Ex Parte Rapp et al

Board of Patent Appeals and Interferences

Aug 17, 2009

10615249 (B.P.A.I. Aug. 17, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte EDWARD L. RAPP, JAMIE TROY, JEANNETTE DIDO,
DOUGLAS MANN, THOMAS COLLINS, KEVIN RABINOVITCH,
RALPH LEE, NEIL WILLCOCKS, ROBERT BOUSHELL, RALPH
JEROME, TIAGO O. RODRIGUES, JOHN M. KAISER, and
IVONNE E. NILL
____________

Appeal 2009-002865
Application 10/615,249
Technology Center 1700
____________

Decided: August 17, 2009
____________

Before CHARLES F. WARREN, CATHERINE Q. TIMM, and,
JEFFREY T. SMITH,, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002865
Application 10/615,249

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1-4, 6-8, and 10-24.1 (App. Br. 1). We have jurisdiction
pursuant to 35 U.S.C. § 6(b).2, 3
We REVERSE.
THE INVENTION
Appellants’ claimed invention is directed to a food product
categorized as an energy bar. Claim 1, reproduced below, is representative
of the subject matter on appeal. 4
1. An energy bar having a mean hedonic score for consumer
acceptability of at least about 5.2,
wherein said energy bar has
about 15 to about 45 g of carbohydrates,
about 1 to about 4.5 g of fortification components,
about 8 to about 40 g of protein,
about 3 to about 8 g of fat,
about 150 to about 300 calories, and
a moisture content of less than about 15% by weight, based on a
55 g serving size,
wherein said carbohydrates are selected from the group consisting
of starch, sugar, gels, syrups, honey, molasses, and
combinations thereof,
said fortification components are selected from the group
consisting of vitamins, minerals, and combinations thereof,
said protein is selected from the group consisting of whey protein,
milk protein, egg protein, casein, peanut flour, nut meats,
vegetable protein, and combinations thereof, and

1 Claims 5 and 9 have been canceled. (App. Br. 1).
2 In this decision we have considered Appellants arguments presented in the
Briefs, filed December 21, 2007 and April 28, 2008.
3 An oral hearing for this appeal was held on June 23, 2009.
4 For purposes of clarity, the format of the claim has been modified from the
appearance in the Appeal Brief.
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said fat is selected from the group consisting of chocolate, peanut
butter, fat substitutes, vegetable fats, tropical fats, animal fats
and combinations thereof.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kelly 4,055,669 Oct. 25, 1977
Froseth 6,592,915 B1 Jul. 15, 2003
Avera 3,615,590 Oct. 26, 1971

Appellants appeal the following rejections:
Claims 1-4, 6-8, and 10-24 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.
Claims 1-4, 6-8, and 10-22 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kelly, Froseth and Rombauer. 5
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Kelly, Froseth Rombauer and Avera.
The 35 U.S.C. § 112, 1st Paragraph, Rejection
The dispositive issue before us is: have Appellants shown the
Examiner reversibly erred in concluding that the Specification does not
provide sufficient enabling description of the claim feature, “fortification
components are selected from the group consisting of vitamins, minerals” as
required by 35 U.S.C. § 112, first paragraph? We answer this question in
the affirmative.

5 The Examiner has indicated that claims 11 and 12 are now included in this
rejection. (Ans. 10). Appellants requested that the appeal be maintained.
(Reply Brief cover page).
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Application 10/615,249

The Examiner concluded the feature, “about 1 to about 4.5 g of
fortification components, does not reasonably provide enablement for 1 to
about 4.5 g of vitamins and minerals” as recited in claim 1. (Ans. 3).
Appellants contend the Specification provides sufficient description to
enable all features of the claim (App. Br. 10).
We agree with the Appellants, the Specification, paragraph [0016],
expressly exemplifies vitamins and minerals as fortification components.
The Specification discloses the amount of fortification components in the
energy bar to be about 1 g to about 4.5g. (Spec. [0042]). The decision of
the Examiner is reversed.

The 35 U.S.C. § 103(a) Rejections
ISSUE
The dispositive issue before us is whether the Examiner has reversibly
erred in not considering the rebuttal evidence along with the facts on which
the conclusion of prima facie obviousness was reached. We answer this
question in the affirmative. Therefore, we REVERSE.
“After a prima facie case of obviousness has been made and rebuttal
evidence submitted, all the evidence must be considered anew.” In re Eli
Lilly & Co., 902 F.2d 943, 945 (Fed. Cir. 1990)) (citing In re Piasecki 745
F.2d 1468, 1472 (Fed. Cir. 1984), (quoting In re Rinehart, 531 F.2d 1048,
1052 (CCPA 1976)); Piasecki, 745 F.2d at 1472 (“‘Prima facie obviousness
is a legal conclusion, not a fact. Facts established by rebuttal evidence must
be evaluated along with facts on which the earlier conclusion was reached,
not against the conclusion itself.’”) (quoting Rinehart, 531 F.2d at 1052);
accord In re Piasecki, 745 F.2d at 1472-73 (quoting Rinehart, 531 F.2d at
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1052) (“appellants submitted extensive evidence of peer recognition, long-
felt need, and commercial interest”; see also MPEP § 716.01(d).
In support of the nonobviousness position, Appellants proffer two
Declarations (I and II) under 37 C.F.R. § 1.132 by Edward L. Rapp, both
signed on May 8, 2006 (Appendix C and D of the Brief).
According to Appellants, the Rath Declaration I (Appendix C)
provides expert opinion regarding the cited references and the Rath
Declaration II (Appendix D) demonstrates evidence of long-felt need, and
commercial success. (App. Br. 19-20, 23-24 and 28-29; Reply Br. 21-26).
While it appears (Ans. 11-14) that the Examiner has considered the
merits of the Rath Declaration I, the same cannot be said for the Rath
Declaration II. Regarding Rath Declaration II the Examiner states:
Appellants argue that the claims are not obvious in light
of objective indicia such as long felt need, etc. However, the
claimed composition and process has been shown and would
have been obvious to make such a product as shown above.
(Ans. 16)

The Examiner's response to Rath Declaration II is largely dismissive.
In fact, even though Appellants’ Briefs place extensive reliance on the
Declaration evidence to overcome the prima facie case, the Examiner's
Answer never addresses it. This is improper. Whether the claimed
invention would have been obvious cannot be determined without
considering evidence attempting to rebut the prima facie case. In re
Sullivan, 498 F.3d 1345, 1353 (Fed. Cir. 2007)(“The claimed composition
cannot be held to have been obvious if competent evidence rebuts the prima
facie case of obviousness. By failing to consider the submitted evidence, the
Board thus committed error.”). Since the Examiner did not consider the
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submitted evidence, the rejection cannot be sustained. The decision of the
Examiner is reversed.
For the foregoing reasons, the rejections of claims 1-4, 6-8, and 10-24
under 35 U.S.C. § 103(a) are reversed.
ORDER
The Examiner's decision rejecting claims 1-4, 6-8, and 10-24 is
reversed.
REVERSED

tc

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