Ex Parte Mesu et al

Board of Patent Appeals and Interferences

Mar 24, 2009

10920131 (B.P.A.I. Mar. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GURBE JELLE MESU
and JACOBUS BOOT
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Appeal 2009-1161
Application 10/920,131
Technology Center 1700
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Decided:1 March 25, 2009
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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.

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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
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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).
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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
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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
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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.
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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

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