Ex Parte Manley

Board of Patent Appeals and Interferences

May 21, 2008

10784707 (B.P.A.I. May. 21, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL F. MANLEY

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Appeal 2007-2770
Application 10/784,707
Technology Center 1700
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Decided: May 21, 2008
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-22. We have jurisdiction under 35 U.S.C. § 6.
Appeal 2007-2770
Application 10/784,707

Appellant’s invention relates to a method for decorating foodstuff
with an edible design and more particularly to decorating coated fruit with
an edible design. An understanding of Appellant’s invention can be gleaned
from independent claim 1 which appears below:
1. A method for decorating fruit with a design, the method
comprising the steps of:
selecting a fruit;
selecting a design to decorate the fruit;
printing the design;
coating the fruit with an edible, substantially water-intolerant
coating; and
attaching the design to the coated fruit.
The Examiner relies on the following references in rejecting the
appealed subject matter:
Cone 5,229,149 Jul. 20, 1993
Waters 6,376,000B1 Apr. 23, 2002
Stewart 6,616,958B1 Sep. 9, 2003
Shigeo JP 55034966 A Mar. 11, 1980
Nakanishi, Future and Present of Edible Film, Food Packag. (Jpn), no. 5,
May 1989, pp. 73-82.
Claims 1-4, 7-19, 21 and 22 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Nakanishi1, Shigeo2, Cone, Waters, and the Admitted
Prior Art in the specification3. Claims 5, 6, and 20 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Nakanishi, Shigeo, Cone, Waters, the
Admitted Prior Art in the specification, and Stewart. .

1 An English-language translation of this document has been provided in the
present record.
2 An English-language translation of this document has been provided in the
present record.
3 Specification 2-3.
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Application 10/784,707

Appellant argues the rejected claims as a group except for claim 4.
(App. Br. 3-7). Thus, we will decide this appeal based on independent
claim 1 and claim 4. 37 C.F.R. § 41.37(c)(1)(vii) (2006).
We have thoroughly reviewed each of Appellant’s 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.
Appellant contends that Examiner has not shown any evidence that
the method for printing a design on fruit as disclosed in Nakanishi and
Shigeo would allow for a design to be printed on coated fruit. Appellant
contends that one of ordinary skill in the art at the time of the invention
would not have made the design modifications to the methods of Nakanishi,
Shigeo, and Cone as alleged by Examiner. Appellant further contends that
since Nakanishi, Shigeo, Cone, and Waters have no teaching, suggestion, or
motivation for modifying the method of printing an image on uncoated fruit
disclosed therein, the rejection lacks proper basis and should be withdrawn.
(App. Br. 4-5).
Correspondingly, the first obviousness issue presented is: Did
Appellant identify reversible error in the Examiner’s rejection of claims 1-22
under § 103? We answer this question in the negative.
A claimed invention is unpatentable if the differences between it and
the prior art “are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
in the art.” 35 U.S.C. § 103. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
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Appeal 2007-2770
Application 10/784,707

than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct.
1727, 1739 (2007). The question to be asked is “whether the improvement
is more than the predictable use of prior art elements according to their
established functions.” Id.
The Examiner has reasonably determined that a person of ordinary
skill in the art would have found it obvious to perform the method of
decorating fruit with a design comprising coating the fruit with a
substantially water intolerant coating and attaching the design to the coated
fruit. Specifically the Examiner has found that:
Nakanishi discloses a method of decorating fruit with a
design, comprising of selecting a fruit, selecting a design,
printing the design, and attaching the design to the fruit
(translation, page 17), as further evidenced by Shigeo
(translation, page 2). Nakanishi does not expressly disclose the
coating of the fruit with an edible coating. It was conventional
in the art to provide coated fruit as evidenced by Cone (column
4, line 52) and the Applicant's admission of prior art. To
modify Nakanishi and print on a conventional coated fruit,
rather than a conventional uncoated fruit, would have been an
obvious matter of choice since Nakanishi teaches the general
process of printing on fruit and coating the fruit could increase
consumer appeal and enhance taste. Also, it was well known in
the art to attach designs to substantially water-intolerant
substances, as evidenced by Waters (abstract). Since it was
known to coat fruit with substantially water-intolerant
substances as taught by Cone, and also to print on such
substances as taught by Waters, it would have been obvious to
print on coated fruit to add to the attractiveness of the product.
(Answer 3-4).

The specification describes suitable edible coatings as including “dark
chocolate, milk chocolate, white chocolate, caramel, confectionary coating,
or some other similar coating.” (Spec. 11).
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Appeal 2007-2770
Application 10/784,707

Appellant argues that a person of ordinary skill in the art would not
have made the design modifications to the methods of Nakanishi, Shigeo,
Waters, and Cone as alleged by Examiner to achieve the claimed invention.
(App. Br. 4-5).
We do not agree. The present record reveals that chocolate covered
strawberries were known by persons of ordinary skill in this art. (Spec. 2). The
specification reveals the method of attaching the design to the fruit depends on
how the design is printed. If the design is printed on an edible sheet, then the
edible sheet is removed from the wax paper backing and applied to the coated fruit.
The specification reveals that an edible adhesive such as gum arabic may be used
to attach the design to the coating. In such cases, the adhesive is allowed to dry
whereby the design becomes fixedly attached to the coated fruit. (Spec. 11).
Waters describes a method for creating images on chocolate. (Waters, col. 1, ll.
33-37). Waters discloses the image can be applied to a hardened preformed
chocolate utilizing an adhesive. (Waters, col. 2, ll. 29-34).
Under these circumstances, we concur with the Examiner that a
person of ordinary skill in the art would have had sufficient skill and
creativity to adhere designs on chocolate and to coat fruits with chocolate
containing said designs. A person of ordinary skill in the art who desired to
decorate coated fruit with an edible design would have been led to the
claimed subject matter, motivated by a reasonable expectation that the
techniques utilized in decorating chocolate would have also been appropriate
for decorating a food item coated with chocolate. Cf. In re Ludwig, 353 F.2d
241, 243-244 (CCPA 1965). (Patentability does not convey to an invention
where only simple observation is required to ascertain a problem). A person
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Appeal 2007-2770
Application 10/784,707

of ordinary skill in the art would have sufficient skill to select the
appropriate shape and size of the design to be applied to fruit.
Regarding claim 4, the present record reveals that it was a known common
method to utilize an inkjet printer to print on edible sheets. (Spec. 8). Having
acknowledged that certain claimed elements are taught by the prior art, Appellant
cannot now defeat an obviousness rejection by asserting that the cited references
fail to teach or suggest these elements. See Constant v. Advanced Micro-Devices,
Inc., 848 F.2d 1560, 1570 (Fed. Cir. 1988) (“A statement in a patent that
something is in the prior art is binding on the applicant and patentee for
determinations of anticipation and obviousness.”); In re Nomiya, 509 F.2d 566,
571 n.5 (CCPA 1975) (It is a “basic proposition that a statement by an applicant,
whether in the application or in other papers submitted during prosecution, that
certain matter is ‘prior art’ to him, is an admission that that matter is prior art for
all purposes . . . .”).
Claims 5, 6, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Nakanishi, Shigeo, Cone, Waters, the Admitted Prior Art in the specification,
and Stewart. .
Appellant has only presented arguments as to independent claim 1 (rejection
discussed above) and have not otherwise presented separate arguments on the
merits for claims 5, 6, and 20. In this regard, Appellant does not assert non-
obviousness based on the additional limitations set forth in any of the claims 5, 6,
and 20 subject to this rejection by explaining how the additional references applied
thereto by the Examiner fail to establish the obviousness of the additional features
recited in these separately rejected dependent claims. Because we do not find
Appellant’s arguments persuasive as to independent claim 1, it follows that these
arguments also are unpersuasive as to claim 4.
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Application 10/784,707

Under the circumstances recounted above, it is our determination that
the applied references evidence establishes a prima facie case of obviousness
within the meaning of 35 U.S.C. § 103. Because the Examiner has carried
his burden of establishing a prima facie case of obviousness and because the
Appellant has offered evidence of nonobviousness, we must now consider
anew the issue of obviousness with due regard for all evidence relevant to
the ultimate conclusion. In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
Appellant contends that the declaration of Paul F. Manley, signed 17 June
2005, explains that the methods described in Waters, which deal with molds,
would not work with enrobed fruit due to the inconsistent shape of the fruit.4
(App. Br. 5).
The Declarant’s opinion is not persuasive. The Declarant opinion is limited
to a discussion of the Waters reference.5 Further, the Declarant does not address
the entire disclosure of Waters, specifically the portions of the reference that
describe the application of a design on chocolate using an adhesive to attach an
edible sheet or film. We note that the Declarant has not indicated that it was
unknown to adhere designs on chocolate or that it was unknown to coat fruits, such
as strawberries, with chocolate. We also note that the Declarant has not indicated
that a person of ordinary skill in the art would not have sufficient skill to select the
appropriate shape and size of the design to be applied to fruit.
For the foregoing reasons and those presented in the Answer, the
rejection of claims 1-22 under 35 U.S.C. § 103(a) is affirmed.

4 Paul F. Manley is the named Appellant.
5 The Waters reference is included along with several other references in the
rejection of the claimed subject matter.
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Appeal 2007-2770
Application 10/784,707

ORDER
The rejection of claims 1-22 under 35 U.S.C. § 103(a) 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

tc

LAW OFFICE OF STEVEN B. LEAVITT, LLP
130 MEADOWCREEK
ROCKWALL, TX 75032

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