Ex Parte Graham et al

Board of Patent Appeals and Interferences

Feb 8, 2011

11405153 (B.P.A.I. Feb. 8, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
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.
11/405,153 04/17/2006 Peter G. Graham PI028/00PI9 3287
24350 7590 02/08/2011
STITES & HARBISON, PLLC
400 W MARKET ST
SUITE 1800
LOUISVILLE, KY 40202-3352
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
02/08/2011 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
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte PETER G. GRAHAM, TODD W. CRAIG, and
CARRIE L. GOFF
__________

Appeal 2010-009680
Application 11/405,153
Technology Center 1700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL1,2
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a pizza. The Examiner rejected the claims as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a
civil action, as recited in 37 C.F.R. § 1.304, or for filing a request
for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from
the “MAIL DATE” (paper delivery mode) or the
“NOTIFICATION DATE” (electronic delivery mode) shown on
the PTOL-90A cover letter attached to this decision.
2 This application is related to 11/405,143, Appeal 2010-009455.
Appeal 2010-009680
Application 11/405,153

2
Statement of the Case
The Claims
Claims 1-6 and 21 are on appeal. Independent claim 1 is
representative and reads as follows:
1. A method of making a pizza crust, comprising:
forming a mass of dough into a substantially
flattened shape with an inner crust
bordered by an outer crust extending around the
inner crust;
dividing the outer crust into a plurality of segments
by pressing a plurality of cutting fins of a cutting ring
through the outer crust to form the plurality of segments,
each of the plurality of segments defining a first end, a
second end opposite the first end, a first side adjacent to
the inner crust, and a second side opposite the first side
and spaced apart from the inner crust; and
turning each of the plurality of segments such that
the second end is moved away from the inner crust, with
the first and second ends of each of the plurality of
segments being disconnected from adjacent segments
while each of the plurality of segments remain connected
to the inner crust by one or more dough tabs.

The issues
A. The Examiner rejected claims 1, 2, 6, and 21 under 35 U.S.C. § 103(a)
as obvious over Business Wire,3 Atwater,4 and Exhibits A-C5 (Ans. 4-7).

3http://findarticles.com/p/articles/mi_m0EIN/is_2001_March_19/ai
_71808866/
4 Atwater, Andrea E., US 2004/0250667 A1, published Dec. 16,
2004.
5 See Rader Declaration, filed Jul. 21, 2009, Exhibits A-C attached.
Appeal 2010-009680
Application 11/405,153

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B. The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as obvious
over Business Wire, Atwater, Exhibits A-C, and Mongiello6 (Ans. 7).
C. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as obvious
over Business Wire, Atwater, Exhibits A-C, and Woodward7 (Ans. 8-9).
D. The Examiner rejected claim 5 under 35 U.S.C. § 103(a) as obvious
over Business Wire, Atwater, Exhibits A-C, and Sioutis8 (Ans. 9).

A. 35 U.S.C. § 103(a) over Business Wire, Atwater, and Exhibits A-C
The Examiner finds that “Wire teaches that the twisted crust pizza is a
hand tossed style pizza surrounded by breadstick crust (pages 2-3). Wire
teaches that the breadsticks add ripping and dipping fun to eating the pizza
(page 1)” (Ans. 4). The Examiner finds that “Wire is silent to the dough
segments as turned so that the second end moves away from the inner crust,
with the first and second segments being disconnected from the adjacent
segments and the segments remained connected to the inner crust by dough
tabs as recited in claims 1 and 21” (Ans. 5). The Examiner finds that
Atwater “teaches that the cutting method provides straight cuts that go
completely through the food and form uniform sized pieces” (Ans. 5).
The Examiner finds that “it was common sense that it was easier to rip
material when less of the material was connected to the piece from which it
was being ripped from and that a common method to hold a material which
one was ripping was to pinch it on the edges” (Ans. 5). The Examiner

6 Mongiello et al., US 4,661,361, issued April 28, 1987.
7 Woodward et al., US 6,194,017 B1, issued Feb. 27, 2001.
8 Sioutis et al., US 2004/0011219, published Jan. 22, 2004.
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Application 11/405,153

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argues “based on the suggestions of the prior art and the common ingenuity
of one of ordinary skill in the art at the time the invention was made, it
would have been obvious for the dough segments connected by the dough
tabs to be turned so that the second end moves away from the inner crust in
order to weaken the dough tab connecting the segments to the pizza whole”
(Ans. 6-7).
Appellants contend that “the Examiner acknowledged that the
Business Wire article did not include any teaching or suggestion with respect
to cutting dough segments and then turning each of the segments such that
the second end of each segment is moved away from the inner crust and the
first and second ends of each segment are disconnected from adjacent
segments” (App. Br. 12). Appellants contend, regarding the twisted crust
pizza, that “the utilization of the ring press did not separate the breadstick
dough into discrete segments with the free edges of the dough segments
being disconnected from the central dough portion and/or from adjacent
dough portions. Rather, the ring press was merely used ‘to create the twisted
effect.’” (App. Br. 12-13).
Appellants contend that “Atwater provides no teaching or suggestion
with respect to dividing only a portion of a food item, such as the outer crust
of a pizza, or with respect to a cutting operation that would result in each of
the segments remaining connected to a central portion (i.e., inner crust) of
the food item” (App. Br. 13). Appellants contend that ”Atwater also
provides no teaching or suggestion whatsoever with respect to turning each
of the segments such that the second end of each segment is moved away
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Application 11/405,153

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from the inner crust and the first and second ends of each segment are
disconnected from adjacent segments” (App. Br. 13).
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that it would have been obvious to make
a pizza with the step of “turning each of the plurality of segments such that
the second end is moved away from the inner crust, with the first and second
ends of each of the plurality of segments being disconnected from adjacent
segments” as required by claims 1 and 21?
Findings of Fact
1. The Specification teaches that “the first and second sides 30, 32
of each of the plurality of dough segments 22 are distinct, or otherwise free
or disconnected from, an adjacent dough segment 22” (Spec. 4, l. 22 to 5, l.
1).
2. Figure 1 of the Specification is reproduced below:

“Fig. 1 is a top view of a pizza” (Spec. 2, l. 14).
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Application 11/405,153

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3. Business Wire teaches the “new Twisted Crust pizza boasts a
revolutionary breadstick crust that surrounds a hot, delicious Pizza Hut
pizza. The twisted crust is a seasoned breadstick that adds ‘ripping and
dipping’ fun to eating Twisted Crust pizza” (Business Wire 2).
4. Business Wire teaches a “twisted breadstick crust bordering the
pizza creates not only flavor sensations, but also visual sensations”
(Business Wire 3).
5. Step 6 of Exhibit A is reproduced below:
Step 6 shows a twisted crust pizza after removal of the quality ring press.
6. The Rader Declaration9 states that “the ring press used in the
assembly of the Twisted Crust Pizza did not separate the breadstick dough
into discrete segments” (Rader Dec. 2 ¶ 5).
7. The Rader Declaration states that “the utilization of the ring
press did not result in any dough segments with free edges disconnected

9 Rader Declaration, filed Aug. 4, 2009.
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Application 11/405,153

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from the central dough portion and/or from adjacent dough portions. Rather
the ring press was merely used ‘to create the twisted effect’” (Rader Dec. 2 ¶
5).
8. Atwater teaches “a food bar cutter that cuts a plurality of
smaller food portions from a food item sheet within a baking pan having
upright sides” (Atwater 1 ¶ 0011).
9. Atwater teaches that “the food bar cutter 10 of the claimed
invention can be configured for use with baking pans of other sizes and
shapes” (Atwater 2 ¶ 0035).
Principles of Law
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993).
An invention “composed of several elements is not proved obvious
merely by demonstrating that each of its elements was, independently,
known in the prior art….[I]t can be important to identify a reason that would
have prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does.” KSR Int’l Co. v.
Teleflex Inc., 550 U.S. 398, 418 (2007).

Analysis
The Examiner has acknowledged that the Business Wire publication
“is silent to the dough segments as turned so that the second end moves
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Application 11/405,153

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away from the inner crust, with the first and second segments being
disconnected from the adjacent segments and the segments remained
connected to the inner crust by dough tabs as recited in claims 1 and 21”
(Ans. 5). The Rader Declaration expressly states that “the ring press used in
the assembly of the Twisted Crust Pizza did not separate the breadstick
dough into discrete segments” (Rader Dec. 2 ¶ 5; FF 6).
The Examiner concludes that the limitation is obvious, however, since
“it was common sense that it was easier to rip material when less of the
material was connected to the piece from which it was being ripped from
and that a common method to hold a material which one was ripping was to
pinch it on the edges” (Ans. 5).
We are not persuaded. We agree with Appellants, who argue that the
Examiner’s rejection of these method claims
focuses only on the result, rather than providing any
explanation as to how such “common sense” would then
lead a person of ordinary skill in the art to the multi-step
method recited in claim 1 that includes (i) a distinct step of
dividing the outer crust into a plurality of segments, and (ii)
a distinct step of turning each of the plurality of segments to
disconnect them from adjacent segments while remaining
connected to the inner crust by one or more dough tabs.
Only after these distinct steps are performed do you
actually achieve the objective of providing segments that
can then be pulled off as desired for consumption. As such,
the “common sense” analysis that the Examiner offers
simply can not be regarded as sufficient support for the
conclusions of obviousness

(App. Br. 15).
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Application 11/405,153

9
Also, the twisted crust pizza cited by the Examiner as prior art does
not “disconnect” the dough segments (FF 6-7), so even if there was a
concern about ripping the pizza, the Business Wire prior art would not lead
the ordinary artisan to disconnect the adjacent dough segments.10 Even
assuming it would have been “common sense” to try the proposed
modification, the Examiner must articulate a reason as to why that is so, e.g.,
show a design need and finite number of identified solutions. KSR, 550 U.S.
at 421. The Examiner has not identified evidence in the prior art of a design
need, that is, that there was difficulty in ripping pizza into discrete pieces.
By the same token, though “common sense directs one to look with care at a
patent application that claims as innovation the combination of two known
devices according to their established functions,” the Examiner must
“identify a reason that would have prompted a person of ordinary skill in the
relevant field to combine the elements in the way the claimed new invention
does.” Id. at 418. Thus, the “obvious to try” and “common sense” rationales
require an articulated reason for the proposed modification. We find the
Examiner’s rationale of easier ripping of either the pizza slice or the dough
segment to be unconvincing.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that it would have been obvious to make a pizza with the step of “turning
each of the plurality of segments such that the second end is moved away

10 We also note that Exhibit 2 of the Rader Declaration shows the
pizza is cut into 8 slices, which limits the ripping concerns since
the pizza slices would presumably disconnect along the cut
portions with relative ease.
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Application 11/405,153

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from the inner crust, with the first and second ends of each of the plurality of
segments being disconnected from adjacent segments” as required by claims
1 and 21.
B.-D. 35 U.S.C. § 103(a) over Business Wire, Atwater, Exhibits A-C, and
Mongiello, Woodward or Sioutis
Having reversed the rejection over Business Wire, Atwater, and
Exhibits A-C above, we also reverse the obviousness rejections of dependent
claims 3, 4, and 5 for the reasons given above. The additional cited
references do not provide evidence of the elements missing in the rejection
of claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 6, and 21 under
35 U.S.C. § 103(a) as obvious over Business Wire, Atwater, and Exhibits A-
C.
We reverse the rejection of claim 3 under 35 U.S.C. § 103(a) as
obvious over Business Wire, Atwater, Exhibits A-C, and Mongiello.
We reverse the rejection of claim 4 under 35 U.S.C. § 103(a) as
obvious over Business Wire, Atwater, Exhibits A-C, and Woodward.
We reverse the rejection of claim 5 under 35 U.S.C. § 103(a) as
obvious over Business Wire, Atwater, Exhibits A-C, and Sioutis.

Appeal 2010-009680
Application 11/405,153

11
REVERSED

alw

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400 W MARKET ST
SUITE 1800
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