13140495 (P.T.A.B. Sep. 29, 2016)

Ex Parte Hansa et al

Patent Trial and Appeal BoardSep 29, 2016

13140495 (P.T.A.B. Sep. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/140,495 08/05/2011 110933 7590 09/29/2016 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 FIRST NAMED INVENTOR JimHansa 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. CQKER.3 l 67PCT 8104 EXAMINER DICUS, TAMRA ART UNIT PAPER NUMBER 1791 MAILDATE DELIVERY MODE 09/29/2016 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 PATENT TRIAL AND APPEAL BOARD Ex parte JIM HANSA, JOE GRIEBAT, and JEROME KESSLER Appeal2014-009774 Application 13/140,495 Technology Center 1700 Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and CHRISTOPHER C. KENNEDY, Administrative Patent Judges. HANLON, Administrative Patent Judge. uECISION ON APPEAL A. STATEMENT OF THE CASE The Appellants filed an appeal under 35 U.S.C. Â§ 134 from an Examiner's decision finally rejecting claims 1 and 3-5 under 35 U.S.C. Â§ 103(a) as unpatentable over Fox1 in view of Karwowski et al. 2 We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM. 1 US 6,238,719 Bl, issued May 29, 2001 ("Fox"). 2 US 4,603,055, issued July 29, 1986 ("Karwowski"). Appeal2014-009774 Application 13/140,495 The claims on appeal are directed to a cut oat flake product and a method of producing cut oat flakes. Representative claim 1 is reproduced below from the Claims Appendix of the Appeal Brief dated February 28, 2014 ("App. Br."). 3 1. A cut oat flake product comprising cut oat flakes having a thickness from about 0.016 to about 0.020 inches, a length from about 0.05 to about 0.15 inches, and a width from about 0.05 to about 0.15 inches. App. Br. 8. B. DISCUSSION The Examiner finds Fox teaches a cut barley flake product having a thickness of 0.007 to 0.016 inches, which falls within the claimed range of "about 0.016 to about 0.020 inches."4 Ans. 2;5 App. Br. 8. The Examiner finds "Fox teaches barley and oat flake as cereal equivalents." Ans. 3. The Examiner finds Fox does not teach that the disclosed flakes have a length and a width as claimed. Ans. 3. Thus, the Examiner turns to Karwowski. The Examiner finds Karwowski teaches an oat flake having a similar thickness range (i.e., about 0.013 inch) and a length and a width of at least 0.13 inches, which falls within the claimed length and width ranges. Ans. 3. The Examiner finds the oat flakes disclosed in Karwowski "benefit in steaming and hydration." Ans. 3 (citing Karwowski, col. 4, 11. 20-40). Karwowski discloses: 3 The Appellants argue the patentability of claims 1 and 3-5 as a group. Therefore, claims 3-5 stand or fall with the patentability of claim 1. See 37 C.F.R. Â§ 41.37(c)(iv) (2014). 4 See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) ("even a slight overlap in range establishes a prima facie case of obviousness"). 5 Examiner's Answer dated July 16, 2014. 2 Appeal2014-009774 Application 13/140,495 The present invention provides a process for making flake cereal product from a plurality of grain types. In the preferred embodiment a mixture of three grains types is used. These grain types can be any member of a group consisting of wheat, rye, oats, barley, rice, com, and buckwheat. The grains are then cut to a size of approximately 0.132 inch or sufficient to pass a #6 mesh by any number of processes known in the art. Steel cut grains are preferred because a uniform grain particle size results. This uniform grain particle size aids in the steaming process of the different grains by allowing for even hydration. Karwowski, col. 4, 11. 20-31 (emphasis added). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify "the barley flake of Fox to substitute it for an oak [sic, oat] flake because Karwowski teaches they are equivalents"6 (Ans. 3) and to further modify the oat flake to include a length and a width as claimed to benefit steaming and hydration as disclosed in Karwowski (Ans. 4). The Appellants argue Fox does not teach that barley flakes and oat flakes are "interchangeable." App. Br. 5. Rather, the Appellants argue, "Fox merely states that beta-glucan is present in both oats and barley" and "gives several reasons why barley is preferable to oats." App. Br. 5. The Appellants also direct our attention to Fox Example 5 and argue, "Fox states that barley is clearly superior to oats." App. Br. 5 (emphasis omitted). The Appellants' arguments are not persuasive of reversible error. Fox discloses that "[t]he High Veeâ„¢ Flakes [i.e., a high viscosity barley flake] are superior to the whole, uncooked barley flakes at every concentration 6 The Examiner also finds "Fox teaches barley and oat flake as cereal equivalents." Ans. 3. 3 Appeal2014-009774 Application 13/140,495 level. They are also clearly superior to the quick oat flakes at the % oz addition level." Fox, col. 9, 11. 21-24 (emphasis added). The Examiner finds, and the Appellants do not dispute, that "at lower concentrations, the barley flake would not be superior to oat flakes" and correctly concludes that "Appellant's claims do not preclude concentration levels." Ans. 5. To the extent that Fox teaches barley flakes have certain advantages over oat flakes, the record on appeal supports a finding that barley flakes and oat flakes were both known to be used in a cereal product at the time of the Appellants' invention. See Fox, col. 1, 11. 17-21; Karwowski, col. 4, 11. 20- 25; see also Ans. 5 ("It is of note that barely [sic, barley] and oat flakes are different and thus not identical; however, they are indeed equivalent as they are both cereal grains and are sources ofbeta-glucans." (citing Fox, col. 9, 11. 1-16)). On this record, the Appellants do not direct us to any evidence showing that the alleged differences between barley flakes and oat flakes would have discouraged one of ordinary skill in the art from producing oat flakes having a thickness as disclosed in Fox. The Appellants also argue that the thickness disclosed in Karwowski (i.e., about 0.013 inch) is not similar to the claimed thickness range, as found by the Examiner. App. Br. 6. However, in the rejection on appeal, the Examiner finds the thickness of the flakes disclosed in Karwowski (i.e., about 0.013 inch) is similar to the thickness of the flakes disclosed in Fox (i.e., 0.007 to 0.016 inches), not similar to the thickness of the claimed 4 Appeal2014-009774 Application 13/140,495 flakes. 7 The Examiner relies on Fox to show the claimed thickness. See Ans. 2, 6. Finally, the Appellants argue that "Fox describes its product as a 'high viscosity barley flake'" which would have led one of ordinary skill in the art away from the claimed invention "which produces a 'less viscous' product." App. Br. 6. Significantly, the claims on appeal do not recite a particular viscosity. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (appellant's arguments fail because "they are not based on limitations appearing in the claims"). Moreover, "high viscosity" and "less viscous" are relative terms which fail to distinguish the claimed invention from the flakes disclosed in Fox. See Ans. 6. In that regard, we note the Appellants do not direct us to any evidence of unexpected results. 8 For the reasons set forth above and reasons provided in the Examiner's Answer, the Â§ 103(a) rejection of claims 1 and 3-5 is sustained. C. DECISION The Examiner's decision is affirmed. 7 We note that the record on appeal also supports a finding that the thickness of the flakes disclosed in Karwowski (i.e., about 0.013 inch) is similar to the thickness of the claimed flakes which have a thickness as low as about 0.016 inch. See Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995) ("The use of the word 'about,' avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context."). 8 Fox and Karwowski teach that the thickness of the flakes is a result- effective variable. See Fox, col. 8, 11. 16-23; Karwowski, col. 5, 11. 4--9. 5 Appeal2014-009774 Application 13/140,495 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 6