Ex Parte Hayes-Jacobson

Board of Patent Appeals and Interferences

Jul 8, 2004

09443559 (B.P.A.I. Jul. 8, 2004)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SUSAN M. HAYES-JACOBSON
____________
Appeal No. 2004-1508
Application No. 09/443,559
____________
ON BRIEF
____________
Before OWENS, KRATZ, and PAWLIKOWSKI, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-11 and 33-37, which are all of the claims
pending in this application.
BACKGROUND
Appellant's invention relates to a filled food product
that includes a flowable filling encased within a seamless and
continuous structure that is edible and surrounds the filling.
An understanding of the invention can be derived from a reading
of exemplary claim 1, which is reproduced below.
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1. A filled food product comprising a food structure and
a flowable filling, wherein the flowable filling is encased and
sealed within a seamless food structure that is continuous and
surrounds the filling, the food structure comprising cooked,
hydrated flour and a moisture content between about 20 percent
by weight and about 60 percent by weight.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
James et al. (James) 1,597,979 Aug. 31, 1926
Heim DE 195 24 209 Feb. 01, 1998
(German Patent Publication)
Claims 1-11 and 33-37 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Heim. Claims 1-11 and
33-37 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over James.
OPINION
We reverse the examiner’s § 103(a) rejection over Heim and
affirm the examiner’s § 103(a) rejection over James. Our
reasoning follows.
Rejection over Heim
All of the claims on appeal require that the product
foodstuff includes a filling “encased and sealed within a
seamless food structure that is continuous and surrounds the
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1 Heim employs a probe (16, fig. 1) to fill a cake piece
with a filling, which results in a hole in the surrounding food
material that extends at least to the location of the filling
that is inserted there within.
filling” (independent claim 1). While the examiner acknowledges
that Heim discloses a filled food that includes a hole in the
“food structure” that surrounds the filling, the examiner takes
the position that “there is no disruption in the structure”
(answer, page 4). Thus, the examiner is of the view that the
claim 1 language does not patentably distinguish over the product
of Heim because “[t]he hole is the same as the pores present in
the claimed product as shown in figure 7." Id.
Appellant, on the other hand, urges that the terms of the
claim 1 language quoted above are clear and understandable from
their plain meaning. Moreover, when claim 1 is read in light of
the specification (see, e.g., page 8, lines 12-16), it is
manifest, in appellant's view, that a throughhole1 in the
encasing food structure is not permitted by that language.
We agree with appellant because the examiner has not carried
the burden of establishing that the hole in the surrounding cake
made by the probe filling method of Heim would result in, or
otherwise suggest, a food product that is characterized by a
“flowable filling encased and sealed within a seamless food
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structure that is continuous and surrounds the filling.” In
this regard, the examiner has not shown where in Heim there is
any teaching that the hole formed in the cake would nonetheless
result in a flowable filling that is sealed in a surrounding
continuous structure as called for in appellant’s claims. We
note that the examiner’s references to appellant’s drawing figure
7 is not persuasive of any disclosure in Heim that suggests the
claimed product. Moreover, to the extent that the examiner is
arguing that the claim 1 language should be interpreted as being
broad enough to permit “probe filling” holes therein as employed
by Heim, we disagree. While the claims are given their broadest
reasonable interpretation consistent with the specification, we
do not subscribe to the examiner’s viewpoint that the claim terms
should be construed as permitting open fill holes as in Heim for
the reasons outlined above and in appellant’s brief.
Consequently, we reverse the stated § 103(a) rejection over Heim
on this record.
Rejection over James
At the outset, we observe that appellant (brief, page 9)
states that the appealed claims stand or fall together.
Accordingly, we select independent claim 1 as the representative
claim on which we decide this appeal as to this rejection. See
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37 CFR § 1.192(c)(7)(2002).
Appellant does not contest the examiner’s determination that
James suggests the product of representative claim 1 including a
seamless food structure that is continuous and surrounds a
filling sealed there within except for an alleged lack of
teaching to employ a “flowable” filling. Nor does appellant
contest the examiner’s factual findings regarding the well known
use of flowable fillings in doughnuts. Rather, appellant
maintains that “[o]ne of ordinary skill in the art would not have
been motivated to replace a sausage filling as disclosed by James
with a flowable food material to make the present invention”
(brief, page 14). We disagree with appellant principally because
the disclosure of James is not confined to a sausage filled food
product. As correctly and completely explained by the examiner
at pages 4-6, 7 and 8 of the answer, James (page 1, lines 68-72)
discloses the use of “a variety of forms” of filler and teaches
the formation of, inter alia, sweet products, such as a filled
doughnut (page 1, lines 58-68). We agree with the examiner that
one of ordinary skill in the art at the time of the invention
would have been led to employ conventional flowable fillings,
such as a fruit or jelly filling, that are compatible with a
sweet product, such as the doughnut option of James. In this
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regard, we note that appellant has not even specifically
addressed the examiner’s obviousness position as clearly laid out
on this record, much less convinced us of any error therein. It
follows that we will affirm the examiner’s § 103(a) rejection
over James.
CONCLUSION
The decision of the examiner to reject claims 1-11 and 33-37
under 35 U.S.C. § 103(a) as being unpatentable over Heim is
reversed. The decision of the examiner to reject claims 1-11 and
33-37 under 35 U.S.C. § 103(a) as being unpatentable over James
is affirmed.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Terry J. Owens )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Peter F. Kratz ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
PFK/cam
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