Ex Parte Kwitek

Board of Patent Appeals and Interferences

Jul 22, 2011

11249466 (B.P.A.I. Jul. 22, 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.
11/249,466 10/14/2005 Benjamin J. Kwitek KWI-010 2892
21884 7590 07/22/2011
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
WATTS, JENNA A
ART UNIT PAPER NUMBER
1781
MAIL DATE DELIVERY MODE
07/22/2011 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 BENJAMIN J. KWITEK
__________

Appeal 2010-010392
Application 11/249,466
Technology Center 1700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
STEPHEN WALSH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 11/249,466

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STATEMENT OF THE CASE
The following claims are representative and read as follows:
1. A method for manufacturing a portable cinnamon roll, comprising the
following steps:
forming raw dough in a predetermined shape having a central pocket,
wherein the central pocket is isolated from the exterior surface of the
portable cinnamon roll;
placing cinnamon, frosting and sugar within the central pocket;
cooking the raw dough with cinnamon, frosting and sugar until it is
fully prepared for consumption.

2. The method according to claim 1, wherein the raw dough is formed in the
shape of a sphere and has a diameter of approximately 0.5 inches to
approximately 2.5 inches.

7. The method according to claim 1, further including the step of placing the
portable cinnamon rolls within a bag.

8. The method according to claim 7, wherein the bag is a microwave safe
bag.

Cited References
The Examiner relies on the following prior art references:
Brown et al. US 2003/0165605 A1 Sep. 4, 2003
Hansen et al. US 6,589,583 B1 Jul. 8, 2003
Burger [„021] US 5,654,021 Aug. 5, 1997
Burger [„395] US 5,514,395 May 7, 1996
Mast US 6,054,698 Apr. 25, 2000

Grounds of Rejection
1. Claims 1, 5, and 6 are rejected under 35 U.S.C. § 103(a) for
obviousness over Brown in view of Hansen and Burger „395.
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2. Claims 2 and 3 are rejected under 35 U.S.C. § 103(a) for obviousness
over Brown in view of Hansen, Burger „395 and Burger „021.
3. Claims 7 and 8 are rejected under 35 U.S.C. § 103(a) for obviousness
over Brown in view of Hansen and Burger „395 and Mast.

FINDINGS OF FACT
The findings of fact are set forth in the Answer at pages 4-13.

Discussion
ISSUE
The Examiner concludes that
it would have been obvious to one of ordinary skill in the art at the
time that the invention was made, …[ to make] a cinnamon roll as
taught by Brown and Hansen… comprising forming the cinnamon roll
with a central pocket, wherein the topping was injected inside the
central pocket that is isolated from the exterior surface of the portable
cinnamon roll, because Burger '395 teaches a method for making a
conveniently packaged and prepared dough-based breakfast food
product that allows consumers to eat a commonly consumed dough-
based breakfast food along with its commonly consumed topping
without the usual required preparation. One of ordinary skill in the art
would have been motivated to manufacture portable cinnamon rolls
having the claimed fillings in order to further create a favorite
convenience food that would be appealing to the consumer while
preventing any tedious preparation that would normally be required in
order to consume such a product.

(Ans. 7-8.)

Appellant argues that Brown “does not disclose the creation of a
central pocket isolated from the exterior surface and placing cinnamon,
frosting and sugar within the central pocket” (App. Br. 8). Appellant further
Appeal 2010-010392
Application 11/249,466

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argues that Brown “fails to disclose the specific ingredients” claimed. (Id. at
10.)
The issue is: Does the cited prior art support the Examiner‟s rejection
of the claims for obviousness?

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) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
While the analysis under 35 U.S.C. § 103 allows flexibility in
determining whether a claimed invention would have been obvious, KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), it still requires showing
that “there was an apparent reason to combine the known elements in the
fashion claimed by the patent at issue.” Id. 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.” Id. The
obviousness analysis “should be made explicit,” and it “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
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does.” Id. “We must still be careful not to allow hindsight reconstruction of
references to reach the claimed invention without any explanation as to how
or why the references would be combined to produce the claimed
invention.” Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1374 n.3
(Fed. Cir. 2008). Moreover, obviousness requires a suggestion of all
limitations in a claim. In re Royka, 490 F.2d 981, 985 (CCPA 1974).

ANALYSIS
Rejection 1
Appellant argues that Brown “does not disclose the creation of a
central pocket isolated from the exterior surface and placing cinnamon,
frosting and sugar within the central pocket” (App. Br. 8). Appellant further
argues that Brown “fails to disclose the specific ingredients” claimed. (Id. at
10.)
We are persuaded by Appellant‟s argument. We do not find that the
Examiner has provided sufficient evidence, or explained the relevance that
cream cheese in the center of a bagel as disclosed in Burger „395, has to
making a portable cinnamon roll. The Examiner has not explained why one
of ordinary skill in the art would be motivated to remove the toppings of
cinnamon, powdered sugar or frosting from the outer top portion of dough of
a cinnamon roll as disclosed in Brown and place them in the center pocket to
making a portable cinnamon roll.
Rejections 2 and 3 fail for the same reasons as Rejection 1.

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Application 11/249,466

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CONCLUSION OF LAW
The cited references do not support the Examiner‟s obviousness
rejection.

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).

AFFIRMED
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