Ex Parte No Data

Board of Patent Appeals and Interferences

Aug 23, 2004

90004933 (B.P.A.I. Aug. 23, 2004)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JANET SCHWARTZ
____________

Appeal 2003-2019
Reexamination 90/004,933
Technology Center 1700
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Decided: August 28, 2006
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Before OWENS, KRATZ, and TIMM, Administrative Patent Judges.
TIMM, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
On July 12, 2006, Appellant filed a Request for Rehearing of our
Decision of May 28, 2004. Because an Amendment to the claims
accompanied Appellant’s Request (Amendment of July 12, 2004), we
remanded the Reexamination Proceeding to the Examiner for purposes of
determining whether entry of the Amendment was appropriate and further
action if necessary (Remand of August 23, 2004). Appellant then withdrew
the Amendment and a Second Amendment in favor of a Third Amendment
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Application 90/004,933

(see Second Amendment of January 10, 2005 and Third Amendment of
January 28, 20051). The Examiner entered the Third Amendment and
determined that this Third Amendment overcame the new ground of
rejection under 35 U.S.C. § 305 (Office Communication of March 4, 2005)
we applied in the Decision. The Examiner also determined that the Third
Amendment did not affect the rejections under 35 U.S.C. § 103 (Id.).
Therefore, the Request for Rehearing is now ready for our review.
In our Decision of May 28, 2004, we sustained the rejection of claims
24, 25, and 30-33 under 35 U.S.C. § 103(a) over Shine in view of Perrin,
Product Alert, and McGrath, but did not sustain the rejection under 35
U.S.C. § 103(a) over Perrin in view of Keller, Product Alert, and McGrath.2
We denominated our affirmance as involving a new ground of rejection
under 37 CFR § 1.196(b).3 As noted above, we also made a new ground of
rejection under 35 U.S.C. § 305. Because the rejection over Perrin in view
of Keller, Product Alert, and McGrath was not sustained, and the Examiner
determined that the rejection under 35 U.S.C. § 305 was overcome by
amendment; the only remaining rejection at issue is the Section 103(a)
rejection over Shine in view of Perrin, Product Alert, and McGrath.
As an initial matter, we note that Appellant does not present any
arguments disputing our interpretation of the “substantially enclosing”

1 The electronic file wrapper lists dates of January 13, 2005 and January 31,
2005 for these documents, however, the certificate of mailing indicates that
the documents were filed on January 10 and 28, respectively.

2 Claim 1, while pending and rejected, is not subject to appeal (Brief of
December 5, 2001, p. 2).

3 37 C.F.R. § 1.196(b) has since been replaced with 37 C.F.R. § 41.50(b)(eff.
September 13, 2004).
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language of claim 24 as discussed on pages 7-12 of the Decision. Instead,
Appellant focuses mainly on our determination of the issues with respect to
claim 31, the claim representing the product claims on appeal.
Appellant first takes issue with our reasoning presented on pages 13-
18 of the Decision. This portion of the Decision focused on what Shine
describes to one of ordinary skill in the art with regard to pretzels “filled
with … filling.” Stepping into the shoes of one of ordinary skill in the art,
we found that one of ordinary skill in the art would have understood Shine
as describing a filled soft pretzel in which the filling was completely
enclosed in the dough, as required by claim 31, based on disclosures within
Shine and the prior art as a whole.
Appellant has not convinced us that we made a reversible error in
this portion of our Decision. According to Appellant, “[t]he heart of the
Shine patent is its use of the words 'filled' and 'fillings.'” (Request 2).
Appellant notes, “the Examiner has acknowledged that the words ‘filled’ and
‘fillings’ do not always mean that there is substantial or complete
enclosure.” (Id.). According to Appellant, “it is more likely that the Shine
“fillings” are exposed and open to the air.” (Id.). Appellant further argues
that the definition of “filled” and “fillings” contradicts a reading of Shine as
requiring “complete enclosing,” i.e. enclosing the filling sufficiently to
prevent intrusion of caustic upon caustic dipping (Id). Appellant offers two
alternative explanations of Shine (Id.), and also argues that the only way to
test water activity of the filling is if the filling were exposed to air.
Therefore, because Shine measures water activity, there is no substantial or
complete enclosure (Request 2-3).
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Appellant’s arguments are not persuasive because, the fact that
“filled” or “filling” was sometimes used in the food art to refer to non-
enclosed fillings does not shed much light on how “filled … with filling”
was used in Shine or how that terminology would have been understood by
one of ordinary skill in the art reading Shine. This is because the
terminology was also used in the food art to refer to completely enclosed
fillings. The question is: Which usage would one of ordinary skill in the art
understand Shine as using? The evidence as a whole supports our finding
that those of ordinary skill in the art would understand Shine as referring to
completely enclosed fillings within the soft pretzel dough because Shine
describes dipping in a caustic solution (Example II prepared substantially as
in Example I), and because those of ordinary skill in the art understood that
exposure of the filling to the caustic solution would cause the product to
become inedible. Appellant’s own Background of the Invention indicates as
much (Patent Specification, col. 1, ll. 51-66 describing the prior art).
Appellant argues that the only reasonable explanation of Shine is that
either: (1) there is no caustic dip where the filling is exposed, or (2) the
caustic dip is performed by carefully making a partial exposure of the dough
to the caustic without permitting the caustic to contact the filling. Appellant
cites to no part of the disclosure of Shine that supports these alternative
explanations. Example II of Shine, in fact, is contrary to such an
interpretation. Example II describes the preparation of a cheese-filled soft
pretzel. Example II incorporates the caustic dipping step of Example I
(Shine, col. 6, ll. 56-59). The caustic dipping step is described as dipping in
a 0.2 M aqueous NaOH for 0.25 min, i.e., 15 seconds (Shine, Example I, col.
6, ll. 40-42). To form the filled pretzel of Example II, no special
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adjustments are made to the caustic dipping step. Example II simply
indicates that the soft pretzel is prepared in a manner similar to that of
Example I, except that no shortening was added and it was filled with
thermostable cheese filling. Contrary to Appellant’s explanation of Shine,
Shine describes caustic dipping a filled soft pretzel for 15 seconds. It is self-
evident that 15 seconds would be long enough for the caustic solution to
encroach upon filling and make the pretzel inedible if the filling were not
completely enclosed in the dough.
Nor can we agree with Appellant that the measurement of water
activity in Shine is proof that the filling of Shine is not substantially or
completely enclosed by the dough (Request 2-3). Measuring the water
activity is a simple matter of cutting open the filled pretzel after baking.
Appellant has not convinced us that our interpretation of Shine is
unreasonable in light of the evidence as a whole.
Appellant next takes issue with our reasoning presented on pages 18-
22 of the Decision. Appellant continues to argue that the “Stuffin’ Pretzels”
product disclosed in Perrin and Product Alert is not a soft pretzel.4 These
arguments were sufficiently addressed in the Decision (Decision 21-22). As
we indicated in the Decision, Shine alone is evidence that the subject matter
of claim 31 was in the possession of those of ordinary skill in the art at the
time of the invention. While Perrin and Product Alert provide further
evidence of obviousness, these references are not critical to the rejection.
Appellant argues that our statement on the top of page 21 of the
Decision that Perrin and Product Alert are not essential to the rejection

4 Appellant states that McGrath is also directed to the “Stuffin Pretzels”
product, it is not. McGrath, therefore, is not included in our discussion of
this issue.
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“impermissibly reforms the final rejection and has not been termed a new
ground of rejection.” (Request 4). On the contrary, we did denominate the
rejection as a new ground of rejection (Decision, p. 6, ¶ 1 and p. 31, ¶ 3).
The rejection was not “impermissibly reformed.” Appellant was given an
opportunity to respond to the new reasoning. See 37 C.F.R.
§ 1.196(b)(2003), the rule in effect at the time.
Appellant further argues that we erred on page 21 in holding that
Perrin and Product Alert are analogous prior art (Request 5). According to
Appellant, “[t]his does violence to the understanding of one skilled in the art
that soft pretzel dough requires a caustic dip and yeast.” (Id.).
This argument is not persuasive. To label the references as analogous
prior art merely connotes that they are relevant to a consideration of
obviousness under section 103 as “prior art.” In re Sovish, 769 F.2d 738,
742, 226 USPQ 771, 773 (Fed. Cir. 1985). The “Stuffin Pretzels” product is
not too remote to be considered prior art as this product is a filled baked
good just as the filled soft pretzel of Shine is a filled baked good and those
of ordinary skill in the art would recognize that problems with the filling and
baking aspects are as relevant to one as they are relevant to the other.
Appellant argues that the Declarations confirm that a soft pretzel
dough requires a caustic dip and not the egg wash of the Stuffin Pretzel and
one would expect that soft pretzel dough would contain yeast (Request 4).
We weighed the evidence and opinions produced in the Declarations, along
with the evidence as a whole, and discussed the probative nature of that
evidence at length (Decision 22-25). Appellant has not convinced us of a
reversible error in our weighing of the evidence. Further, whether or not the
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evidence supports the propositions of Appellant with regard to Perrin and
Product Alert, Shine alone provides evidence of unpatentability.
Appellant further argues that our “failure to find a nexus between the
merits of Requestor-Patentee's invention and evidence of secondary
considerations is submitted to be clear error.”5 (Request 5-6). According to
Appellant, we failed to take into account recent precedent (Id). But the cases
cited by Appellant are all appeals from district court proceedings, the burden
during civil court proceedings is different than the burden we are to meet.
As explained in In re Huang, 100 F.3d 135, 139-40, 40 U.S.P.Q.2d 1685,
1689 (Fed. Cir. 1996):
In deciding whether or not a claimed invention is
obvious, we have instructed the Patent and Trademark Office
(PTO) that it must consider objective evidence of
nonobviousness - e.g. commercial success. In re Sernaker,
702 F.2d 989, 996, 217 USPQ 1, 7 (Fed.Cir.1983). In the
ex parte process of examining a patent application, however,
the PTO lacks the means or resources to gather evidence which
supports or refutes the applicant's assertion that the sales
constitute commercial success. Cf. Ex parte Remark,
15 USPQ2d 1498, 1503 (Bd. Pat. App. & Int. 1990)
(evidentiary routine of shifting burdens in civil proceedings
inappropriate in ex parte prosecution proceedings because
examiner has no available means for adducing evidence).
Consequently, the PTO must rely upon the applicant to provide
hard evidence of commercial success.

5 Note that factual findings by the Board are reviewed for substantial
evidence not clear error. Dickinson v. Zurko, 527 U.S. 150 (1999); In re
Gartside, 203 F.3d 1305, 1315, 53 USPQ2d 1769, 1775 (Fed.Cir.2000).
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Appellant has not persuaded us of any reversible error with regard to our
nexus determination nor any other portion of our determination with respect
to commercial success.
The subject request has been granted to the extent that our decision
has been reconsidered, but is denied with respect to making any changes
therein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv)(2004).
DENIED

clm
Alan H. Bernstein
Caesar, Revise, Bernstein, Cohen & Pokotilow, Ltd.
1635 Market Street
12th Floor
Philadelphia, PA 19103
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