Ex Parte Maheshwari et al

Board of Patent Appeals and Interferences

May 16, 2007

10360991 (B.P.A.I. May. 16, 2007)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte PEEYUSH MAHESHWARI, MARY J. REED,
THOMAS CRAIG HOESE, ESSAM WAHBAH,
NICHOLAS D. KOVICH, HEIDI L. NELSON
and JAMES N. WEINSTEIN
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Appeal 2007-1528
Application 10/360,991
Technology Center 1700
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Decided: May 16, 2007
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Before EDWARD C. KIMLIN, PETER F. KRATZ, and
CATHERINE Q. TIMM, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-7, 9, and 32.
Claim 1 is illustrative:
1. A microwaveable dough product containing a filling, said
product comprising:

Appeal 2007-1528
Application 10/360,991

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a) pre-cooked dough comprising flour, water, and corn meal dispersed
within said dough; and

b) a sweet or savory filling comprising a boil out reducing agent,
where said boil out reducing agent comprises bread crumbs having an
average particle size of from about 1 mm to 7 mm, wherein said bread
crumbs reduce boil out of the filling from inside the pre-cooked dough when
the pre-cooked dough is reheated during a microwave heating process.
The Examiner relies upon the following references as evidence of
obviousness:
Lee US 5,059,433 Oct. 22, 1991
Pesheck US 5,576,036 Nov. 19, 1996
Bongiovanni US 5,897,895 Apr. 27, 1999
Hayes-Jacobson US 5,965,186 Oct. 12, 1999
Appellants’ claimed invention is directed to a microwaveable dough
product containing a filling wherein the filling comprises a boil out reducing
agent which keeps the filling from boiling out of the dough product during
microwave heating. The boil out reducing agent comprises bread crumbs.
Appealed claims 1-7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hayes-Jacobson in view of Lee, Pesheck and
Bongiovanni. Claims 9 and 32 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hayes-Jacobson in view of Lee and Pesheck.
Appellants do not provide separate arguments for any particular claim
on appeal. Also, Appellants’ argument against the separate rejection of
claims 9 and 32 is the same as the argument against the rejection of claims
1-7. Accordingly, all the appealed claims stand or fall together with claim 1.
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Application 10/360,991

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We have thoroughly reviewed Appellants’ arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejections for essentially those
reasons expressed in the Answer, and we add the following primarily for
emphasis.
Appellants do not dispute the factual determinations of the Examiner
with respect to the disclosure of Hayes-Jacobson. As recognized by the
Examiner, Hayes-Jacobson does not disclose a dough comprising cornmeal
and a filling comprising bread crumbs. Appellants do not take issue with the
Examiner’s legal conclusion that it would have been obvious for one of
ordinary skill in the art, based on Bongiovanni, to add cornmeal to the dough
of Hayes-Jacobson. Also, Appellants make no argument that it would have
been nonobvious, based on the disclosures of Lee and Pesheck and the state
of the prior art, to add bread crumbs to the product of Hayes-Jacobson.
Rather, the sole argument advanced by Appellants is that none of the
references provides “any insight or instruction to one of skill in the art that
the inclusion of bread crumbs inside a pre-cooked dough will help to reduce
boil-out of an internal filling during microwave heating of a microwavable
dough product” (Br. 11, penultimate para.).
The Examiner appreciates that neither Lee nor Pescheck teaches that
the inclusion of bread crumbs functions as a boil out reducing agent which
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Application 10/360,991

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maintains the filling inside the dough product. However, the Examiner
properly states that it is not necessary for a finding of obviousness that the
prior art recognizes all the inherent properties of a known component or
ingredient in a composition. It is well settled that the motivation of the
skilled artisan need not be the same as an applicant’s motivation for a
finding of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996). Also, it is not necessary for a conclusion of
obviousness that the prior art recognizes all the advantages of a composition
that is within the prior art. The mere discovery and claiming of a new
benefit of an old or obvious composition cannot impart patentability to the
claimed composition under § 103. See In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Accordingly, in the present case, the fact that Appellants may have
discovered a new advantage for adding bread crumbs to the filling of a
dough product does not result in the metamorphosis of an obvious food
composition comprising bread crumbs into a different, nonobvious
composition. Significantly, Appellants have not proffered any objective
evidence which establishes unexpected results attributed to the addition of
bread crumbs into the filling of the dough product of Hayes-Jacobson, let
alone evidence of sufficient probative value to outweigh the obviousness of
doing so. See In re May, 574 F.2d 1082, 1092, 197 USPQ 601, 609 (CCPA
1978); In re Nolan, 553 F.2d 1261, 1267, 193 USPQ 641, 645 (CCPA
1977).
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Application 10/360,991

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In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims 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) (2006).

AFFIRMED

clj

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