Ex Parte Resch et al

Patent Trial and Appeal Board

Jun 18, 2018

14575538 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/575,538 12/18/2014
106306 7590 06/20/2018
DIEDERIKS &WHITELAW, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
Jeffrey J. Resch
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.
8008US01 9091
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
mail@dwpatentlaw.com
gmi.mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY J. RESCH and LAURA ZIMMERER
Appeal2017-010170
Application 14/575,538
Technology Center 1700
Before TERRY J. OWENS, KAREN M. HASTINGS, and
MICHAEL G. McMANUS, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 requests our review under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1-28 under 35 U.S.C. § 103(a)
over at least Dally et al. (US 6,299,916 Bl; issued Oct. 9, 2001) ("Dally")2;
and the rejection of claim 12 under 35 U.S.C. § 102(a)(l) as being
1 Appellant is the Applicant, General Mills, Inc., which is also stated to be
the real party in interest (Appeal Br. 4).
2 The Examiner additionally applies Rapaport to dependent claim 3 (Final
Action 4). Appellant states: "Claim 3 will not be argued separately but will
stand or fall with claim l." (Appeal Br. 19).
Appeal2017-010170
Application 14/575,538
anticipated by Zimeri et al. (US Pub. No. 2004/0126464 Al; pub. July 1,
2 004) ("Zimeri").
We have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
Independent claims 1 and 12 are illustrative (emphasis added to
highlight key disputed limitations):
1. A snack bar comprising:
a base establishing a crust; and
a cheesecake filling made with real cream cheese
provided on the crust, said cheesecake filling having a water
activity of less than .6, wherein said snack product has an
extensive shelf stable life, without refrigeration.
12. A cheesecake filling made with real cream cheese and
having both a water activity of less than . 6 and an extensive
shelf stable life, without refrigeration.
ANALYSIS
The§ 102 of claim 12
We have reviewed each of Appellant's arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's finding that the claimed subject matter of claim 12 is anticipated
within the meaning of§ 102 in view of the applied prior art of Zimeri.
Accordingly, we will sustain the Examiner's § 102 rejection for essentially
those reasons expressed in the Answer, including the Examiner's Response
to Argument section, and we add the following primarily for emphasis.
"[T]he PTO must give claims their broadest reasonable construction
consistent with the specification. . . . Therefore, we look to the specification
to see if it provides a definition for claim terms, but otherwise apply a broad
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interpretation." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). "[A]s applicants may amend claims to narrow their scope,
a broad construction during prosecution creates no unfairness to the
applicant or patentee." ICON Health, 496 F.3d at 1379.
The main limitation in dispute is whether the "real cream cheese" of
claim 12 encompasses the dried cream cheese powder of Zimeri (App. Br. 6,
7; Ans. 6, 7).
The Examiner explains that powdered cream cheese is real cream
cheese, albeit in a powder form (Ans. 7). Appellant contends that since the
Specification "draws a distinction between real cream cheese and cream
cheese powder," real cream cheese as recited in the claim does not
encompass the powder form (Reply Br. 4; Appeal Br. 6 (relying on Spec. ,r
10) ). This argument is not persuasive of reversible error. Appellant's
paragraph 10 does not rise to the level of a disclaimer ( that is, that real
cream cheese does not encompass a powdered form of real cream cheese);
rather, paragraph 10 distinguishes between "firm and non-flowable" real
cream cheese and cream cheese powder (Spec. ,r 10). Appellant's
Specification contains no limiting or special definition of "real cream
cheese." Notably, as pointed out by the Examiner, claim 12 is not limited to
a firm and non-flowable cream cheese; this form of cream cheese is only
recited in dependent claim 13 (Ans. 3). Appellant has not directed our
attention to any persuasive reasoning or credible evidence to establish that
the Examiner's interpretation that real cream cheese encompasses a
powdered form is unreasonable.
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Thus, a preponderance of the evidence supports the Examiner's
position that real cream cheese may encompass Zimeri' s powdered form of
cream cheese.
Contrary to Appellant's assertion that the Examiner has not properly
established that the claimed property of extensive shelf life is met in Zimeri,
a preponderance of the evidence supports the Examiner's finding that
Zimeri's disclosure of water activity of .39 properly establishes a prima facie
case of inherency with respect to the claimed property of "extensive shelf
stable life" (Ans. 2, 7, 8). The Examiner points out that Appellant's
Specification states that "[ t ]he extensive shelf life is achieved by
establishing a low water activity of .6 or less") (Spec. ,r 4; Ans. 7). The
burden has properly shifted to Appellant to show that Zimeri' s product
would not have an extensive shelf life as claimed. See In re Spada, 911 F .2d
705, 708 (Fed. Cir. 1990); In re Best, 562 F.2d 1252, 1254--56 (CCPA 1977)
( when the Examiner establishes a reasonable basis that the product claimed
by the Applicant and disclosed in the prior art appear to be the same or
substantially similar, the burden is properly shifted to the Applicant to show
that they are not).
Accordingly, we affirm the Examiner's anticipation rejection of claim
12.
The§ 103 Rejection
We have reviewed each of Appellant's arguments for patentability.
However, we determine that a preponderance of the evidence supports the
Examiner's determination that the claimed subject matter is unpatentable
within the meaning of§ 103 in view of the applied prior art. Accordingly,
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we will sustain the Examiner's§ 103 rejections, for essentially those reasons
expressed in the Answer, including the Examiner's Response to Argument
section, and we add the following primarily for emphasis.
Appellant's argument that Dally does not disclose a water activity
below 0.6 and there is no reason to further decrease it from the levels taught
therein is not persuasive for reasons explained by the Examiner (Ans. 8-9).
This argument is not persuasive of error in the Examiner's rejection. The
cheesecake filling and bar of Dally appear to be substantially identical to
those as claimed and disclosed (Ans. 3, 4). Furthermore, Appellant has not
pointed out any error in the Examiner's determination that the extensive
shelf life is a function of the water activity.
It has been held that when the Examiner establishes a reasonable basis
that the products ( or processes) claimed by the Applicant and disclosed in
the prior art appear to be the same or substantially similar, the burden is
properly shifted to the Applicant to show that they are not. See Spada, 911
F.2d at 708; Best, 562 F.2d at 1254--56; cf In re Crish, 393 F.3d 1253, 1259
(Fed. Cir. 2004); see also In Re Dillion, 919 F.2d 688 (Fed. Cir. 1990) (a
prima facie case of obviousness does not require both structural similarity
and a suggestion in or expectation from the prior art that the claimed
compound will have the same or a similar usefulness as the Applicant's
newly discovered compound; exactly what amounts to a prima facie case
varies from case to case.)
Here, the Examiner's determination, that the product of Dally
encompasses a product that appears to be substantially similar to those as
claimed and disclosed (since, for example, 0.5999 is below 0.6, the disclosed
lower endpoint of Dally for water activity), is reasonable (e.g., Ans. 9-11;
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Dally, claim 1). In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (it has
been "consistently held that even a slight overlap in range establishes a
prima facie case of obviousness" and that a prima facie case of obviousness
exists when the claimed range and the prior art range do not overlap but are
close enough such that one skilled in the art would have expected them to
have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,
783 (Fed. Cir. 1985)). Appellant has not provided any persuasive reasoning
or credible evidence to refute the Examiner's determination that the
predictable use of a cheesecake filling (with or without the bar) having a
water activity of 0.6 of Daly would have resulted in the claimed shelf stable
product. Attorney's arguments in a brief cannot take the place of evidence.
In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
It has been established that "the [obviousness] analysis need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int 'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007); see also In re Fritch, 972 F.2d 1260, 1264--
65 (Fed. Cir. 1992) (a reference stands for all of the specific teachings
thereof as well as the inferences one of ordinary skill in the art would have
reasonably been expected to draw therefrom).
Appellant also fails to identify any reversible error in the Examiner's
determination that it would have been obvious to adjust the glycerin levels
"to bind further moisture and thus help obtain a desired water activity value"
below 0.60, to 0.59 for example (Dally, col. 2, 11. 62---65; Ans. 9, 10). In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (a
"recognition in the prior art that a property is affected by the variable is
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sufficient to find the variable result-effective.") Moreover, it is well settled
that it would have been obvious for an artisan with ordinary skill to develop
workable or even optimum ranges for result-effective parameters. In re
Boesch, 617 F.2d 272,276 (CCPA 1980); In re Woodruff, 919 F.2d 1575,
1578 (Fed. Cir. 1990) (where the difference between the claimed invention
and the prior art is some range, the Applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results).
Appellant's arguments, thus, do not point out reversible error in the
Examiner's rejection of independent claims 1, 12, and 20 (as well as not
separately argued dependent claims) and a preponderance of the evidence
supports the Examiner's obviousness determination.
With respect to dependent claims 8, 17, and 26 (which require the
inclusion of a "leavening system" or "leavener"), Appellant argues that egg
white is not a leavening agent (Reply Br. 2, responding to the Examiner's
new ground of rejection (in the Answer) relying upon the egg white
entrapment of air in Dally as a leavening system). On the contrary, the
entrapment of air via beating egg whites is a well-known leavening system 3.
Thus, Appellant has not shown reversible error in the rejection of these
claims.
With respect to dependent claims 9, 18, and 22, which all recite that
the cheesecake filling lacks a preservative, Appellant has not shown
3 See, e.g., https://www.britannica.com/topic/leavening-agent which states:
"Leavening of baked foods with air is achieved by vigorous mixing that
incorporates air bubbles, producing foam. Egg white is well suited to this
purpose because it produces voluminous and strong foams that retain their
expanded structure when dried by the baking process."
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reversible error in the Examiner's determination that Dally describes that the
use of preservatives is optional (Ans. 12). We also note these claims do not
preclude a preservative in the base portion of the snack bar.
With respect to dependent claims 10, 19, and 27, which all require a
source of fiber and either 5 grams of fiber ( claim 10) or 6.4--22.4% by
weight of fiber (claims 19 and 27), Appellant has not shown reversible error
in the Examiner's determination that Dally includes a source of fiber and
adjusting the amount to any appropriate fiber level would have been obvious
(Ans. 11, 12). One of ordinary skill in the art would have been well aware of
the ubiquitous use of adding fiber to obtain high fiber food snack products.
See KSR, 550 U.S. at 421 ("A person of ordinary skill is also a person of
ordinary creativity, not an automaton"); Ball Aerosol & Specialty Container,
Inc. v. Limited Brands, Inc., 555 F.3d 984, 993 (Fed. Cir. 2009) (Under the
flexible inquiry set forth by the Supreme Court, the PTO must take account
of the "inferences and creative steps," as well as routine steps, that an
ordinary artisan would employ).
Appellant does not argue the separate § 103 rejection of claim 3
(Appeal Br. 19).
Accordingly, the Examiner's§ 103 rejections are affirmed with
respect to all of the claims on appeal.
DECISION
The Examiner's§§ 102 and 103 rejections are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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