Ex Parte Lacy et al

Patent Trial and Appeal Board

Jun 28, 2016

12455615 (P.T.A.B. Jun. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/455,615 0610412009 Ian David Lacy
201 7590 06/30/2016
UNILEVER PATENT GROUP
800 SYLVAN A VENUE
AG West S. Wing
ENGLEWOOD CLIFFS, NJ 07632-3100
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.
F3481US 6642
EXAMINER
BEKKER, KELLY JO
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/30/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentgroupus@unilever.com
pair_unilever@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte IAN DAVID LACY and BLAKE MICHAEL PRIME
Appeal2015-000086
Application 12/455,615
Technology Center 1700
Before PETER F. KRATZ, CATHERINE Q. TIMM, and
WESLEY B. DERRICK, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 2, 5-8, 12, and 13. We have
jurisdiction pursuant to 35 U.S.C. § 6.
Appellants' claimed invention is directed to a frozen confection
product. Appellants disclose that commercially available ice makers, such
as the Scotsman AC 106 ice maker, can be employed to form clear
(transparent) ice (Spec. 4, 11. 6--9). Appellants disclose that their confection
products have a thickness that "is typical of conventional ice lolly stick
products" (Spec. 3, 11. 19-22).
Appellants disclose that they have found that by employing
transparent ice particles in certain amounts in a frozen confection, wherein
the ice particles have a certain size relative to the thickness of the frozen
Appeal2015-000086
Application 12/455,615
confection product, such as "particles in the range of from about 25 to 75%
of the thickness of the product", results in frozen confections that "have a
translucent appearance" and/or "increased translucency and improved
appearance" (Spec. 1, 11. 25-30; 4, 11. 1-19; 6, 11. 1-7).
Claim 1, the sole independent claim on appeal, is illustrative and
reproduced below:
Claim 1. A frozen confection product having a thickness of at least 10
mm and less than 40mm, and comprising from 25 to 70 wt% of transparent
ice particles having a mean size of from 2 to 30 mm, said frozen confection
being translucent and wherein the ice particles are degassed and
demineralised ice and wherein the ice particles have a total solids content of
less than 0.5 wt%.
In addition to Applicants' admission of conventional prior art, the
Examiner relies on the following prior art references as evidence in rejecting
the appealed claims:
Hotaling
Lometillo
Gupta
Holt
Carrick
us 5,493,866
us 2002/0164403 i\.l
US 6,858,240 B2
WO 93/21776
WO 97/04663
Feb.27, 1996
Nov. 7, 2002
Feb.22,2005
Nov. 11, 1993
Feb. 13, 1997
The Examiner maintains the following grounds of rejection:
Claims 1, 2, 5-8, 12, and 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Carrick in view of Lometillo, Holt, Gupta, and
Applicants' Admitted Prior Art (AAPA). Claims 1, 2, 5-8, 12, and 13 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over Carrick in
view of Lometillo, Holt, Gupta, and Hotaling.
We reverse.
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Application 12/455,615
It is well settled that the burden of establishing a prima facie case of
non-patentability resides with the Examiner. See In re Piasecki, 745 F.2d
1468, 1472 (Fed. Cir. 1984).
Here, the Examiner's reliance on a combination of Carrick, Lometillo,
Holt, Gupta, and Appellants' Admitted Prior Art or Hotaling to underpin the
stated obviousness rejections is not well-founded. In this regard, the
Examiner has determined that Carrick does not teach a "frozen confection
having a thickness of at least 1 Omm and less than 40mm as recited in claim
1 ", a "confection as translucent as recited in claim 1," and "ice particles as
having a total solids content of less than 0.5%, wherein the ice particles are
transparent, degassed and de-mineralized as recited in claim 1" (Ans. 2; see
Ans. 3--4).
According to the Examiner,
[I]t would have been obvious and well within the routine
determination of one of ordinary skill in the art for the
confection as taught by Carrick to be translucent and for the ice
particles to be transparent in order to form a desirable product
in which the consumers could generally see through[.]
(Ans. 4).
Moreover, the Examiner contends that "it would have been obvious to
one of ordinary skill in the art for the product to be un-aerated and to degas
the water when producing the ice particles so that the final product
possessed a clear/translucent appearance" in light of the applied teachings of
Lometillo and Holt (id.).
Furthermore and regarding the ice particles having a total solids
content of less than 0.5% and wherein the ice particles are de-mineralized,
the Examiner maintains that "it would have been obvious to one of ordinary
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Application 12/455,615
skill in the art for the ice particles to be demineralized and contain minimal
solids, in order to minimize the inclusion of impurities which can be
detrimental to shelf life as taught by Gupta" (id.).
(Id.).
In addition, the Examiner argues that:
[A ]s solids were known to form occlusions, it was
common sense that a water solution with less solids would form
a more clear solution, thus one of ordinary skill in the art at the
time the invention was made would have been motivated for the
ice particles to contain a decreased solids range, such as less
than 1 %, in order to form a more clear product, and thus a novel
product as suggested by Holt[.]
With regard to the second stated obviousness rejection, the Examiner
relies on substantially similar reasoning albeit with the added teachings of
Hotaling being relied upon for allegedly forming substantially transparent,
frozen ice products by removing certain impurities from water (Ans. 5-7).
Ho\~1ever and as essentially argued by 1A~ppellants, the Examiner has
failed to establish "what it is in the cited references which would lead one of
ordinary skill to prepare a translucent product that is of the recited thickness
with low solids" content in the transparent ice particles as required by claim
1 (App. Br. 7). As Appellants contend, the "general unsupported statements
concerning expectations of translucency" as urged by the Examiner have not
been demonstrated by the cited portions of the applied references (id.).
For instance, the Examiner has not identified why Carrick, which is
directed to water ice bodies containing ice crystals that are disclosed as
providing a soft eating sensation, and which water ice bodies can be
incorporated in a frozen confection would have been selected by one of
ordinary skill in the art for the several modifications proposed by the
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Application 12/455,615
Examiner based on the teachings of Lometillo and Holt, which references
appear to be directed to an ice confection having a translucent shell
(Lometillo) or region (Holt) that comprises a significant amount of solids
content in a mix (Lometillo i-f 17; Holt, p. 4, 11. 13-22).
In particular, the Examiner has not established that one of ordinary
skill in the art would have viewed Carrick as a candidate for the extensive
modifications proposed by the Examiner that would involve, inter alia,
reducing the solid content of the water ice solution of Carrick to a level
below that taught as being suitable (1-50 weight percent) by Carrick. In this
regard, Carrick is directed to forming individual water ice bodies that are
prepared by rapid freezing, such as by contacting water ice solution drops
with liquid nitrogen to form water ice bodies that contain certain ice crystals
sizes, which bodies are disclosed as being soft when eaten and include a
significant solids content (App. Br. 5-6; Carrick, p. 2, 1. 13 -p. 3, 1. 30). The
Examiner has not adequately articulated how the disparate teachings of the
other applied references would have led one of ordinary skill in the art to the
proposed modifications of the products of Carrick.
It is well settled that "rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness" being asserted. In re Kahn, 441 F .3d 977, 988
(Fed. Cir. 2006) (quoted with approval in KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007)). After all, rejections based on§ 103(a) must rest on a
factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. See In re Warner, 379
F.2d 1011, 1017 (CCPA 1967).
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Application 12/455,615
On this record, we reverse the Examiner's obviousness rejections of
the appealed claims.
REVERSED
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