Ex Parte Keller et alDownload PDFPatent Trial and Appeal BoardSep 8, 201512273355 (P.T.A.B. Sep. 8, 2015) Copy Citation 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. 12/273,355 11/18/2008 Lewis Conrad Keller CFLAY.00382 8142 110933 7590 09/08/2015 Carstens & Cahoon, LLP PO Box 802334 Dallas, TX 75380 EXAMINER LEFF, STEVEN N ART UNIT PAPER NUMBER 1792 MAIL DATE DELIVERY MODE 09/08/2015 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 LEWIS CONRAD KELLER and DONALD JOE TATSCH ____________ Appeal 2013-009614 Application 12/273,3551 Technology Center 1700 ____________ Before JEFFREY T. SMITH, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal under 35 U.S.C. § 134 from a final rejection of claims 1 and 3–12. We have jurisdiction under 35 U.S.C. § 6. We AFFIRM. Appellants’ invention is directed to a method for yielding a plurality of extrudate strands of uniform velocity from a plurality of die orifices using an extruder system. App. Br. 3. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1 According to the Appellants, the real party in interest is Frito-Lay North America, Inc. App. Br. 2. Appeal 2013-009614 Application 12/273,355 2 1. A method for yielding a plurality of extrudate strands of uniform velocity from a plurality of die orifices using an extruder system, said system comprising an extruder and a die, said die comprising individual channels with adjustable metering assemblies, said method comprising the steps of: a) feeding product through said extruder die to produce strands of extrudate; b) measuring the exit velocity of each said strand; c) adjusting the exit velocity of each said strand by adjusting at least one metering assembly associated with a channel, and wherein said adjustable metering assemblies are completely surrounded by said die; d) repeating steps b) and c) iteratively to produce a plurality of extrudate strands, wherein each of said plurality of extrudate strands comprise substantially the same uniform velocity, wherein said repeating of step d) is performed until a uniform velocity comprising a variance of less than about 10% of the mean velocity is achieved; wherein the die is a co-extrusion die having at least one inner orifice and at least one outer orifice. Appellants (App. Br. 4) request review of the following rejections from the Examiner’s Final Action: I. Claims 1 and 3–12 rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. II. Claims 1 and 3–12 rejected under 35 U.S.C. § 112, first paragraph, as failing to provide an enabling disclosure for measuring the exit velocity of each strand. III. Claims 1 and 3–12 rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Appeal 2013-009614 Application 12/273,355 3 IV. Claims 1, 3, 4, 7, 8, and 10–12 rejected under 35 U.S.C. § 103(a) as unpatentable over Sicka (US 4,657,718, issued April 14, 1987) and Noller (US 2002/0086077 A1, published July 4, 2002). V. Claims 5 and 6 rejected under 35 U.S.C. § 103(a) as unpatentable over Sicka, Noller and Bortone (US 2004/0070103 A1, published April 15, 2004). VI. Claim 9 rejected under 35 U.S.C. § 103(a) as unpatentable over Sicka, Noller, and Moore (US 2005/0048180 A1, published March 3, 2005). OPINION Rejection under 35 U.S.C. § 112, first paragraph (written description) (Rejection I) We REVERSE. The Examiner found the Specification provides no descriptive support for the subject matter of claim 1 “feeding product through said extruder die to produce strands of extrudate[ and] measuring the exit velocity of each said strand” where the die is a coextrusion die having at least one inner and at least one outer orifice. Final Act. 2. According to the Examiner, the Specification is silent to coextruding a product through a coextrusion die having at least one inner and at least one outer orifice and independently measuring the exit velocity of each strand of the coextruded product. Id. We agree with Appellants that the Specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, Appellants were in possession of the invention as now claimed. App. Br. 5– 6. Moreover, Appellants define a strand of extrudate as any product which has been forced through and shaped by an orifice resulting in a tubular or thread-like shape. Spec. ¶ 18. The Specification further states a strand of extrudate can be a co-extruded product with an inner product and outer Appeal 2013-009614 Application 12/273,355 4 product. Id. ¶ 38. Thus, the Specification informs the person skilled in the art that it is the velocity of the strand of extrudate (extruded or co-extruded product) exiting the extrusion die that is being measured and not of the individual components of the strand of extrudate. Thus, the Examiner has not adequately explained why the Specification would not reasonably convey to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date. Accordingly we reverse the Examiner’s rejection under 35 U.S.C. § 112, first paragraph. Rejection under 35 U.S.C. § 112, first paragraph (enablement) (Rejection II) We REVERSE. The Examiner asserts that, while being enabling for measuring the exit velocity of each strand, the Specification does not reasonably provide enablement for measuring the exit velocity of each strand of a coextruded product since the coextruded product is a single unit. Final Act. 2. We agree with Appellants that the Specification, as originally filed, would have enabled the skilled artisan to make or use the claimed invention without undue experimentation, particularly given the disclosure previously discussed defining a strand of extruded as a co-extruded product. App. Br. 6–7; Spec. Figure 2, ¶¶ 18, 38. The Examiner has not provided an adequate analysis to support the contention that undue experimentation is required to practice the claimed invention. Accordingly, we reverse the rejection under 35 U.S.C. § 112, first paragraph for the reasons presented by Appellants and given above. Appeal 2013-009614 Application 12/273,355 5 Therefore, on this record, the Examiner has failed to establish the Specification, as originally filed, does not enable one skilled in the art to make or use the subject matter described in independent claim 1 as well as of the subject matter of claims 3–12. Accordingly we reverse the Examiner’s rejection of claims 1 and 3–12 under 35 U.S.C. § 112, first paragraph for lack of enablement for the reasons presented by the Appellants and given above. Rejection Under 35 U.S.C. § 112, 2nd Paragraph (Rejection III) We have reviewed the respective positions of the Examiner and Appellants regarding the issues raised with respect to claims 1 and 12 under 35 U.S.C. § 112, 2nd paragraph. Final Act. 3–4; Ans. 12; App. Br. 7–8. We reverse the rejection for the reasons presented by Appellants and those reasons discussed above with respect to the rejections under 35 U.S.C. § 112, 1st paragraph where the extrudate is the strand leaving the die after extrusion. App. Br. 7–8; Spec ¶¶ 18, 38 and 39. Prior Art Rejections Rejection IV After review of the respective positions provided by Appellants and the Examiner, we AFFIRM the Examiner’s prior art rejection of claims 1, 3, 4, 7, 8, and 10–12 under 35 U.S.C. § 103(a) as unpatentable over Sicka and Noller (Rejection IV) for the reasons presented by the Examiner. We add the following for emphasis. Independent claim 1 is directed to a method for yielding a plurality of extrudate strands of uniform velocity from a plurality of die orifices using an Appeal 2013-009614 Application 12/273,355 6 extruder system having an extruder and a die wherein the die comprises individual channels having adjustable metering assemblies enclosed by the die. See Spec. Figure 2, ¶¶ 20–24. The adjustable metering assemblies for each channel are adjusted through an iterative process to ensure that each strand of extrudate emanates from each orifice of the die at the same substantially uniform velocity. Id. ¶¶ 24, 26–31. The Specification also discloses the use of a computational algorithm to reduce the time required to find an optimum orifice adjustment by improving the efficiency of the iterative process. Id. ¶ 40. Further, the Specification not only contemplates the versatility of the die to accommodate different dough formulations, but also discloses dedicating a die to just one formulation. Id. ¶ 39. That is, the Specification contemplates the adjustment of the metering assemblies as designing or redesigning dies to be dedicated to a single dough formulation. We refer to the Examiner’s Final Action for a complete statement of the rejection. Final Act. 4–6. With respect to claims 1 and 7, Appellants argue Sicka does not disclose adjustable metering assemblies and adjusting the adjustable metering device as claimed. App. Br. 11. Instead, Appellants argue Sicka discloses that uniform velocities are obtained by precise designing of the die. Id.; Sicka col. 12, ll. 6–15. Appellants also argue Sicka fails to disclose an iterative process whereby the velocity is measured, adjusted, and repeated until a uniform velocity is achieved. App. Br. 12. We are unpersuaded by these arguments. As noted by the Examiner, Sicka recognizes the impact of contours, depths, land lengths, channels and paths in the design of dies that affect the flow of different compositions to be extruded at a desired matched uniform axial velocity and mass flow rate in Appeal 2013-009614 Application 12/273,355 7 the extrudate. Ans. 12–13; Sicka col. 9, ll. 37–49, col. 11, ll. 57–61, col. 12, ll. 6–15. The Examiner also found Sicka applies known design equations to achieve the uniformly coextruded extrudate relative the extrudate material properties (iterative process). Ans. 13–14; Sicka col. 12, ll. 6–14. Thus, given Appellants’ disclosure noted above, the claimed invention and Sicka are both directed to the design or redesign of extrusion dies to achieve uniform exit velocities for an extrudate of a specific composition exiting the die. Appellants have not adequately explained why the claimed invention is patentably distinct from the teachings of Sicka. With respect to the arguments for claims 3 and 4 (App. Br. 13–14), we agree with the Examiner that the subject matter of these claims would have been obvious to one skilled in the art in view of Sicka’s disclosure of achieving substantially similar velocities for each of the outlet streams. Ans. 13; Sicka col. 5, ll. 30–31, col. 11, ll. 54–61. Moreover, Noller also discloses controlling the extruder in such a way that the exit velocities of the individual compounds from the outlet openings of the die fluctuate minimally relative to one another. Noller ¶ 30. Appellants’ arguments that Sicka does not disclose food products, as required in dependent claims 8 and 10–12, are also unavailing for the reasons presented by the Examiner. App. Br. 14–16; Ans. 14. Moreover, the claimed invention, Sicka and Noller are all concerned with end product extrudates exiting a die at a substantially uniform velocity. Sicka col. 5, ll. 30–31, col. 11, ll. 54–61; Noller ¶ 30. As both Sicka and Noller are concerned with having extrudates with a substantially uniform velocity, the ordinarily skilled artisans would have availed themselves of such knowledge in order to achieve the desired uniform velocity. Appeal 2013-009614 Application 12/273,355 8 Accordingly, we affirm the Examiner’s prior art rejection of claims 1, 3, 4, 7, 8, and 10–12 for the reasons presented by the Examiner and given above. Rejections V and VI Claims 5 and 6 require the strands of extrudate to exit the die at velocities greater than about 30 feet per minute and the material to be extruded to have a residence time of less than about 2 seconds in the channels, respectively. The Examiner relied on Bortone to meet subject matter of these claims (Rejection V). Final Act. 7–9; Bortone ¶¶ 4, 8, 40. Claim 9 requires extruding a direct expanded product through the inner orifice as the first food product. The Examiner relied on Moore to meet subject matter of this claim (Rejection VI). Final Act. 9; Moore ¶¶ 22, 95. With respect to claims 5 and 6, Appellants argue Bortone and Sicka are directed to different products (dough v. tires, respectively) and, thus, the end product velocity and residence time for Bortone’s product would not lead one skilled in the art to determine end product velocity and residence times for Sicka’s product absent impermissible hindsight. App. Br. 18–19. With respect to claim 9, Appellants argue Moore does nothing more than show that direct expanded products can be molded and sent through extruders and does not suggest that the direct expanded product of Moore can be successfully utilized in the system of Sicka/Noller. Id. at 17. We have considered Appellants’ arguments for these claims and are unpersuaded for the reasons presented by the Examiner. Ans. 16–18. Moreover, one skilled in the art would be capable of determining the Appeal 2013-009614 Application 12/273,355 9 particular speed and residence time to achieve a desired product based on the characteristics of the composition to be extruded. One skilled in the art would also be capable of adapting an extruding system to make products of different compositions. See In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (skill is presumed on the part of one of ordinary skill in the art); In re Bozek, 416 F.2d 1385, 1390 (CCPA 1969). Accordingly, we affirm the Examiner’s prior art rejections of claims 5 and 6 (Rejection V) and of claim 9 (Rejection VI) for the reasons presented by the Examiner and given above. ORDER The Examiner’s rejections of claims 1 and 3–12 under 35 U.S.C. § 112, first paragraph (written description and enablement) (Rejections I and II) are reversed. The Examiner’s rejection of claims 1 and 3–12 under 35 U.S.C. § 112, second paragraph (Rejection III) is reversed. The Examiner’s prior art rejections of claims 1 and 3–12 under 35 U.S.C. § 103(a) (Rejections IV–VI) are affirmed. TIME PERIOD No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). AFFIRMED bar Copy with citationCopy as parenthetical citation