Ex Parte Mesu et alDownload PDFBoard of Patent Appeals and InterferencesMar 24, 200910920131 (B.P.A.I. Mar. 24, 2009) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte GURBE JELLE MESU and JACOBUS BOOT ________________ Appeal 2009-1161 Application 10/920,131 Technology Center 1700 ________________ Decided:1 March 25, 2009 ________________ Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2009-1161 Application 10/920,131 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 6 and 7, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). The Invention The Appellants claim a granola or snack food product. Claim 6 is illustrative: 6. A granola or snack-food product obtained by a method comprising: a. at elevated temperature, mixing ingredients for the product with a liquid binder to obtain a formable mixture, wherein the binder is liquid at elevated temperature and sets when cooled to room temperature; b. at elevated temperature, whilst the binder is still liquid, forming the mixture into product precursor; and c. cooling the precursor to set the binder, thereby obtaining the granola or snack-food product. The References Chen 4,423,085 Dec. 27, 1983 Irma S. Rombauer and Marion Rombauer Becker (hereafter “Rombauer”), Joy of Cooking 790-791 (Bobbs-Merrill 1975). The Rejections Claims 6 and 7 stand rejected under 35 U.S.C. § 102(b) over Chen and over Rombauer. OPINION We affirm the Examiner’s rejections. 2 Appeal 2009-1161 Application 10/920,131 Issue Have the Appellants shown reversible error in the Examiner’s determination that Chen or Rombauer discloses, expressly or inherently, a product which is the same or substantially the same as one made by a process including the step of forming a liquid binder-containing mixture into a product precursor at an elevated temperature and cooling the precursor to set the binder? Rejection over Chen Findings of Fact Chen discloses a free-flowing, stable dry nut product made by (1) mixing a supersaturated sugar syrup (which corresponds to the Appellants’ liquid binder) with nuts and optionally other ingredients at a temperature not less than 240ºF; (2) impact beating or vigorously agitating the mixture as it cools and the moisture in the sugar syrup evaporates to form a substantially dry product; and (3) screening the product and milling it to produce a granular, free-flowing, non-caking product (col. 3, l. 53 – col. 4, l. 16). The product is composed of “micro-size, porous, imperfect, agglomerated crystals due to a combination of rapid rate and high temperature crystallization, characteristic with impact beating” (col. 6, ll. 35- 40). The structure and properties of the product are distinctly different from conventional spray-dried or drum-dried nut-incorporated products which tend to cake or lump in storage (col. 6, ll. 25-40). Analysis “Anticipation requires that every limitation of the claim in issue be disclosed, either expressly or under principles of inherency, in a single prior 3 Appeal 2009-1161 Application 10/920,131 art reference.” Corning Glass Works v. Sumitomo Elec. U.S.A., Inc., 868 F.2d 1251, 1255-56 (Fed. Cir. 1989). The patentability of a claim in product-by-process form is determined based on the product itself, not on the method of making it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (“If the product in a product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.”). The Appellants argue that the products of claims 6 and 7 are “particulates bound together, not free-flowing 3-50 micron particles”;2 contain nuts, fruit, dried fruit, cereals, and cereal products; are in the form of breakfast cereal, cookies and bars; and are hand held (Br. 7, 8; Reply Br. 7). That argument is not well taken because those product features are not required by claims 6 and 7. The Appellants are improperly reading limitations from the Specification into the claims. See In re Prater, 415 F.2d 1393, 1405 (CCPA 1969). The Appellants argue that Chen does not disclose solidification only upon cooling (Br. 6). That argument is not persuasive because the Appellants’ claims do not require a product that has solidified only upon cooling. The claims encompass Chen’s product made by impact beating or vigorous agitation as the mixture cools and solidifies (col. 4, ll. 3-12). The Appellants argue that because Chen’s product is crystallized at a high temperature, not upon temperature reduction, it is a different product 2 Chen’s 3-50 micron size is the size of sugar crystals that are intimately associated with non-sugar solids (col. 6, ll. 10-12). 4 Appeal 2009-1161 Application 10/920,131 than the Appellants’ claimed product (Br. 6; Reply Br. 4). Like the Appellants’ product, Chen’s product is crystallized as the temperature is reduced from elevated temperature to room temperature. The Appellants’ claims do not exclude impact beating or vigorous agitation during crystallization. The Appellants argue that Chen discloses that slow cooling produces a product that is different than Chen’s product (Br. 8; Reply Br. 4). That argument is not well taken because the Appellants’ claims do not require a product that is made by slow cooling. The Appellants argue that Chen does not disclose forming a product precursor but, rather forms the product directly from the mixture by impact beating, with crystallization at high temperature (Br. 6; Reply Br. 4). Chen’s product formed during the initial period of impact beating or vigorous agitation and cooling is a precursor to the final product. Like the Appellants’ product, Chen’s product is made by crystallization that begins at elevated temperature and continues as the temperature is reduced. The requirements of the Appellants’ claims 6 and 7 are met by Chen as follows: The Appellants’ claims 6 and 7 require a product made by mixing the ingredients with a liquid binder at elevated temperatures to obtain a formable mixture. Chen’s product meets that claim requirement as indicated by Chen’s disclosure of mixing the ingredients at a temperature of 240ºF or higher to obtain a mixture that is formable into the final product. Claims 6 and 7 require a product having a binder that is liquid at elevated temperatures and sets when cooled to room temperature. That limitation is met by Chen’s sugar syrup binder (col. 3, ll. 53-54), which is 5 Appeal 2009-1161 Application 10/920,131 the same as or substantially the same as the Appellants’ sugar solution binder (Spec. 3:28-4:5). Claim 6 requires a product made by forming the mixture into the product precursor at elevated temperatures while the binder is still liquid, and claim 7 requires a product made by forming at least a portion of the mixture into one or more product precursors and then allowing the binder to cool and set into a solid state which is substantially dry and non-sticky to the touch. The Appellants’ Specification states that the binder is in a liquid state at elevated temperature and is set when it has cooled sufficiently that it is substantially dry and non-sticky to the touch (Spec. 7:30 – 8:2). The Specification does not state that the binder is liquid until it is set, but the Appellants’ term “liquid” must encompass some degree of hardening upon cooling because otherwise, after the disclosed cutting of the mixture at elevated temperature (Spec. 3:16-20), the binder would flow together across the cuts. Thus, giving the Appellants’ term “liquid” its broadest reasonable interpretation in view of the Specification, see In re Translogic Tech. Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007) (“‘[D]uring examination proceedings, claims are given their broadest reasonable interpretation consistent with the specification.’” (quoting In re Hyatt, 211 F.3d 1367, 1372 (Fed. Cir. 2000), Chen’s initial impact beating or vigorous agitation of the mixture during its initial cooling period forms the mixture, while the binder is still liquid, into a precursor for the finally-cooled product having a set binder. Rejection over Rombauer Findings of Fact Rombauer discloses candied popcorn made by heating a syrup, which can be a sugar syrup, pouring it over corn, gently stirring the mixture until 6 Appeal 2009-1161 Application 10/920,131 the corn is well coated with the syrup, and then, when the corn has cooled enough to handle with lightly buttered fingers, pressing it into balls or lollipops (Rombauer 790-791). Analysis The Appellants argue that Rombauer does not form the mixture into a product precursor while the binder is liquid but, rather, waits until the product is sticky such that it is handleable with buttered fingers (Br. 10, 12). The Appellants argue that when Rombauer’s mixture is deformable and sticky, the binder is not liquid (Reply Br. 8). As discussed above regarding the rejection over Chen, the broadest reasonable interpretation of the Appellants’ term “liquid” encompasses a binder that has hardened to some extent but has not set such that it is substantially dry and non-sticky. Rombauer’s mixture, which is sticky as indicated by the requirement for lightly buttered fingers, is not set. Hence, the binder in the mixture appears to still be sufficiently warm that it is liquid as that term is used by the Appellants. The Appellants argue that Rombauer’s product is not neat and complete like the Appellants’ product (Reply Br. 8-9). That argument is not persuasive because the Appellants’ claims do not require a neat product, and because Rombauer’s product is complete. The Appellants argue that their product differs from that of Rombauer because the Appellants’ formation of the precursor occurs at elevated temperature whereas Rombauer’s formation of precursor takes place at low temperature where butter is required (Reply Br. 9). Like the Appellants’ product precursor, Rombauer’s product precursor is formed from a mixture of heated syrup and at least one other ingredient. 7 Appeal 2009-1161 Application 10/920,131 Like the binder in the Appellants’ product precursor, Rombauer’s binder sets upon cooling. Hence, the record does not indicate that the Appellants’ claimed product differs from Rombauer’s product. Conclusion of Law The Appellants have not shown reversible error in the Examiner’s determination that Chen or Rombauer discloses, expressly or inherently, a product which is the same or substantially the same as one made by a process including the step of forming a liquid binder-containing mixture into a product precursor at elevated temperatures, and cooling the precursor to set the binder. DECISION/ORDER The rejections of claims 6 and 7 under 35 U.S.C. § 102(b) over Chen and over Rombauer 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 ssl BANNER & WITCOFF, LTD. and ATTORNEYS FOR CLIENT NO. 006943 10 SOUTH WACKER DR. SUITE 3000 CHICAGO, IL 60606 8 Copy with citationCopy as parenthetical citation