Ex Parte McFadden

Patent Trial and Appeal Board

Dec 6, 2016

13648430 (P.T.A.B. Dec. 6, 2016)

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.
13/648,430 10/10/2012 Kevin S. McFadden 00947.0382USD1 7130
23552 7590 12/08/2016
MERCHANT & GOULD P.C.
P.O. BOX 2903
MINNEAPOLIS, MN 55402-0903
EXAMINER
LONG, LUANA ZHANG
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
US PT023552@ merchantgould .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN S. McFADDEN
Appeal 2015-004272
Application 13/648,430
Technology Center 1700
Before TERRY J. OWENS, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—9, 12—14, and 17—20. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a process for using a food package. Claim 1 is
illustrative:
1. A process of using a food package, the process
comprising:
opening the food package at a tear line, the food package
including a non-rigid material being substantially impermeable
Appeal 2015-004272
Application 13/648,430
to a liquid and forming an interior cavity in which instant
oatmeal is stored;
emptying the instant oatmeal into a bowl;
pouring water or milk into the food package to a 2/3 cup
fill line on the food package; and
pouring the water or milk into the bowl with the instant
oatmeal.
The References
Kunimoto US 4,818,545 Apr. 4, 1989
Guckenberger US 5,158,499 Oct. 27, 1992
Navarro US 6,589,578 B1 July 8,2003
Quaker Instant Oatmeal package photos (2005) (hereinafter Quaker).
The Rejections
The claims stand rejected as follows: claims 1—9, 12, and 13 under
35 U.S.C. § 103 over Quaker in view of Guckenberger and Navarro,
claims 14 and 17—19 under 35 U.S.C. § 103 over Quaker in view of
Guckenberger, Navarro and Kunimoto, claims 14 and 20 under
35 U.S.C. § 103 over Guckenberger in view of Kunimoto and Navarro, and
claims 14 and 17—20 under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor regards as the invention.
OPINION
We affirm the rejections.
Rejections under 35 U.S.C. § 103
Although the references in the rejections differ, the Appellant argues
the claims as a group (Br. 13—18). We therefore limit our discussion to one
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Application 13/648,430
claim, i.e., claim 1. Claims 2—9, 12—14, and 17—20 stand or fall with that
claim. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
Quaker discloses emptying an instant oatmeal packet into a bowl and
adding 2/3 cup of water or milk from a measuring cup into the bowl
(Exhibit 3).
Guckenberger discloses emptying a concentrated juice pouch and then
using the pouch to measure the amount of water used to reconstitute the
juice (col. 10,11. 3—9).
Navarro adds water up to a horizontal mark on a package containing
pulverulent egg, then closes and shakes the bag to mix the egg and water
(col. 2,11. 36-44; col. 3,11. 27-29, 38-46).
The Appellant asserts, in reliance upon a Rule 1.132 Declaration by
Keven S. McFadden (1 10), that the Appellant’s instant oatmeal individual
package market share rose from none to about three percent within a few
years (Br. 15). The Appellant apparently considers the alleged increase in
market share to be evidence of commercial success.
That assertion is not well taken because the Appellant provides no
evidence of the alleged market share increase or of a nexus between it and
merits of the claimed process. See Demaco Corp. v. F. Von Langsdorff
Licensing Ltd., 851 F.2d 1387, 1392 (Fed. Cir. 1988); Kansas Jack, Inc. v.
Kuhn, 719 F.2d 1144, 1151 (Fed. Cir. 1983).
The Appellant asserts, in reliance upon the McFadden Declaration
(1112—14), that the claimed process satisfies a long-felt but unsolved need
(Br. 15-16).
McFadden provides unsolicited favorable comments from consumers,
the media and bloggers regarding characteristics of the Appellant’s instant
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Application 13/648,430
oatmeal including the individual package’s fill line for measuring the
amount of water added to the oatmeal (Exhibit A). Most of the comments
received each quarter pertain to product features other than the pouch. The
comments pertaining to the pouch indicate that consumers value the pouch’s
fill line, but do not show a long-felt but unsolved need, i.e., that
manufacturers of instant oatmeal individual packages were aware of a need
for the package to serve as a measuring cup but were unable to solve that
need. See In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (“[0]ur precedent
requires that the applicant submit actual evidence of long-felt need, as
opposed to argument”).
The Appellant asserts, in reliance upon the McFadden Declaration
(115), that the Appellant’s instant oatmeal individual package fill line was
copied by Quaker Oats “long after Applicant launched its commercial
product in the marketplace” (Br. 17).
The Appellant provides no evidence of the time lapse between the
product launch and the alleged copying, or that product was distributed
during that time period in such a way that Quaker Oats reasonably should
have been expected to be aware of the fill line.
Rejection under 35 U.S.C. § 112, second paragraph
The Appellant does not challenge the rejection under 35 U.S.C. § 112,
second paragraph. Accordingly, we summarily affirm that rejection.
For the above reasons we are not persuaded of reversible error in the
rejections.
DECISION/ORDER
The rejections under 35 U.S.C. § 103 of claims 1—9, 12, and 13 over
Quaker in view of Guckenberger and Navarro, claims 14 and 17—19 over
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Application 13/648,430
Quaker in view of Guckenberger, Navarro and Kunimoto and claims 14
and 20 over Guckenberger in view of Kunimoto and Navarro, and the
rejection of claims 14 and 17—20 under 35 U.S.C. § 112, second paragraph
are affirmed.
It is ordered that the Examiner’s decision 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).
AFFIRMED
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