Ex Parte Gorris

Patent Trial and Appeal Board

Sep 20, 2016

12639882 (P.T.A.B. Sep. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/639,882 12/16/2009
22822 7590
LEWIS RICE LLC
ATTN: BOX IP DEPT.
600 Washington Ave.
Suite 2500
ST LOUIS, MO 63101
09/22/2016
FIRST NAMED INVENTOR
MarkGorris
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
157/l 721US(l) 7655
EXAMINER
GEORGE, PATRICIA ANN
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
09/22/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
IPDEPT@LEWISRICE.COM
KDAMMAN@LEWISRICE.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GORRIS
Appeal2014-006065
Application 12/639,882
Technology Center 1700
Before CATHERINE Q. TIMM, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant, Mark Gorris, appeals under 35 U.S.C. § 134(a) from the
Examiner's decision rejecting claims 21-38. A hearing was held on
September 15, 2016. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 We cite to the Specification ("Spec.") filed Dec. 16, 2009; Final Office
Action ("Final Act.") mailed Aug. 12, 2013; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
Appeal2014-006065
Application 12/639,882
BACKGROUND
According to Appellant, cinnamon may provide health benefits when
ingested in an amount constituting a medicinal dose, which Appellant
defines as "at least 1 gram consumed in a single instance." Spec. 14. The
subject matter on appeal relates to a food product containing a medicinal
dose of cinnamon. Id. at 11. Sole independent claim 21 is illustrative and
reproduced from the Claims Appendix of the Appeal Brief as follows:
21. A chewable consumable comprising:
a medicinal dose of cinnamon, said medicinal dose
comprising at least 1 gram and at least 2.5% of the total mass of
said chewable consumable;
a fruit additive chosen from the group consisting of: fruit
extract, fruit rind and combinations thereof, said fruit additive
comprising at least 2.5% of the total mass of said chewable
consumable;
a grain; and
an unrefined sweetener;
wherein said chewable consumable is formed by said
unrefined sweetener binding said cinnamon, said fruit additive,
and said grain together without use of additional fat or
chain proteins in said binding;
wherein said chewable consumable comprises between
about 16 to about 35 grams.
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Appeal2014-006065
Application 12/639,882
REJECTIONS
The Examiner maintained the following grounds of rejection: 2
I. Claims 21-38 stand rejected under 35 U.S.C. 112, first paragraph, for
failing to comply with the written description requirement. 3
II. Claims 20,4 21, 24--27, 29-31, and 34--38 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Nair5 as evidenced by Parthasarath. 6
III. Claims 22, 23, and 28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Nair, Parthasarath, and Prosise.7
IV. Claim 32 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nair, Parthasarath, and Smidt. 8
2 Final Act. 2, 3, 5-13; Ans. 4--14. Additional grounds of rejection under 35
U.S.C. § 112 were withdrawn. Ans. 2--4.
3 \Ve agree \vith ii,ppellant's observation, ii.pp. Br. 11, n. 1, that the
Examiner's mistaken reference to "claim l" in the Final Office Action and
Answer were meant to reference claim 21.
4 The Examiner mistakenly identifies claim 20 as rejected in both the Final
Office Action and Answer, notwithstanding that claim 20 was canceled prior
to entry of the Final Office Action.
5 US 2009/0004334 Al, published Jan. 1, 2009 ("Nair").
6 The Examiner cites Parthasarath as Chemistry of Spices; CABI, 2008 -
Cooking - 445 pages. The electronic file wrapper for this case contains a
single page document, entered August 12, 2013, bearing the title, "7 .1.
Introduction." We presume this single page document to be the Parthasarath
reference identified in the Final Office Action and Answer. In any event, the
Examiner cites to and relies upon Parthasarath only in connection with the
rejection of dependent claims 24 and 25, Final Act. 7, which Appellant does
not separately argue. Thus, the identity of this reference does not affect our
Decision.
7 US 2002/0012722 Al, published Jan. 31, 2002 ("Prosise").
8 US 2007/0212433 Al, published Sep. 13, 2007 ("Smidt").
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Appeal2014-006065
Application 12/639,882
V. Claim 33 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Nair, Parthasarath, and Cleveland.9
DISCUSSION
I
In articulating a basis for Rejection I, the Examiner stated only that
the originally filed Specification lacks support for the language, "said
unrefined sweetener binding said cinnamon, said fruit additive, and said
grain together without use of additional fat or chain proteins in said
binding," recited in claim 21. Final Act. 3; Ans. 5.
Appellant points to paragraph 40 of the Specification, where it is
disclosed that "the sugars in an embodiment may serve to act as binders for
the other materials to allow for the composition to retain its shape after
cooking." App. Br. 14. Appellant also points to paragraph 42 of the
Specification, which states that "the food substrate ... will utilize ... sugars
to act as binders." Id. Appellant further points to paragraphs 42 and 51 of
the Specification, which teach, respectively, that "the food substrate will
generally not comprise ... eggs, butter or similar oils, or milk," and "the
sugar binders ... serve to lightly bind, as opposed to utilizing fats or other
materials ... to provide the ... binding characteristics." Id. at 15-16.
Lastly, Appellant notes the disclosure in paragraph 54 of the Specification
that "the product will generally lack the chain proteins provided by eggs or
similar ingredients." Id. at 16. We are persuaded that these passages are
9 US 2010/0113598 Al, published May 6, 1010 ("Cleveland").
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Appeal2014-006065
Application 12/639,882
sufficient to convey to one of ordinary skill in the art that Appellant
possessed the subject matter in dispute at the time of original filing.
Accordingly, we will not sustain Rejection I.
II
With regard to Rejection II, Appellant argues that the Examiner
improperly disregarded the same recitation in claim 21, which the Examiner
deemed in Rejection I not to be adequately supported by the Specification-
namely, "wherein said chewable consumable is formed by said unrefined
sweetener binding said cinnamon, said fruit additive, and said grain together
without use of additional fat or chain proteins in said binding." App. Br. 24--
27. We agree. The Examiner characterized the above-quoted recitation as a
method step, and expressly disregarded it. Final Act. 6; Ans. 6 (explaining
that "since the patentability of a product is not dependent on its method of
manufacture, such step are [sic, is] not required of the claims'} Irrespective
of whether the word, "formed," relates to a method by which the claimed
product is made, there can be no dispute that the claim requires that the
unrefined sweetener-and not additional fat or chain proteins-binds the
listed ingredients. Such binding plainly constitutes a physical property of
the recited product. The Examiner's admitted disregard of that recited
feature in reaching the obviousness determination was error.
Although not stated in the Final Office Action, the Examiner
supplemented the basis for Rejection II in the Answer, finding that Nair's
teaching of incorporating the disclosed nutritional powder supplement into
nutrient bars, cookies and other bakery items implicitly results in "the
structure of being bound/heated" and "without additional fats in the
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Appeal2014-006065
Application 12/639,882
binding." However, the fact that Nair does not require fats or oils in the
nutritional powder alone does not support an inference that a cookie or
bakery item incorporating that powder would be free from binding fats or
chain proteins (typically from eggs or similar ingredients (Spec. if 54)), or
that the absence of such binding fats or chain proteins would have been
obvious.
For the foregoing reasons, we are persuaded that the Examiner did not
present substantial evidence sufficient to support the obviousness
determination in rejecting claim 21. Therefore, on this record, we cannot
sustain Rejection II.
III-V
Because each of Rejections III-Vis premised on the same erroneous
findings and claim interpretation adopted in Rejection II, we will not sustain
these Rejections for the same reasons given above in connection with
Rejection II.
DECISION
The Examiner's decision rejecting claims 21-38 is reversed.
REVERSED
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