Ex Parte Philbin

Patent Trial and Appeal Board

Apr 29, 2016

12543464 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/543,464 08/18/2009
77093 7590 05/03/2016
Bishop Diehl & Lee, Ltd.
1475 East Woodfield Road, Suite 800
Schaumburg, IL 60173
FIRST NAMED INVENTOR
John J. Philbin
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.
001023 P0003 7385
EXAMINER
SMITH, PRESTON
ART UNIT PAPER NUMBER
1792
NOTIFICATION DATE DELIVERY MODE
05/03/2016 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):
cmarcello@bishoppatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. PHILBIN
Appeal2014-009170
Application 12/543,464
Technology Center 1700
Before CHUNG K. PAK, JEFFREY T. SMITH, and
WESLEY B. DERRICK, Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a rejection of claims
1through9 and 11through15. We have jurisdiction under 35 U.S.C.
§ 6(b).
STATEMENT OF THE CASE
Appellant's invention is generally directed to a consumable food
product that enables a consumable liquid to be orally drawn into the food
product and absorbed. App. Br. 2. Claim 1 illustrates the subject matter on
appeal and is reproduced below:
1. A consumable food product adapted to enable a
consumable liquid to be orally drawn into the food product and
absorbed, comprising:
Appeal2014-009170
Application 12/543,464
(a) a tubular consumable structural means for providing
fluid communication between two spaced-apart points on a
surface of the food product and for absorbing a consumable
liquid that is drawn into the consumable structural means
through one of the spaced-apart points when a partial vacuum is
orally applied to the other of the spaced-apart points, and
wherein the consumable structural means has a longitudinal
axis and is elliptical or circular in vertical cross-section to
define a tubular passage about the longitudinal axis;
(b) coating means that is consumable, for substantially
sealing the surface of the consumable structural means, to
substantially prevent free entry of air therein, except where the
spaced-apart points are disposed;
( c) a porous filling extending from, on and along the
longitudinal axis and wherein the porous filling adjoins and is
surrounded by the consumable structural means to obstruct the
tubular passage; and
( d) wherein the obstruction within the tubular passage is
removable by application of the vacuum and absorption by the
filling of the consumable liquid drawn into the passage by the
vacuum.
App. Br. 15 Claims Appendix.
Appellant (see App. Br., generally) requests review of the Examiner's
rejection in the Office Action mailed October 28, 2013, of claims 1-9 and
11-15 under 35 U.S.C. § 103(a) as unpatentable over Rodman et al. (US
200610029696 Al, published Feb. 9, 2006). 1
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner's rejection of claims 1- 9 and 11-15
1 Appellant argues claims 1-9 and 11-15 together. See Appeal Brief,
generally. Therefore, we select claim 1 as representative of these claims,
which will stand or fall with claim 1.
2
Appeal2014-009170
Application 12/543,464
under 35 U.S.C. § 103(a) as unpatentable over Rodman. We add the
following for emphasis.
To prevail in an appeal to this Board, an Appellant must adequately
explain or identify reversible error in the Examiner's§ 103(a) rejection. See
37 C.F.R. § 41.37(c)(l)(iv) (2012); see also In re Jung, 637 F.3d 1356,
13 65---66 (Fed. Cir. 2011) (explaining that even if the examiner had failed to
make a prima facie case, it has long been the Board's practice to require an
appellant to identify the alleged error in the examiner's rejection.)
The Examiner finds that Rodman discloses a consumable food
product comprising an interior, porous material, and Appellant does not
contend that this material differs from the porous filling material recited in
claim 1. Compare Office Act. 3 with App. Br. 8-13. The Examiner finds
that Rodman discloses that a consumable coating is applied to an outer
surface of the interior material, which substantially seals the interior material
to prevent free entry of air, and Appeiiant aiso does not contend that this
coating differs from the coating recited in claim 1. Compare Office Act. 3
with App. Br. 8-13. Rodman discloses that the coating can be any
substantially non-porous edible food component, and indicates that more
than one coating can be applied to the food product. Rodman i-fi-139, 41. In
such an arrangement where more than one coating is applied, one of the
coating layers could correspond to the consumable structural means recited
in claim 1, and Appellant does not contend that Rodman fails to disclose a
consumable structural means as recited in claim 1. App. Br. 8-13.
Appellant does not dispute the Examiner's finding that Rodman
discloses that a consumable liquid can be drawn into the food product and
absorbed through fluid communication provided between two spaced-apart
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Appeal2014-009170
Application 12/543,464
points on surfaces of the food product that are free of the coating(s) when a
reduced pressure (partial vacuum) is orally applied to one of the spaced-
apart points, and the other spaced-apart point is immersed in a consumable
liquid. Compare Office Act. 3 with App. Br. 8-13; Rodman iii! 8, 35, claim
1. Nor does Appellant dispute the Examiner's finding that Rodman
illustrates such a consumable food product that is tubular in shape, has a
longitudinal axis, and is circular in vertical cross-section to define a tubular
passage about the longitudinal axis. Compare Office Act. 3 with App. Br.
8-13; Rodman Figs. 1, 2, 3A.
Appellant argues that Rodman does not disclose a food product
having an interior, porous material that extends from, on, and along a
longitudinal axis of a tubular passage to obstruct the passage. Appellant
contends that open and unobstructed pathways exist through the interior
material of each relevant embodiment disclosed in Rodman. App. Br. 9-12.
SpecificaUy, AppeUant argues that the embodiment iiiustrated in Figure 1 of
Rodman has an open, central channel; the embodiment illustrated in Figure
3 B contains open, interstitial spaces; and the embodiment illustrated in
Figure 3C contains open, tubular passages in a core. App. Br. 10-12.
Appellant argues that the open passageways in each of these embodiments
do not obstruct the passage and flow of liquid along a longitudinal axis, as
required by claim 1. Id. However, Appellant's arguments are contrary to
Rodman' s disclosure that if sufficiently porous internal material is used in
the food product, the internal channel can be omitted. Rodman if 43. In
such an arrangement, the internal channel depicted in Figure 2 of Rodman
would therefore not be present, and the porous, internal material illustrated
in the figure would extend from, on and along the longitudinal axis of the
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Appeal2014-009170
Application 12/543,464
depicted tubular passage to obstruct the passage. Accordingly, contrary to
Appellant's arguments, open and unobstructed pathways do not exist
through the internal material of each and every embodiment disclosed in
Rodman, and Appellant's arguments are therefore unpersuasive of reversible
error.
Appellant apparently attempts to further distinguish the consumable
food product recited in claim 1 from Rodman's product by asserting that
paragraph 35 of Appellant's Specification makes clear that the intended
function of the food product is not to serve as a straw. App. Br. 10.
However, this assertion is contrary to the express language of claim 1, which
requires liquid to be drawn into the food product through one spaced-apart
point when a partial vacuum is orally applied to the other spaced-apart point.
Therefore, we are unpersuaded of reversible error in the Examiner's
rejection of claims 1-9 and 11-15 under 35 U.S.C. § 103(a) as obvious over
Rodman, and we accordingiy sustain this rejection.
ORDER
For the reasons set forth above and in the Answer, the decision of the
Examiner is affirmed.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED
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