The amount of flour is 70.94% + 29.06% = 100%. 2
The amount of water is 58.6% 3
The ratio of flour to water is 100/58.6 = 1.7064 = 1.71. 4
The Examiner appears to have rounded 1.7064 to 1.70. 5
Both 1.70 and 1.71 are within the claimed range of 1.67 to 1.82. 6
General Mills maintains that the Examiner did not calculate the amount of 7
water correctly. Brief, page 11:5 to page 12:three lines from bottom. 8
According to General Mills, the Examiner overlooked water, which is said to 9
be present in eggs, with eggs being present as an ingredient in Freyn Example 6. 10
Brief, page 12. 11

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If, as General Mills asserts (without any supporting evidence), eggs contain 1
76% water, then according to General Mills, when the egg water is included, the 2
flour-to-water ratio becomes 1.60—outside the claimed range of 1.67 to 1.82. 3
The Examiner found that the claimed flour-to-water range is based on the 4
examples of the Specification which describe flour to water ratios of (1) 1.73, 5
(2) 1.67, (3) 1.75, (4) 1.82 and (5) 1.81. 6
The claimed range includes all the ratios from 1.67 to 1.82 and is sanctioned 7
by Ex parte Jackson, 110 USPQ 561, 562 (Bd. App. 1956). 8
The flour-to-water ratio limitation was added to the claims after the 9
application was filed. 10
Therefore, the Specification does not explicitly define a “flour to water 11
ratio.” 12
Addition to claims of limitations not explicitly described in a specification 13
often leads to complications. See, e.g., Linn, Perspectives on Becoming a 14
Successful Examiner, 91 J. Pat. & Tm. Office Soc'y 418, 421 (No. 6 June 2009) (In 15
case after case before my court, the central debate revolves around the meaning of 16
claim terms that, for example, were added during prosecution and do not appear 17
anywhere in the written description. For those cases, the meaning of the claim 18
limitation has to be inferred from other words, leaving the issue open to 19
unnecessary dispute and leading frequently to protracted and costly litigation.) 20
The General Mills Specification describes addition of “liquid” components 21
to dough (Specification, page 13:24-27) (italics added): 22
Examples of liquid components include water, milk, eggs, and oil, or 23
any combination of these. Amounts of such liquid components are 24

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well known. The amount of liquid component included in any 1
particular dough composition can depend on a variety of factors 2
including the desired moisture content of the dough composition. 3
The Specification upon which the flour-to-water ratio is said to be based 4
distinguishes between liquids and water. 5
Claim 28 does not refer to a flour-to-“liquid” ratio; it refers to a water-to-6
flour ratio. Based on the Specification, the Examiner had a rational basis for 7
determining that the flour-to-water ratio in the claims is based on water—not water 8
plus water in eggs or other liquid contributing elements in Example 6 of Freyn. 9
As mentioned earlier, we decline to consider McGee. Had McGee been 10
properly placed into the record, and putting aside the fact that only a brief quote is 11
given (which may or may not be out of context), McGee, like General Mills, refers 12
to “liquids” to be added to dough not water. McGee is consistent with the 13
Specification. Moreover, in determining the meaning of a claim limitation, we are 14
reluctant to rely on external sources particularly when the Specification itself 15
discusses liquids to include water and eggs. 16
Freyn describes in Example 6 a flour-to-water ratio of 1.70 or 1.71 and that 17
flour-to-water ratio meets the limitation of Claim 28. 18

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Issue 2—anticipation—the retarder conditions 1
According to General Mills, Freyn does not describe a dough composition 2
that is capable of “proofing” at retarder conditions after thawing. Brief, 3
page 12:next to last line to page 13:last line. 4
In support of its position, General Mills mentions (page 13:second to last full 5
paragraph) a Rule 132 Domingues Declaration submitted 7 October 2008. For 6
reasons previously given, we decline to consider the declaration. 7
The Specification defines “proofed” as follows (page 6:16-17): 8
The term “proofed” is used herein refers to a dough composition that 9
has been processed by a step intended to cause a volumetric rise in the 10
dough. 11
The Examiner noted that the dough of Freyn Example 6 has the same flour-12
to-water ratio as the claimed dough and therefore one skilled in the art would 13
assume that the Freyn Example 6 dough would “proof” at retarder conditions in a 14
temperature range of 36 ºF to 46 ºF. Answer, page 9. 15
The Examiner also noted that, in a Rule 132 Domingues Declaration filed 16
8 March 2008 (which was admitted and considered), General Mills establishes that 17
a Freyn dough “proofed” (increased in volume) at 40 ºF and 45 ºF. Answer, 18
page 9. See Domingues Declaration of 8 March 2008 at (1) page 4, 40 ºF data 19
where a Freyn dough had a volume change of 34.41 % over a 24-hour period and 20
(2) page 5, 45 ºF data where a Freyn dough had a volume change of 36.03 % over a 21
24-hour period. 22
General Mills has not shown the Examiner’s findings, with respect to 23
proofing at retarder conditions, to be erroneous. 24

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Issue 3—obviousness—retarder to oven proofing 1
Apart from Claim 3, General Mills argues the claims rejected under § 103(a) 2
as a group. We will consider Claim 21. 3
General Mills alleges that the Freyn dough is not capable of retarder-to-oven 4
proofing. Rather, says General Mills, the Freyn dough is exclusively and very 5
intentionally designed for freezer-to-oven baking performance. Brief, page 14:12 6
to page 15:20. 7
In assessing General Mills’ position, we have not considered the argument 8
on page 15:9-20 because, as noted earlier, the Examiner did not admit or consider 9
the Rule 132 Domingues Declaration of 7 October 2008. 10
The principal argument by General Mills is that Freyn specifically set out to 11
“invent” a freezer-to-oven dough which does not need to be proofed before being 12
placed in an oven. Freyn, col. 1:57-61. 13
The Examiner points out (Answer, page 8) that Freyn reveals (col. 5:66 to 14
col. 6:5) (italics added): 15
The frozen dough does not need to be thawed or proofed prior 16
to baking, albeit the dough may be thawed and proofed (that is, if 17
thawing and proofing does take place, it will not detract from the 18
quality of a baked product). The dough may be taken directly from 19
the freezer to the oven. The resulting baked product substantially 20
resembles a traditional proofed product in appearance, structure, and 21
taste. 22
Contrary to assertions by General Mills, Freyn explicitly states that its dough 23
may be thawed and proofed. 24

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Apart from Claim 3, General Mills does not single out any particular claim 1
for separate consideration with respect to the § 103(a) rejection. 2
Claims 6 and 22-25 fall with Claim 21. 3
Issue 4—obviousness—raw specific volume 4
General Mills maintains that Claim 3 is separately patentable. Brief, 5
page 16:3 et seq. 6
Claim 3 calls for a Claim 1 “unproofed frozen” dough made from an 7
unspecified amount of yeast and chemical leavening agent. The dough must proof 8
at retarder conditions to a raw specific volume in a range from 1.5 to 3 cubic 9
centimeters per gram (cc/g). 10
In the Final Rejection (page 3), the Examiner said the following (brackets 11
and italics added): 12
As to the specific volume, this parameter can vary depending on the 13
several factors including [1] the amount of leavening agents used, 14
[2] the type of product, [3] the mixing time, [4] the proportions of 15
ingredients used etc. It would have been obvious to one skilled in the 16
art to determine the appropriate raw specific volume depending on the 17
type of product and the specific texture and taste wanted. 18

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In the Brief, General Mills states (page 16): 1
The rejections of record summarily conclude that it would have 2
been obvious to one skilled in the art to determine the appropriate raw 3
specific volume depending on the type of product and the specific 4
texture and taste wanted, and that this is within the skill of one in the 5
art through routine experimentation. 6
This conclusion is untenable, at least because this asserted 7
ground of rejection is not supported by a reasoned analysis, but is a 8
mere perfunctory conclusion lacking substantive support. 9
By “substantive support” we think General Mills means “evidence.” 10
The Examiner found that specific volume can vary depending on several 11
factors including [1] the amount of leavening agents used, [2] the type of product, 12
[3] the mixing time and [4] the proportions of ingredients used. General Mills has 13
not challenged the correctness of the Examiner’s finding. We have no reason to 14
question the accuracy of that finding. In re Eskild, 387 F.2d 987, 988 (CCPA 15
1968) (Examiner's statement relating to common practices in the art was accepted 16
as factual in view of appellant's failure to challenge the statement). 17
Moreover, we have difficulty believing that General Mills would challenge as 18
incorrect the Examiner’s finding that specific volume is a function, inter alia, of 19
the amount of leavening agents and proportions of ingredients used. 20
The Rule 132 Domingues Declaration of 7 March 2008 (which was entered 21
and considered by the Examiner) discusses raw specific volume of one of General 22
Mills products (having a flour-to-water ratio of 1.70) vis-à-vis a modified version 23
of a Freyn product (having a flour-to-water ratio of 1.51). The data set out in the 24

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Declaration shows that a specific volume increases for both over time, albeit the 1
Freyn product does not seem to reach a specific volume of 1.5 cc/g. As observed 2
by the Examiner (Answer, page 10), the Declaration data is based on one example 3
of Freyn. The declaration has no specific volume data for Freyn’s Example 6 4
which has a flour-to-water ratio of 1.70. 5
The Examiner’s “untenable” conclusion (to use General Mills’ words) is 6
entirely logical when considered in light of the Examiner’s unchallenged findings 7
and the Rule 132 Domingues Declaration of 7 March 2008. 8
One skilled in the art is not an automaton. KSR Int’l, Inc. v. Teleflex, Inc., 9
550 U.S. 398, 421 (2007). The Examiner found that one skilled in the art knows 10
that specific volume is a function of several parameters. There is no apparent 11
reason on this record why one skilled in the art would be incapable of making a 12
dough with a particular specific volume. 13
Other arguments 14
We have considered all of General Mills’ arguments and find none that 15
warrant reversal of the Examiner’s rejections. Cf. Hartman v. Nicholson, 483 F.3d 16
1311, 1315 (Fed. Cir. 2007). 17
Decision 18
Upon consideration of the appeal, and for the reasons given herein, it is 19
ORDERED that the decision on the Examiner rejecting claims 1-2, 20
10-11 and 28-32 based on anticipation is affirmed. 21
FURTHER ORDERED that the decision on the Examiner rejecting 22
claims 3, 6 and 21-25 based on obviousness is affirmed. 23

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FURTHER ORDERED that no time period for taking any 1
subsequent action in connection with this appeal may be extended under 37 C.F.R. 2
§ 1.136(a)(1)(iv). 3
AFFIRMED 4
5
6
7
8
bim 9