Ex Parte Mahe et al

Board of Patent Appeals and Interferences

Jan 23, 2009

10229686 (B.P.A.I. Jan. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte YANNICK MAHE, ERNST LSLER-SIEBER,
and MARKUS FROEHILICH
____________

Appeal 2008-3839
Application 10/229,686
Technology Center 1700
____________

Decided: January 23, 2009
____________

Before EDWARD C. KIMLIN, TERRY J. OWENS, and
LINDA M. GAUDETTE, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-10. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2008-3839
Application 10/229,686

Claim 1, the sole independent claim, is illustrative of the invention
and is reproduced below:
1. A cooking aid composed of an envelope based on fat which is solid
at room temperature which encloses a fluid or pasty flavoring filling.

The Examiner relies on the following prior art reference to show
unpatentability:
Guillain US 6,399,129 B1 Jun. 4, 2002

Appellants request review of the following grounds of rejection:
1. claims 1-4 and 6-10 under 35 U.S.C. § 102(e) as anticipated by
Guillain; and
2. claim 5 under 35 U.S.C. § 103 as unpatentable over Guillain.
ISSUE
The issue presented for our review is: have Appellants shown that the
Examiner reversibly erred in finding that the claim phrase “fluid or pasty
flavoring filling” reads on Guillain’s flavoring core? We answer this
question in the negative for the reasons stated by the Examiner and further
explained below.
FINDINGS OF FACT (“FF”)
1. Guillain discloses a cooking aid comprising a flavoring core and a
coating. (Col. 1, ll. 29-31.)
2. According to Guillain, “[t]he flavoring core may be prepared by
mixing together about 30-50 parts of salt, about 10-20 parts of
glutamate, and about 10-20 parts of fat.” (Col. 1, ll. 46-48.)
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3. Appellants argue that Guillain’s flavoring core is a compacted solid
and does not fall within the claim limitation “fluid or pasty flavoring
filling.” (Reply Br. 5.) Appellants concede that the Specification fails
to include explicit definitions for the phrase “a fluid or pasty flavoring
filling” and the term “pasty.” (Reply Br. 3.) However, Appellants
maintain that one of ordinary skill in the art would understand from
the Specification that the term “pasty” excludes a solid core. (Reply
Br. 3.) Appellants rely, in particular, on a passage from the
Specification which states that “viscosity may correspond to a range
between liquid honey and a pasty spread. It is advantageous to use a
particularly fluid product. . . . However, the filling may be a
pumpable pasty product” (Spec. 7, ll. 16-22 (emphasis added)). (See
Reply Br. 3.)
4. The Examiner contends that regardless of how the term “pasty” is
interpreted, Guillain’s flavoring core meets the claim limitation “fluid
or pasty flavoring filling” because it contains the same components
(salt, fatty base, and food particles) as Appellants’ claimed filling and
would, therefore, inherently have the same consistency (Ans. 5, 6.)
5. Appellants argue that there is a physical and textural difference
between the claimed flavoring filling and Guillain’s flavoring core.
(Reply Br. 4.) According to Appellants, the invention utilizes “types
of ingredients that allow the filling [sic] be in a fluid or pasty form”
(Reply Br. 5) while Guillain uses a mixture of fats that is solid at
room temperature (Reply Br. 5 (citing Guillain, col. 2, ll. 44-46)) and
“is primarily directed toward a flavoring core that is a compacted
solid” (Reply Br. 5.)
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Application 10/229,686

6. The aforementioned section of Guillain (i.e., col. 2, ll. 44-46) relied
upon by Appellants pertains to the composition of Guillain’s coating
material, not the flavoring core (see FF 1-2, supra).
7. Appellants contend that Guillain’s flavoring core cannot be in a fluid
or pasty form because it is formed by a tabletting technique. (Reply
Br. 4 (citing Guillain, col. 1, ll. 29-34).)
8. The referenced portion of Guillain (col. 1, ll. 29-34) describes
Guillain’s final cooking aid product, i.e., a coated flavoring core, but
does not describe the appearance and texture of the flavoring core
alone.
9. Appellants rely on the Declaration of Nadji Rekhif (App. Br., Ex. D)
to establish that “one having ordinary skill in the art would view the
Guillain product as having a compacted core in solid form (i.e., not
fluid or pasty).” (Reply Br. 5.)
10. Dr. Rekhif testified as follows:
I believe that Guillain’s product comprises a compacted solid
core based on the use of dehydrated materials along with
powders and crystalline materials to make the solid core and the
methods taught therein to make the solid core.
* * *
In Guillain the solid core is formed by compressing a
mixture of dry materials along with fat using tabletting
technology.

(App. Br., Ex. D, ¶¶ 4 & 5 (citing Guillain, col. 2, ll. 15-21 and col. 3, ll. 1-
12).)
11. One section of Guillain relied upon by Dr. Rekhif to identify
Guillain’s use of dry components in the flavoring core (i.e., col. 2, ll.
15-21) is a description of the “visual components” which “may be
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Application 10/229,686

dehydrated pieces of [a] food product.” In Guillain’s process, the
visual components are added to the coating, not the flavoring core
(see, e.g., col. 1, ll. 35-43).
12. In col. 3, ll. 1-12, relied on by Dr. Rekhif to establish that Guillain
forms a solid core by tabletting (see FF 10, supra), Guillain discloses
two methods (see Fig. 1, separate left hand side and right hand side
processing components in Phase 1) of making the core 15. In one
method, fat is mixed with powder and crystalline materials “such as
those used for the preparation of hard tablets of broth” then tabletted
on a press. (Guillain, col. 3, ll. 4-5.) In the second method, fat is
mixed with powder and crystalline materials “such as those used for
the preparation of soft forms of broth” then shaped by extrusion,
laminating or cutting. (Guillain, col. 3, ll. 8-12.)
13. With respect to Appellants’ cooking aid, the Specification states that
“[t]he filling may be produced directly in a mixer by adding
pulverulent materials and liquids.” (Spec. 9:21-22.) The
Specification states that the “filling may be a concentrated meat
and/or vegetable broth of the chicken broth or beef broth type.” The
Specification discloses that “[t]he filling may be extruded.” (Spec.
10:2.)
PRINCIPLES OF LAW
“The anticipation analysis asks solely whether the prior art reference
discloses and enables the claimed invention, and not how the prior art
characterizes that disclosure or whether alternatives are also disclosed.”
Hewlett-Packard Co. v. Mustek Sys., Inc., 340 F.3d 1314, 1324 n.6 (Fed. Cir.
2003).
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Application 10/229,686

When “the claimed and prior art products are identical or substantially
identical, or are produced by identical or 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.”
In re Best, 562 F.2d 1252, 1255-56 (CCPA 1977); see also In re Spada, 911
F.2d 705, 708 (Fed. Cir. 1990).

ANALYSIS
The evidence of record weighs in favor of the Examiner’s finding (FF
4) that the claim limitation “fluid or pasty flavoring filling” reads on
Guillain’s flavoring core because it contains the same components and
would inherently have the same consistency as Appellants’ filling (compare
FF 12, second method with FF 13). Appellants’ arguments and evidence do
not support a finding that Guillain’s flavoring core is limited to a hard tablet
or some other solid form which is excluded by the term “pasty.” (See FF 5-
12.) Nor have Appellants otherwise shown that Guillain’s flavoring core
would not necessarily or inherently have the same characteristics as the
claimed fluid or pasty flavoring filling.

CONCLUSION
Appellants have not shown that the Examiner reversibly erred in
rejecting claims 1-4 and 6-10 under 35 U.S.C. § 102(e) as anticipated by
Guillain. In traversing the rejection of claim 5 under 35 U.S.C. § 103(a),
Appellants rely on the same arguments presented in connection with the
rejection of claim 1 under 35 U.S.C. § 102(e). (App. Br. 12; Reply Br. 6.)
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Application 10/229,686

Accordingly, Appellants also have not shown that the Examiner reversibly
erred in rejecting claim 5.
The decision of the Examiner rejecting claims 1-10 is affirmed.
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)(iv).
AFFIRMED

PL Initial:
sld

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