Ex Parte Moore et al

Patent Trial and Appeal Board

Jun 29, 2016

12463673 (P.T.A.B. Jun. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/463,673 05/11/2009
110933 7590 06/30/2016
Carstens & Cahoon, LLP
PO Box 802334
Dallas, TX 75380
FIRST NAMED INVENTOR
Gary Moore
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
CQKER.3139 1067
EXAMINER
LEBLANC, KATHERINE DEGUIRE
ART UNIT PAPER NUMBER
1791
MAILDATE DELIVERY MODE
06/30/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY MOORE,
NOMAN KHAN, and W ALEED Y ACU
Appeal2014-008088
Application 12/463,673
Technology Center 1700
Before KAREN M. HASTINGS, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
WILSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's
August 30, 2013 decision finally rejecting claims 1-3 and 5-26 ("Final
Act."). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the Real Party in Interest as The Quaker Oats Company
(Appeal Br. 2).
Appeal2014-008088
Application 12/463,673
CLAHvIED SUBJECT ivIATTER
Appellants' invention is directed to methods for preparing cakes with
whole grain and/or legume ingredients, which are subject to puffing (Spec.
iTiT 8, 10-11).
Independent claim 1 is representative, and is reproduced below from
the Claims Appendix of the Appeal Brief (key claim limitations shown in
italics):
1. A method for preparing puffed grain cakes consisting
essentially of the steps of
a) introducing whole grains into a rotary cooker;
b) cooking the whole grains with steam and water in the
rotary cooker to about 20-50% moisture;
c) drying the whole grains to about 10-17% moisture to
form dried whole grains; and
d) puffing the dried whole grains to fuse the whole grains
to form a puffed whole grain cake.
REJECTIONS
I. Claims 1-3, 5, and 7-11 are rejected under 35 U.S.C. § 102(b)
as anticipated by Johnson2 as evidenced by Martin. 3
II. Claims 6 and 12-16 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnson as evidenced by Martin.
III. Claims 17-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Johnson in view ofKugitani4 as evidenced by Martin.
With the exception of claims 6, 10, 11, 15, 16, and 20-26, Appellants
do not make separate substantive arguments in support of patentability of
2 Johnson et al., WO 2005/051097 Al, published June 9, 2005.
3 Martin et al., U.S. Patent No. 4,238,514, issued Dec. 9, 1980.
4 Kugitani et al., US 2008/0280020 Al, published Nov. 13, 2008.
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Application 12/463,673
any of the claims (see generally, Appeal Br. 7-23). Accordingly, our
discussion will focus on the rejections of independent claims 1, 12, 17, and
21. Claims 6, 10, 11, 15, 16, and 20-26 will be addressed separately.
DISCUSSION
"A prior art reference anticipates a patent claim under
35 U.S.C. § 102(b) if it discloses every claim limitation." In re
Montgomery, 677 F.3d 1375, 1379 (Fed. Cir. 2012) (citing Verizon Servs.
Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1336-37 (Fed. Cir. 2010)).
"By using the term 'consisting essentially of,' the drafter signals that the
invention necessarily includes the listed ingredients and is open to unlisted
ingredients that do not materially affect the basic and novel properties of the
invention." PPG Indus. v. Guardian Indus. Corp, 156 F.3d 1351, 1354
(Fed. Cir. 1998).
Regarding Rejection I, the Examiner finds that Johnson discloses
every step of claim 1 (Ans. 3-5). The Examiner also finds that although
Johnson teaches a step of flash frying the puffed cakes, this step is not an
additional step outside the claimed "puffing the dried whole grains" step (id.
at 4--5).
Appellants argue that Johnson fails to disclose the claimed method
because of the flash frying step, which Appellants assert causes Johnson's
process to fall outside the scope of the claimed process (Appeal Br. 7-8).
Appellants contend that the disclosure of Johnson shows that the flash frying
step materially affects the basic and novel properties of the process (id.).
It is an Applicant's burden to establish that a step practiced in a prior
art method is excluded from his claims by "consisting essentially of'
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language. Ex parte Hoffman, 12 USPQ2d 1061, 1063---64 (BPAI 1989); see
also In re DeLajarte, 337 F.2d 870, 873-74 (CCP A 1964). Appellants have
not met their burden. In particular, Appellants point to the disclosure in
Johnson that the flash frying step "enhances the ability of an expandable
food product to expand during subsequent heating" and overcomes other
problems encountered in the prior art (Appeal Br. 7, citing Johnson, i-fi-1 7, 15,
22, and 28). However, Appellants have not pointed to anything either in
their Specification or in Johnson which explains how a flash frying step
would materially affect the basic and novel properties of their invention.
Without such information, Appellants have not met their burden. See, e.g.
PPG Indus., 156 F.3d at 1355 ("PPG could have defined the scope of the
phrase 'consisting essentially of' for purposes of its patent by making clear
in its specification what it regarded as constituting a material change in the
basic and novel characteristics of the invention").
Moreover, the flash frying step in Johnson is properly considered part
of the claimed "puffing" step. We give the claim limitation "puffing the
dried whole grains" its broadest reasonable construction consistent with the
Specification. In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). The Specification provides a definition for "puffing" as
puffing, popping, or otherwise expanding the grain or legume" (Spec. 15,
emphasis added). Thus, "puffing the dried whole grains" would include any
step in which the grain or legume is expanded, even if only a nominal
amount. In view of this construction, we do not discern reversible error in
the Examiner's finding that Johnson's flash frying step is not an additional
step outside the claimed "puffing the dried whole grains" step (Ans. 8, citing
Johnson i123 ("The flash flying causes only minimal expansion of the
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Application 12/463,673
expandable food product of less than or equal to 10%.")). That is, the flash
frying step of Johnson is properly considered to be part of the "puffing" step
as set forth in claim 1.
Accordingly, we affirm Rejection I to claim 1 as anticipated by
Johnson. We likewise affirm the Rejection I with respect to dependent
claims 1, 3, 5, and 7-9. 37 C.F.R. § 41.37(c)(l)(iv). Although Appellants
argue claims 10 and 11 separately, each argument relies on the position that
Johnson's product is materially different from the resulting product of claim
1. For the reasons set forth above, Appellants' arguments are not persuasive.
According! y, we affirm Rejection I to claims 10 and 11.
Regarding Rejections II and III made under§ 103(a), Appellants
argue that: (i) Johnson teaches away from the claimed method because claim
12 excludes flash frying (Appeal Br. 10-11), (ii) the Examiner has not
established a prima facie case of obviousness for claim 6 because there is no
citation for the finding that steel cut oats are considered more natural than
rolled oats (Appeal Br. 12; Reply Br. 2), and (iii) Kugitani teaches away
from the Examiner's proposed combination with Johnson because Kugitani
would lead an ordinary skilled artisan away from frying and towards
extrusion puffing (Appeal Br. 15; Reply Br. 2).
Appellants' argument (i) is unpersuasive for the same reasons set forth
above affirming the anticipation Rejection I over Johnson. Accordingly, we
affirm Rejection II to claim 12. We likewise affirm Rejection II with respect
to dependent claims 13 and 14. 37 C.F.R. § 41.37(c)(l)(iv). Although
Appellants argue claims 15 and 16 separately, each argument relies on the
position that Johnson's product is materially different from the resulting
product of claim 12. For the reasons set forth above, Appellants' arguments
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are not persuasive. Accordingly, we affirm Rejection II with respect to
claims 15 and 16.
Appellants' provide separate argument (ii) urging the reversal of
Rejection II to claim 6. The burden of showing something by a
preponderance of the evidence simply requires the trier of fact to believe that
the existence of a fact is more probable than its nonexistence. Concrete Pipe
& Prods. of Cal., Inc. v. Constr. Laborers Pension Tr.for S. Cal., 508 U.S.
602, 622 (1993). Under a preponderance of the evidence standard,
Appellants' argument (ii) is not persuasive because Appellants' failed to
challenge the Examiner's finding with any evidence that the ordinary skilled
artisan would not consider steel cut oats more natural than rolled oats.
Accordingly, we affirm Rejection II to claim 6.
With regard to argument (iii), whether a reference teaches away from
a claimed invention is a question of fact. In re Harris, 409 F.3d 1339, 1341
(Fed. Cir. 2005). "Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant's invention." Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005) (citations
omitted).
In this case, Kugitani teaches that its puff product can be a
combination of soybean and whole grains in the form of rice (see Kugitani
i-fi-130, 54), which is exactly the objective of the claimed invention (see i124).
Appellants' argument (iii) is not persuasive because Kugitani's teachings
leads to a puffed cake product in accordance with Appellants' objectives.
Therefore, we find that Kugitani does not teach away from the objectives of
the present invention.
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Accordingly, we affirm Rejection III to independent claims 17 and 21.
We likewise affirm Rejection III to dependent claims 18 and 19. 37 C.F.R.
§ 41.37(c)(l)(iv). Although Appellants argue claims 20 and 22-26
separately, these arguments rely on the positions that Johnson's product is
materially different from the resulting product of its claimed method and/or
that Kugitani teaches away from the Examiner's proposed combination with
Johnson. For the reasons set forth above, Appellants' arguments are not
persuasive. Accordingly, we affirm Rejection III to claims 20 and 22-26.
CONCLUSION
We AFFIRM the rejection of claims 1-3, 5, and 7-11 under
35 U.S.C. § 102(b) as anticipated by Johnson as evidenced by Martin.
We AFFIRM the rejection of claims 6 and 12-16 under 35 U.S.C.
§ 103(a) as obvious over Johnson as evidenced by Martin.
We AFFIRM the rejection of claims 17-26 under 35 U.S.C. § 103(a)
as obvious over Johnson in view of Kugitani as evidenced by iviartin.
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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