Ex Parte Oakley

Patent Trial and Appeal Board

Aug 23, 2018

14622369 (P.T.A.B. Aug. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/622,369 02/13/2015
758 7590 08/27/2018
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Dewayne Oakley
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.
B9484-28690/US 4365
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
08/27/2018 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEWAYNE OAKLEY
Appeal2017-010945
Application 14/622,369
Technology Center 1700
Before LINDA M. GAUDETTE, JENNIFER R. GUPTA, and LILAN REN,
Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-010945
Application 14/622,369
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection2 of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
CLAIMED SUBJECT MATTER
The claims are directed to a cheese curd cutting method. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of cutting a cheese curd mass within a
cylindrical vat, the method comprising:
placing a cutting apparatus inside the vat before the
cheese curd mass has begun to form;
once the cheese curd mass has formed, horizontally
rotating a first knife assembly of the cutting apparatus around a
vertical axis, thereby cutting the cheese curd mass into a plurality
of horizontal slices; and
thereafter, vertically removing from the vat a second knife
assembly of the cutting apparatus, the second knife assembly
having knives along at least two distinct orientations of the
cutting apparatus, thereby cutting the horizontal slices along said
orientations.
App. Br. 17 (Claims Appendix (emphasis added)).
1 The real party in interest is identified as Dewayne Oakley. Appeal Brief of
April 5, 2017 ("App. Br."), 3.
2 Final Office Action of January 19, 2017 ("Final Act."). In this opinion, we
also refer to the Examiner's Answer of June 30, 2017 ("Ans.") and the Reply
Brief of August 18, 2017 ("Reply Br.").
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Appeal2017-010945
Application 14/622,369
REFERENCES
The prior art references relied upon by the Examiner in rejecting the
claims on appeal are:
Fischer
Rhodes
Sipma
us 3,836,688
US 6,780,445 Bl
US 2004/0168582 Al
REJECTIONS
Sept. 17, 1974
Aug.24,2004
Sept. 2, 2004
The Examiner rejects claims 1-20 under 35 U.S.C. § 112(a) or
35 U.S.C. 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 2.
The Examiner rejects claims 1-20 under 35 U.S.C. § I03(a) (pre-
AIA) as unpatentable over Fischer, Sipma, and Rhodes. Final Act. 3.
OPINION
Written Description
The Examiner finds that the limitation "placing a cutting apparatus
inside the vat before the cheese curd mass has begun to form" lacks written
description support. Final Act. 2. The Examiner, however, acknowledges
that the Specification has support for "'before the cheese curd mass has
formed' which includes before cheese curd mass has begun to form up until
the mass is completely formed[.]" Id. The Examiner reasons that the claim
lacks written description support because the Specification is broader in
scope than the claim. Id. To comply with the written description
requirement, "the specification must describe an invention understandable to
th[ e] skilled artisan and show that the inventor actually invented the
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Appeal2017-010945
Application 14/622,369
invention claimed." Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1351 (Fed. Cir. 2010) (en bane). The Examiner's acknowledgement that
operating a cutting apparatus "by placing it in the curd vat before the curd
mass has formed" (Spec. ,r 35) "includes before cheese curd mass has begun
to form up until the mass is completely formed" (Final Act. 2) does not
support the written description rejection. The Examiner's discussion in the
Answer regarding the addition of milk "prior to the curd mass being
complete" (Ans. 7) lacks citation to the evidentiary record and does not
sufficiently explain why this line of reasoning supports the written
description rejection-particularly in light of the fact that the claim does not
recite the addition of milk.
Obviousness
In rejecting claim 1, the Examiner acknowledges that Fischer "fails to
teach placing the cutting apparatus inside of the vat before the cheese curd
mass has begun to form" and relies on Rhodes for this limitation. Final
Act. 4. The Examiner's finding that "Rhodes was supplied to teach
supplying milk which is not coagulated ... into a vat" (Ans. 6) does not
address the claim limitation of "placing a cutting apparatus inside the vat"
and does not explain why Rhodes "teaches the concept of placing a cutting
portion in a vat." Final Act. 4; see Reply Br. 2 (arguing that the Examiner's
findings are irrelevant to the claim limitation at issue). The Examiner does
not dispute that Rhodes describes cutting the curds in shredder 182 after
exiting from vat 152. Compare App. Br. 10, with Ans. 6. The record before
us therefore does not support the Examiner's finding that each and every
limitation of claim 1 is taught or suggested by the prior art.
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Appeal2017-010945
Application 14/622,369
DECISION
The Examiner's rejection of claims 1-20 as failing to comply with the
written description requirement is reversed.
The Examiner's obviousness rejection of claims 1-20 is reversed.
REVERSED
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