Ex Parte Lamp et al

Board of Patent Appeals and Interferences

Mar 30, 2011

11358764 (B.P.A.I. Mar. 30, 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.
11/358,764 02/21/2006 Mary A. Lamp 87470 9074
48940 7590 03/30/2011
FITCH EVEN TABIN & FLANNERY
120 SOUTH LASALLE STREET
SUITE 1600
CHICAGO, IL 60603-3406
EXAMINER
TRAN LIEN, THUY
ART UNIT PAPER NUMBER
1789
MAIL DATE DELIVERY MODE
03/30/2011 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 MARY A. LAMP, KEITH FORNECK, and
WILLIAM T. PAULOS
____________

Appeal 2010-012055
Application 11/358,764
Technology Center 1700
____________

Before DONALD E. ADAMS, ERIC GRIMES, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 13-23, the only
claims pending in this application (App. Br. 3). We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a fully or partially baked, deep dish pizza
crust (claims 13-17) and a kit (claims 18-23). Claim 13 is representative and
is reproduced in the “CLAIMS APPENDIX” of Appellants’ Brief (App. Br.
23).
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Claims 13-17 stand rejected under 35 U.S.C § 103(a) as unpatentable
over the combination of Plemons,1 Good Cook,2 Encyclopedia,3 Baking
Science,4 and Atwell.5
Claims 18-23 stand rejected under 35 U.S.C § 103(a) as unpatentable
over the combination of Cochran,6 Good Cook, Encyclopedia, and Atwell.
We affirm.
Claims 13-17:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
FINDINGS OF FACT
FF 1. We adopt the Examiner’s factual findings as our own (see Ans. 4-6
and 8-12).
PRINCIPLES OF LAW
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Stated differently,
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the

1 Plemons et al., US 3,979,525, September 7, 1976.
2 The Good Cook, Snacks & Sandwiches 66-67 (1980).
3 Encyclopedia of Chemical Technology, 880-882 (1992).
4 Baking Science & Technology, Third Edition, Volume 1, 485-486 (E.J.
Pyler, ed., Sosland Publishing Co., Kansas City, MO, 1988).
5 Atwell, US 5,792,499, August 11, 1998.
6 Cochran et al., US 6,083,550, July 4, 2000.
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technique is obvious unless its actual application is beyond his
or her skill.

Id. at 417. In this regard, it is proper to “take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” Id. at
418. See also id. at 421 (“A person of ordinary skill is also a person of
ordinary creativity, not an automaton.”). In sum, the “suggestion test is in
actuality quite flexible and not only permits, but requires, consideration of
common knowledge and common sense.” DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1367 (Fed. Cir. 2006).
In order to establish unexpected results for a claimed invention,
objective evidence of non-obviousness must be commensurate in scope with
the claims which the evidence is offered to support. In re Greenfield, 571
F.2d 1185, 1189 (CCPA 1978).
ANALYSIS
Appellants contend that “[e]ven if one is capable of combining
different additives, the Office Action utterly fails to establish that there
would be any sort of reason to do so or any expectation that combining the
specific claimed ingredients in the specific claimed amounts would yield a
product with any particular advantages” (App. Br. 10 (emphasis removed)).
In this regard, Appellants contend that “[t]he primary cited reference omits
several (seven, to be accurate) claimed ingredients . . . and fails to disclose
the claimed amounts of the ingredients that it does disclose” (App. Br. 12
(emphasis removed)). We are not persuaded.
Notwithstanding Appellants’ contention to the contrary the Examiner
provides the evidence and rationale for combining the prior art teachings.
For example, the Examiner found that the Encyclopedia “teaches to add
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sugar to modify flavor, egg to impart crispy crust, enzyme to enhance the
properties of the dough” (id.; see also Ans. 5). As the Examiner explains, it
would have been prima facie obvious to one skilled in the art at the time the
invention was made to add, inter alia, sweetener, dried egg white, and an
enzyme (e.g, alpha amylase) to Plemons’ dough for the reasons taught in the
prior art (id.). In this regard, the Examiner finds that the particular amounts
utilized in the claim are readily optimized by a person of ordinary skill in the
art because the process of making dough with a crust is well known in the art
(id.). Accordingly, we are not persuaded by Appellants’ contention that the
Examiner failed to provide a reason for combining the prior art (see e.g.,
App. Br. 11-13 and 18-21; Reply Br. 7). For the foregoing reasons we are
also not persuaded by Appellants’ contentions regarding the teachings of
each individual reference viewed in isolation (App. Br. 15-18; Reply Br. 1-
8).
The Examiner’s assertion notwithstanding, we agree with Appellants’
intimation that a comparison need only be made between the claimed
invention and the closest prior art, in this case Plemons (Cf. App. Br. 14-15;
Reply Br. 8-9 and Ans. 13). Nevertheless, we are not persuaded by
Appellants’ contention that the Forneck Declaration7 “demonstrate[s] that
the claimed pizza crusts have superior organoleptic properties to those of the
primary reference (Plemons et al) after refrigerated and frozen storage”
(App. Br. 13-14). As the Examiner points out:
Properties such as pliability, firmness, chewyness, [sic]
brittleness, dryness can be evaluated differently by different
individuals. What is firm to one might not be firm to another.
The declaration does not describe how the evaluation is [sic]

7 Executed February 24, 2009.
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conducted. There is no explanation of any statistical difference
between the score[s]. . . . There are no standard objective
measurements to show differences in the two products. Also,
none of the properties or parameters shown in the declaration is
found in the claims.

(Ans. 13.)
Further, given the secondary references’ teachings that the additional
ingredients in Appellants’ pizza crust improve dough properties, we are not
persuaded that the improvement over Plemons’ pizza crust would have been
unexpected. Cf. In re Soni, 54 F.3d 746, 751 (Fed. Cir. 1995) (“Mere
improvement in properties does not always suffice to show unexpected
results. . . . [W]hen an applicant demonstrates substantially improved results
. . . and states that the results were unexpected, this should suffice to
establish unexpected results in the absence of evidence to the contrary.”).
Accordingly, even assuming that the Declaration presents evidence of
improvement over Plemons, Appellants point to nothing in the Declaration
or Specification suggesting that an ordinary artisan would have considered
that improvement unexpected when viewed in light of the cited references’
teachings.

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 13 under 35 U.S.C § 103(a) as
unpatentable over the combination of Plemons, Good Cook, Encyclopedia,
Baking Science, and Atwell is affirmed. Because they are not separately
argued, claims 14-17 fall together with claim 13. 37 C.F.R. §
41.37(c)(1)(vii).
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Claims 18-23:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?
ANALYSIS
Appellants contend that the rejection of claim 18 cannot be sustained
“[f]or essentially the same reasons as discussed above relative to claim[ ]
13” (App. Br. 22; Reply Br. 9). Having found no error in the rejection of
claim 13 we are not persuaded by Appellants’ contention. In addition, we
are not persuaded by Appellants’ contentions regarding the isolated
teachings of the Cochran reference as opposed to the teachings of Cochran
in combination with the other references cited in the rejection of claim 18.

CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness. The rejection of claim 18 under 35 U.S.C § 103(a) as
unpatentable over the combination of Cochran, Good Cook, Encyclopedia,
and Atwell is affirmed. Since they are not separately argued claims 19-23
fall together with claim 18. 37 C.F.R. § 41.37(c)(1)(vii).

TIME PERIOD FOR RESPONSE
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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DEA

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