Ex Parte Jury

Board of Patent Appeals and Interferences

Jan 13, 2002

08752917 (B.P.A.I. Jan. 13, 2002)

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The opinion in support of the decision being entered
today was not written for publication and is not binding
precedent of the Board.
Paper No. 33

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte MARK JURY
______________

Appeal No. 1999-2509
Application 08/752,917
_______________

HEARD: February 7, 2002
_______________

Before WARREN, KRATZ and POTEATE, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally
rejecting claims 14 through 25, 38, 39, 41 and 42. Appellant has withdrawn the appeal with
respect to claims 26 through 37, 40, 43 and 44, all of the remaining claims of record, and thus the
appeal as to these claims is dismissed. Claim 14 is illustrative of the claims on appeal:
14. The product of a process comprising feeding a particulate chocolate and feeding a
particulate confectionery composition comprising a syrup into an extruder to obtain a mixture in
the extruder and applying pressure to the mixture to pass the mixture through the extruder and to
and through an extruder die to obtain an extrudate from the die, wherein the mixture passed
through the extruder and the extrudate from the die are at a temperature so that the mixture and
extrudate are in a non-pourable state, so that the chocolate and the confectionery composition of
the mixture plastically deform so that the confectionery composition forms veins interspersed
within the chocolate and then obtaining extrudate from the die for obtaining the product.
Appeal No. 1999-2509
Application 08/752,917
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The appealed claims, as represented by independent claim 14, are drawn in product-by-
process format to a chocolate candy product having veins of a confectionery composition
comprising a syrup interspersed within the chocolate, that has been prepared by a process
comprising mixing particulate chocolate and particulate confectionery composition in an extruder
and passing the mixture through the die of the extruder, while maintaining the mixture in a non-
pourable state by controlling the temperature. The confectionery composition comprising a syrup
can be a toffee (e.g., claim 17) or a caramel (e.g., claim 18). In independent claim 41, a candy
product prepared from a particulate chocolate substitute comprising a cocoa butter replacement
or a particulate chocolate analogue comprising a cocoa butter replacement and a particulate
confectionery composition comprising a syrup is prepared by the same process. According to
appellant, the claimed candy product “is an intimate mixture of chocolate together with a chewy
sweet component . . . which is not homogeneous” as the “chocolate matrix . . . [has] veins or
strands of chewy sweet dispersed therein and has a unique texture which combines the smooth
mouthfeel and bite of the chocolate with the flavor and chewy texture of the chewy sweet”
(specification, page 2).
The references relied on by the examiner are:
Wedin 2,334,052 Nov. 9, 1943
Pelletier 2,874,649 Feb. 24, 1959
Cloud et al. (Cloud) 4,357,359 Nov. 2, 1982
Butcher et al. (Butcher) 4,873,104 Oct. 10, 1989
Mackey 5,439,695 Aug. 8, 1995
Kehoe et al. (Kehoe) 5,626,892 May 6, 1997
(filed Nov. 24, 1993)
The examiner has advanced the following grounds of rejection on appeal:
claims 14 through 25, 38, 39, 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Pelletier in view of Cloud and, if necessary, appellant’s admission at page 4 of
the specification;1 and
claims 14 through 25, 38, 39, 41 and 42 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mackey in view of either Kehoe, Wedin or Butcher, each, if necessary, in view
of appellant’s admission at page 4 of the specification.2

1 The examiner states at page 4 of the answer, that “[r]egarding the recitation of cocoa butter
substitutes, this component is conventionally known and in any event is admitted by the appellant
to be commercially available on page 4 of the specification.”
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Appellant states in the brief (page 3) that the appealed independent claims are separately
patentable and that “all dependent claims stand or fall with the independent claim.” However,
we fail to find in the brief or reply brief in their entirety, separate arguments for claims 14 and 41.
Thus, we decide this appeal based on appealed claim 14. 37 CFR § 1.192(c)(7) (1997).
We reverse the ground of rejection based on Pelletier. We affirm the ground of rejection
based on Mackey because we agree with the examiner's conclusion that the claimed subject
matter would have been obvious over this reference, but denominate our affirmance as a new
ground of rejection under 37 CFR § 1.196(b) (1997), since our reliance on Mackey materially
differs from that of the examiner as set forth below and our position is not directly addressed by
any of appellant’s arguments in the brief or reply brief. See In re Eynde, 480 F.2d 1364, 1370-
71, 178 USPQ 470, 474-75 (CCPA 1973).
Rather than reiterate the respective positions advanced by the examiner and appellant, we
refer to the examiner’s answer and to appellant’s brief and reply brief for a complete exposition
thereof.
Opinion
In order to consider the examiner’s application of prior art to appealed claim 14, we must
first interpret the claim in light of the written description in appellant’s specification as it would
be interpreted by one of ordinary skill in this art, see In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (“[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage as they would be
understood by one of ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description contained in the
applicant’s specification.”), without reading into these claims any limitation or particular
embodiment which is disclosed in the specification. See In re Zletz, 893 F.2d 319, 321-22,
13 USPQ2d 1320, 1322 (Fed. Cir. 1989); In re Priest, 582 F.2d 33, 37, 199 USPQ 11, 15 (CCPA
1978). Thus, the terms in the appealed claim must be given their ordinary meaning unless
another meaning is intended by appellant as established in the written description of the

2 The examiner makes the same statement as set forth above in note 1, at page 6 of the answer.
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specification. See, e.g., Morris, supra; Zletz, supra (“During patent examination the pending
claims must be interpreted as broadly as their terms reasonably allow. When the applicant states
the meaning that the claim terms are intended to have, the claims are examined with that
meaning, in order to achieve a complete exploration of the applicant’s invention and its relation
to the prior art. See In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969)
(before the application is granted, there is no reason to read into the claim the limitations of the
specification.).”).
It is apparent from the plain language of appealed claim 14 that the chocolate candy
product is defined in product-by-process format, see generally, In re Thorpe, 777 F.2d 695, 697,
227 USPQ 964, 966 (Fed. Cir. 1985), according to which the confectionery composition
comprising a syrup forms a plurality of “veins” that are “interspersed” in the chocolate during the
coextrusion3 of a mixture of particles of chocolate and particles of said confectionary
composition formed in the extruder through the die thereof, wherein the mixture is maintained in
a non-pourable state by controlling the temperature so that the components of the mixture
plastically deform. The term “veins” is, of course, plural, and since this term is not defined in
appellant’s specification, it has the common, dictionary meaning of the word “vein” in which, in
context, one substance is contained within another substance, such as “4. Geol. A regularly
shaped and lengthy occurrence of an ore: lode. 5. A long, wavy strip of color, as in wood or
marble.”4 Thus, in context, the plural veins of the confectionary composition are “interspersed”
in the chocolate, as the term “interspersed,” also undefined in the specification, has the common,
dictionary meaning of “1. To distribute among other things at intervals. 2. To supply or diversify
with things distributed at intervals;”5 or of “1. To scatter among other things. 2. To diversify or

3 We use the term “coextrusion” in its common, technical dictionary meaning of “[e]xtrusion-
forming of plastic or metal products in which two or more compatible feed materials are used in
physical admixture through the same extrusion die.” McGraw-Hill Dictionary of Scientific and
Technical Terms, page 400 (Sybil P. Parker, ed., New York, McGraw-Hill, Inc. 1994).
4 The American Heritage Dictionary, Second College Edition, page 1340 (Boston, Houghton
Mifflin Company, 1982); Webster’s II New Riverside University Dictionary, page 1279 (Boston,
Houghton Mifflin Company. 1988).
5 The American Heritage Dictionary, Second College Edition, page 672.
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supply with things distributed at intervals.”6 Indeed, the specification also describes the “veins”
as “strands” and further states that the “surface finish . . . may have a marbled appearance”
(specification, e.g., page 5, lines 25-26, and page 7, lines 7-10). There is no limitation on the
number of veins or the dimensions thereof. Indeed, the scope of the claim can be seen from the
disclosure that “it is possible to produce a few large strands . . . within the chocolate matrix or
. . . it is possible to produce a very fine dispersion of veins or strands . . . within the chocolate
matrix to give the appearance of a homogeneous product” (page 5, lines 28-33). The
confectionery composition comprising a syrup can be, inter alia, toffee or caramel (specification,
e.g., page 1, lines 27-34, and page 3, lines 21-24; and claims 17 and 18).
Accordingly, it is the claimed chocolate candy product encompassed by claim 14 in
which at least two or more veins of the confectionery composition, that can be toffee and
caramel, are interspersed in chocolate are produced by the plastic deformation of the particulate
ingredients in admixture as they are coextruded in a non-pourable state through a single die, that
must be compared with the prior art.
We first compare the claimed chocolate candy product of claim 14, as we have
interpreted this claim, with the combined teachings of Pelletier and Cloud as applied by the
examiner. It is the examiner’s position that the “shamrock” of Pelletier Figs. 1 and 2 is made
from two separate “inner” molds that “are shaped stands/veins” made of toffee, thus differing
from the claimed candy product in the absence of chocolate, and in view of the teachings of
Cloud to surround toffee with chocolate, it would have been obvious to use “chocolate in the
outer mold of Pelletier to surround the toffee as taught by Cloud” (answer, page 4; see also pages
8 and 9-10). Indeed, Pelletier identifies the figure to which the examiner refers as a “club
design” made from either a “composite mold form comprising a body portion and a tail portion”
or from a “single piece mold” (col. 4, lines 60-64; see also col. 2, lines 30-34). Appellant
submits that the composite mold for the “club design” in Pelletier does not form two veins that
are interspersed in chocolate as required by appealed claim 14 and therefore, the combination of
Pelletier and Cloud would not result in the claimed chocolate candy product, citing, inter alia,

6 Webster’s II New Riverside University Dictionary, page 628.
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Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988) (brief, pages 16-19).
We must agree with appellant since as shown in Pelletier, the “club design” is a unitary
design in final form whether prepared by a composite mold or a single piece mold, and thus there
is no other candy between the “body portion” and the “tail portion” of the composite mold. In
view of the teachings of Cloud of coating toffee cores by immersion in chocolate, The combined
teachings of these references would have resulted in the coating of the unitary “club design” with
chocolate, which product would not fall within appealed claim 14. Uniroyal, supra. Thus,
contrary to the examiner’s position, the combined teachings of Pelletier and Cloud would not
have reasonably suggested to one of ordinary skill in this art that chocolate should coat the
separate parts of the composite molded “club design.” See In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981)(“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the primary reference; nor is
it that the claimed invention must be expressly suggested in any one or all of the references.
Rather, the test is what the combined teachings of the references would have suggested to those
of ordinary skill in the art.”).
Accordingly, we reverse this ground of rejection.
Turning now to the combined teachings of Mackey, Kehoe, Wedin and Butcher, the
issues in this ground of rejection involve the interpretation that one of ordinary skill would have
made of certain disclosure of Mackey.7 Mackey corresponds to European Patent Application 0
603 467 discussed at length in the specification (brief, page 6), from which disclosure it is
apparent that the reference does in fact disclose the process set forth in the limitations in
appealed claim 14. In this respect, Mackey discloses that “a non-pourable fat-containing
confectionery material, and in particular, a set chocolate, can be plasticized and extruded to
produce a non-pourable product” (col. 2, lines 57-62). Indeed, Mackey teaches (col. 2, line 63,

7 It is well settled that a reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
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to col. 3, line 42)
a process for plasticizing and extruding a fat-containing confectionery material which
comprises applying pressure to a fat-containing confectionary material, which is in a
substantially non-pourable state, to pass it through a zone of convergence to plasticize
it and extruding the material to obtain the material in a substantially non-pourable
state. By proceeding in accordance with the process of the present invention, an axially
homogeneous extruded product having a cross-section that is of substantially the same
profile as a die orifice of an extruder from which it is extruded is obtained.
. . . .
The fat-containing confectionery material is most advantageously a chocolate, be it
plain, milk or white chocolate, although caramel, toffee and butterscotch, for example,
may be employed. Advantageously the material is in a granulated form, and chocolate
buttons are especially preferred.
Surprisingly, it has been discovered that, particularly in the case of a set chocolate,
the process of the present invention is substantially isothermal. It has been found that
the temperature of the set non-pourable chocolate does not increase materially to effect
a change in character from the non-pourable state, and in practice, the temperature may
be found to remain substantially constant. . . . [T]he physical state of the chocolate is
such that its general deformation behavior during extrusion alters only to that of a
plastic nature rather than that of a viscous fluid, and since the product is “cold”
extruded, cooling means typically employed for chocolate product preparation, such as
cooling tunnels, are not necessary.
Mackey further teaches (col. 5, lines 27-44) that
[t]he extrusion die shapes provide for preparing solid or hollowed profiled products,
e.g., bars, rods, spirals, twists, springs, hollow sections such as tubes and more
complex shapes such as the letters of the alphabet, as well as thin films having a
thickness which may be as little as 100 microns. . . . .
Two or more fat-based materials may be co-extruded in accordance with the
process of the present invention, and the fat-containing confectionary material may be
co-extruded with other food materials, such as ice-creams, fondants, etc., such being
advantageous when the fat-containing confectionery material is extruded in a hollow
or tubular form. Hence, in such embodiments, a multi-orifice die and/or associated
equipment, as are known to those skilled in the art, may be employed.
In Mackey Example 8, a FLORIN extruder with a centered “torpedo” position in the barrel
produces “solid non-pourable hollow tubular sections,” and it is further disclosed that
[c]o-extrusion with fondant may be carried out by using a “torpedo” provided with a
longitudinal channel through which the fondant flows to give a chocolate coated
fondant. [Col. 8, lines 6-16.]
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We find that one of ordinary skill in this art would have given the terms “co-extrusion”8
and “fondant”9 their ordinary dictionary meanings in considering the plain teachings of
Mackey.10
In the brief, appellant acknowledges that “Mackey discloses processing a particulate
starting material, which may be a chocolate, or caramel, or toffee, . . . [and] further discloses that
two or more fat-based materials may be co-extruded and also that ‘the fat-containing material
may be coextruded ‘with other food materials’, such as ice creams fondants etc., such being
advantageous when fat-containing confectionery material is extruded in a hollow or tubular form’
by employing a multi-orifice die and/or associated equipment” (pages 7-8). In discussing the
ground of rejection based on Mackey, appellant states that “it is not believed that there is any
issue concerning whether or not Mackey co-extrusion would render the claimed products
obvious,” and “should the understanding that the Mackey co-extrusion disclosure is not in issue
be incorrect, it is requested that the Examiner so advise” (id., page 20). After discussing the
separate combinations of Mackey and each of Kehoe, Wedin and Butcher, appellant’s “Bottom
Line” is that the position that “the Examiner has advanced in the context of the Mackey-based
rejections is that someone . . . could have obtained a product with veins in it” which “is not what
is claimed” (id., page 22).
The examiner finds that “Mackey discloses coextruding two or more fat-based materials
. . . [and] the use of toffee, caramel, and chocolate ‘buttons’ are disclosed,” and based on this
disclosure, concludes that “[i]t would therefore have been obvious to co-extrude the chocolate
and toffee or caramel chips or buttons of Mackey in the method of Mackey to produce a
confection having a single vein of toffee or caramel coated (i.e., within) chocolate as desired,”
noting that “Mackey teaches appellant’s extrusion process, with the exceptions . . . of the
presence of more than one vein within the chocolate” (answer, page 5; emphasis supplied). The
examiner then sets forth the view that in following the teachings of Mackey, the feeding of

8 See above note 3.
9 A “fondant” is “1. A sweet, creamy sugar paste used in candies and icings.” Webster’s II New
Riverside University Dictionary, page 520.
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particulate chocolate and particulate confectionery composition comprising a syrup into an
extruder to form and extrude a mixture in a non-pourable state through a die “forms a single vein
within the chocolate” (id., pages 5-6; emphasis supplied). After discussing the teachings of veins
or strands formed in confectionery compositions in Kehoe (“injecting a plurality of different
liquid flavor/dye compositions into a substantially homogeneous gum base or into a laminated or
coextruded composition;” abstract), Wedin (coloring or flavoring materials from “smaller
extrusion tube 13” are “injected into the ice cream moving through the large extrusion tube 11 as
a plurality of ribbons;” page 2, left col., lines 49-62) and Butcher (variegated extruder product
“made by feeding a first viscous product through a tube, rotationally introducing a second,
different viscous product into the first one while preventing homogeneous mixing;” abstract), the
examiner concludes that “[i]t would have been obvious to introduce the caramel or toffee buttons
of Mackey downstream of the introduction of the chocolate buttons but upstream of the die to
form multiple veins within the matrix material as taught by each of Kehoe, Wedin or Butcher”
(answer, page 6; emphasis supplied). In response to appellant’s arguments with respect to the
combinations of Mackey with each of the secondary references in the brief, the examiner states
as to each that the claims differ from Mackey in the recitation of more than one vein, each of the
secondary references disclose multiple, interspersed veins and thus it “would have been obvious
to produce a desired design” (id., pages 10 and 11). The examiner continues the “one vein”
theory of the coextrusion process of Mackey in discussing appellant’s “Bottom Line” (id., pages
11-12).
It is apparent that the examiner implicitly responded to appellant’s statement that “it is
not believed that there is any issue concerning whether or not Mackey co-extrusion would render
the claimed products obvious” (see above p. 8, discussing brief, page 20), by maintaining the
“one vein” view of the process of Mackey where “two or more fat-based materials may be co-
extruded” (see above p. 7, setting forth col. 5, line 36, in context). In response, appellant states
in the reply brief (page 4) that

10 In considering the disclosure of a reference, the definition of a term or the meaning of a phrase
must be construed within the context of the reference as interpreted by one of ordinary skill in
this art. See generally, In re Salem, 553 F.2d 676, 682-83, 193 USPQ 513, 518-19 (CCPA 1977).
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it is also reasonable to conclude that obtaining a product having a single vein, as
asserted by the Examiner, from a mixture would be quite a feat. That is, how a
“mixture’ is processed in an extruder can provide in the extruder, and/or after
extrusion through a die, a “single vein” is simply beyond the comprehension of
undersigned counsel and is, it is submitted, quite at odds with what , based upon basic
extrusion art, the person of ordinary skill would expect or predict.
Appellant then requests “that the Examiner provide a Supplemental Answer which explains why
the newly advanced rationale finds basis in fact from the Mackey disclosure” (Id.).
We find it implicit in appellant’s statements in the reply brief that one of ordinary skill in
the extrusion arts would have reasonably expected that the coextrusion of two or more fat-based
particulate materials as clearly taught by Mackey (col. 5, lines 36-37; see also col. 2, lines
57-65), which would include chocolate, caramel and toffee (col. 3, lines 19-24), would inherently
result in more than one vein of one of the fat-based materials interspersed in another fat based
material. We agree with appellant’s position and thus apply Mackey alone to the appealed
claims. Because our application of Mackey is materially different from the examiner’s “one
vein” theory and it is apparent from appellant’s statements in the brief and reply brief that our
position has not been directly addressed by any of appellant’s arguments, we denominate our
affirmance of the examiner’s rejection of appealed claims 14 through 25, 38, 39, 41 and 42 based
on Mackey as a new ground of rejection based on our authority under 37 CFR § 1.192(b) (1997).
Accordingly, we find that based on the teachings of Mackey alone, one of ordinary skill
in this art would have reasonably selected a combination of chocolate, the preferred fat-based
material, and at least one other disclosed fat-based material, such as toffee or caramel, and would
have coextruded the combination of fat-based materials by forming a mixture in the extruder and
extruding the mixture through the single die thereof (see above note 3) in order to form a non-
pourable, chocolate candy product as taught by the reference, and thus would have arrived at the
claimed non-pourable chocolate candy product as encompassed by appealed claim 14, rendering
the same prima facie obvious under § 103(a). Therefore, the burden falls upon appellant to
establish by effective argument or objective evidence that the claimed invention patentably
distinguishes over Mackey, even though the rejection is based on § 103(a). See, e.g., In re Best,
562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977)( “Where, as here, the claimed
and prior art products are identical or substantially identical, or are produced by identical or
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substantially identical processes, the PTO can require an applicant to prove that the prior art
products do not necessarily or inherently possess the characteristics of his claimed product. See
In re Ludtke, [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. Whether the rejection is based on
“inherency” under 35 USC 102, on “prima facie obviousness” under 35 USC 103, jointly or
alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability
to manufacture products or to obtain and compare prior art products. [Footnote and citation
omitted.]”).
With respect to appealed claim 41, which requires a particulate chocolate substitute
comprising a cocoa butter replacement or a particulate chocolate analogue comprising a cocoa
butter replacement, we agree with the examiner’s finding that such “cocoa butter substituents
. . . [are] conventionally known . . . [as] admitted by appellant . . . on page 4 of the specification”
(answer, page 6), which finding was not challenged by appellant (see brief, pages 19 and 23;
reply brief in its entirety). See generally, In re Ahlert, 424 F.2d 1088, 1091-92, 165 USPQ 418,
420-21 (CCPA 1970). With respect to claim 23, Mackey discloses that “the fat-containing
confectionary material may be co-extruded with other food materials” and does not require that
“the fat-containing confectionery material [is] extruded in a hollow or tubular form” when such
materials are included, only that it is “advantageous” to do so (col. 5, lines 37-42). See In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976) (“The fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art,
including unpreferred embodiments, must be considered.’”).
Accordingly, in view of the prima facie case of obviousness thus made out with respect to
appealed claims 1 through 4 and 9 through 12, the burden of going forward has shifted to
appellant to submit argument and/or evidence in rebuttal. See generally, In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
We have again carefully evaluated all of the evidence of obviousness and nonobviousness
based on the record as a whole, giving due consideration to the weight of appellant’s arguments
of record, including the submission of samples based on the Hershey Symphony® chocolate
candy product,11 as they pertain to the new ground of rejection which we have entered above.

11 Letter filed July 23, 1998 (Paper No. 14).
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We noted above that appellant has not addressed the rejection as stated here in the brief or
reply brief. Pursuant to questions from the bench at oral hearing with respect to the manner in
which Mackey is applied here, counsel advanced the view that Mackey could not be so
interpreted, stating that the term “co-extruded” appearing at col. 5, line 36, meant that there were
separate extruders and separate dies for each of the fat-based materials, and further that the
additional materials were only added when the fat-based material, chocolate, was extruded in a
hollow tube, pointing to col. 5, lines 38-44, and Example 8, wherein fondant is co-extruded with
chocolate to provide a chocolate coated fondant. The difficulties with appellant’s oral arguments
are first, that it is contrary to the art recognized definition of the term “coextrusion” which
involves forming a mixture in a single extruder and extruding the mixture through a single die
(see above note 3), and second, Mackey teaches that the extrusion of chocolate in a hollow tube
and the use of multi-orifice dies is merely “advantageous,” not required, when such food
materials as the creamy sugar-pastes or fondants (see above note 9) are coextruded with the
chocolate as we discussed above, citing Lamberti.
With respect to the submission of the samples from the Hershey Symphony® chocolate
candy product, this evidence is mentioned in the brief (pages 13-14) but is not argued with
respect to Mackey. After the examiner again set forth the position in the answer that this
“product was . . . [not] considered relevant in view of the newly amended claims” (page 7),
appellant merely contends in the reply brief that the product “cannot be dismissed because it is
part of the prior art and provides evidence of the state of the art” (page 3; see also pages 6-7), and
again does not submit argument or objective evidence explaining the practical significance of the
comparison to the teachings of Mackey as applied above, or indeed to any of the references
applied by the examiner. It is well settled that the burden of establishing the practical
significance of data in the record with respect to unexpected results rests with appellant, which
burden is not carried by mere arguments of counsel. See generally, In re Geisler, 116 F.3d 1465,
1470, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997); In re Merck & Co., 800 F.2d 1091, 1099,
231 USPQ 375, 381 (Fed. Cir. 1986); In re Longi, 759 F.2d 887, 897, 225 USPQ 645, 651-52
(Fed. Cir. 1985); In re Lindner, 457 F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972) (“This
court has said . . . that mere lawyers’ arguments unsupported by factual evidence are insufficient
Appeal No. 1999-2509
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to establish unexpected results. [Citations omitted.]”); In re Klosak, 455 F.2d 1077, 1080,
173 USPQ 14, 16 (CCPA 1972); In re D’Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303, 306
(CCPA 1971).
Accordingly, having reconsidered the evidence of record in light of appellant’s arguments
of record as they pertain to the new ground of rejection which we have entered above, we remain
of the opinion that the claimed invention encompassed by appealed claims 14 through 25, 38, 39,
41 and 42 is prima facie obvious over the teachings of Mackey. Thus, the burden of going
forward with respect to this ground of rejection remains with appellant. See Piasecki, supra.
The examiner’s decision is affirmed.
This decision contains a new ground of rejection pursuant to 37 CFR § 1.196(b)(amended
effective Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that,
“A new ground of rejection shall not be considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN TWO MONTHS FROM
THE DATE OF THE DECISION, must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of proceedings (§ 1.197(c)) as to the rejected
claims:
(1) Submit an appropriate amendment of the claims so rejected or a showing of facts
relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in
which event the application will be remanded to the examiner. . . .
(2) Request that the application be reheard under § 1.197(b) by the Board of Patent
Appeals and Interferences upon the same record. . . .

Appeal No. 1999-2509
Application 08/752,917
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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
37 CFR § 1.196(b)

CHARLES F. WARREN )
Administrative Patent Judge )
) BOARD OF PATENT
) APPEALS AND
) INTERFERENCES
LINDA R. POTEATE )
Administrative Patent Judge )

KRATZ, Administrative Patent Judge, dissenting.
Appeal No. 1999-2509
Application 08/752,917
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I respectfully disagree with the majority’s reversal of the examiner’s § 103 rejection of
claims 14-25, 38, 39, 41 and 42 as being unpatentable over Pelletier in view of Cloud and, if
necessary, appellant’s admission at page 4 of the specification. While I concur with the
majority’s conclusion in affirming the examiner’s § 103 rejection of the appealed claims before
us based on Mackey, I would do so on a different basis. In this regard, I disagree with the
majority’s implicit reversal of the examiner’s § 103 rejection of claims 14-25, 38, 39, 41 and 42
as being unpatentable over Mackey taken with Kehoe, Wedin or Butcher with or without the
admitted prior art.12 Moreover, I disagree with the majority’s reasoning and reliance on
statements in appellant’s reply brief as implicit support for the majority’s view as to what
Mackey teaches in affirming the examiner’s § 103 rejection of claims 14-25, 38, 39, 41 and 42 as
being unpatentable over Mackey in view of either Kehoe, Wedin or Butcher, each, if necessary,
in view of appellant’s admission at page 4 of the specification, while denominating their
affirmance as a new ground of rejection under 37 CFR § 1.192(c)(7)(1997).
Upon careful consideration of the opposing arguments presented on appeal, I concur with
the examiner that the claimed subject matter would have been obvious to one of ordinary skill in
the art within the meaning of 35 U.S.C. § 103 in view of the applied prior art. More specifically,
I consider the reference evidence adduced by the examiner when considered together with the
examiner’s analysis to have set forth a reasonable basis for concluding that one with ordinary
skill in the art would have combined the applied prior art teachings in a manner so as to thereby
result in a product which corresponds to the here claimed product. The arguments set forth in the
briefs expose no reversible error on the examiner’s part in reaching this obviousness conclusion.
Accordingly, it is my judgment that both of the examiner’s § 103 rejections should be sustained.
While the appealed claims describe the product, at least partially, in terms of the method
by which it is made, it is the finished product, not the method of making the product, that is the
appropriate focus of inquiry since the patentability of such claims is determined based on the
product itself. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985) ("If the

12 In denominating their affirmance as a new ground of rejection under 37 CFR §
1.192(c)(7)(1997), the majority implicitly reverses the examiner’s § 103 rejection based on
Mackey together with the other cited secondary references and admitted prior art.
Appeal No. 1999-2509
Application 08/752,917
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product in a product-by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior art product was made by a different process.")
Where, as here, the examiner reasonably establishes that appellant’s product and that
suggested by the applied prior art appear to be substantially identical, the burden shifts to
appellant to provide evidence that the suggested product of the applied prior art does not possess
any relied upon characteristics that are necessarily a part of appellant’s claimed product. See
In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980); In re Best, 562 F.2d 1252,
1255, 195 USPQ 430, 433-434 (CCPA 1977); In re Fessmann, 489 F.2d 742, 745, 180 USPQ
324, 326 (CCPA 1974). The reason is that the Patent and Trademark Office is not able to
manufacture and compare products. See Best, supra; In re Brown, 459 F.2d 531, 535, 173 USPQ
685, 688 (CCPA 1972).
Here, it is my view that appellant primarily argues for the patentability of the appealed
claims based on alleged method differences rather than persuasively arguing in the briefs, let
alone establishing with objective evidence commensurate in scope with the claims, how the
products of the appealed claims are necessarily patentably distinguished over the products
suggested by the applied prior art relied upon in the separate rejections advanced by the
examiner. It is worth noting that the process by which the claimed product is made is set forth in
“comprising” language. See representative claim 14, on which I would decide this appeal. Thus,
the process by which the claimed product is made is open to other process steps. Indeed,
appellant explicitly describes many other process steps which may be employed, such as in the
paragraph bridging pages 5 and 6 of the specification. In examining that carryover paragraph, it
becomes clear that the claimed product is inclusive of products that are obtained from the
extrudate by further processing the extrudate after removal from the die of representative claim
14. For example, that extrudate, which may contain as few as two small veins or strands of syrup
containing confectionary material13, or only two relatively fat veins thereof stuffed therein14, can

13 The representative claim does not require that any more than a small fleck or two of particulate
syrup containing confection be used - enough to form two small streaks or veins thereof inserted
or interspersed in the chocolate.
14 While appellant seemingly urges otherwise, appellant has not established with objective
evidence that the term interspersed as used in the extrusion step in making appellant’s product
Appeal No. 1999-2509
Application 08/752,917
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be further manipulated such as by cutting, scraping, having other materials added thereto and/or
being homogenized and/or injection molded or otherwise treated alone or with other materials
that are added. Indeed, representative claim 14 is open to other materials being added in amounts
that would dwarf the chocolate or syrup containing confection in the extrudate. Given that claim
breadth, it can hardly be said that the ultimately obtained claimed product requires any particular
vein arrangement such that it necessarily would be patentably distinct from the products
suggested by the applied prior art based on the arguments appellant presents in the briefs. In this
regard, appellant argues for patentability of the claimed product as if that product is required to
have particular type veins (comet shape) and random or non-patterned arrangement thereof in the
chocolate (interspersed) that would differentiate over Pelletier taken with Cloud with or without
the admitted prior art or differentiate over Mackey with Kehoe, Wedin or Butcher with or
without the admitted prior art. However, those arguments, as well as the sample product
submitted in the record (Paper No. 14), are clearly not commensurate in scope with the claimed
subject matter for reasons as discussed above and as set forth by the examiner in the answer.
While I agree with the majority that the teachings of Mackey alone seem sufficient to
render the claimed subject matter prima facie obvious, I do not find implicit support in
appellant’s statements in the reply brief (i.e., an admission) for bolstering such a position as the
majority apparently suggests in their opinion. Moreover, I agree with the examiner that the
combined teachings of Mackey with the secondary references relied upon by the examiner would
have rendered the claimed product obvious within the meaning of 35 U.S.C. § 103. Concerning
this matter, whether or not the examiner’s reasoning is complete and fully correct with regard to
the so called “single vein” theory in describing the teachings of Mackey, it is clear that Mackey
alone or in combination with the secondary references relied upon by the examiner reasonably
suggests forming an extrudate from a mixture of chocolate and syrup based confectionary
material, such as caramel or toffee so as to obtain a striated appearance in a snack food item.

necessitates that the final product, as claimed, has any particular veined structure, let alone veins
which are inlayed in the chocolate in a non-touching manner so as to patentably differ from the
modified Pelletier molded chocolate advanced by the examiner as a basis for rejecting the
claimed subject matter.
Appeal No. 1999-2509
Application 08/752,917
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It is well settled that in evaluating a reference, all of the disclosure of the reference must
be considered for what it fairly teaches or would have suggested to one having ordinary skill in
the art. See In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966). Thus, it is proper
to take into account not only specific teachings of the reference, but also the inferences which
one skilled in the art would reasonably be expected to draw from the disclosure. See In re Preda,
401 F.2d 825, 826-27, 159 USPQ 342, 343-44 (CCPA 1968). Certainly, it would have been
prima facie obvious to one of ordinary skill in the art to use two of the fat containing
confectionary materials listed by Mackey together to obtain a food product with their combined
ingredients based on Mackey’s teaching that each may be used alone or co-extruded.
Accordingly, I would affirm both of the examiner’s § 103 rejections.

PETER F. KRATZ ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES

Alan A. Fanucci, Esq.
Winston & Strawn
Appeal No. 1999-2509
Application 08/752,917
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200 Park Avenue
New York, NY 10166