Ex Parte Rivier

Board of Patent Appeals and Interferences

Jun 26, 2006

10277697 (B.P.A.I. Jun. 26, 2006)

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today was not written for publication and is not binding
precedent of the Board.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
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte INVNET RIVIER
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Appeal No. 2006-1211
Application 10/277,697
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HEARD: May 23, 2006
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Before KIMLIN, WARREN and FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
We have carefully considered the record in this appeal under 35 U.S.C. § 134, and based
on our review, find that we cannot sustain the grounds of rejection advanced on appeal: claims
27 through 32 under 35 U.S.C. § 102(b) as anticipated by Forester (answer, pages 3-4); claims
1 through 3, 5, 7 through 14 and 21 under 35 U.S.C. § 103(a) as being unpatentable over
Forester and Maddox (answer, pages 4-6); claim 4 under 35 U.S.C. § 103(a) as being
unpatentable over Forester and Maddox as applied above, and further in view of Vadasz (answer,
pages 6-7); claim 6 under 35 U.S.C. § 103(a) as being unpatentable over Forester and Maddox
as applied above, and further in view of Theeuwes et al. (Theeuwes) (answer, page 7); claims 15
through 17 under 35 U.S.C. § 103(a) as being unpatentable over Forester in view of Maddox and
Theeuwes as applied above, and further in view of Paluch (answer, pages 7-8); claims 19, 20 and
22 under 35 U.S.C. § 103(a) as being unpatentable over Forester and Maddox as applied
above, and further in view of Porzio et al. (answer, pages 8-9); claims 23 and 24 under 35 U.S.C.
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Application 10/277,697
§ 103(a) as being unpatentable over Forester and Maddox as applied above, and further in view
of Luhadiya et al. (answer, page 9); claim 25 under 35 U.S.C. § 103(a) as being unpatentable
over Forester and Maddox as applied above, and further in view of Carroll et al. (answer, pages
9-10); claim 26 and 33 under 35 U.S.C. § 103(a) as being unpatentable over Forester and
Maddox as applied above, and further in view of Knebl (answer, pages 10-11); and claim 18
under 35 U.S.C. § 103(a) as being unpatentable over Forester and Maddox as applied
above, and further in view of Nesser (answer, pages 11).1
We refer to the answer and to the brief and reply brief for a complete exposition of the
positions advanced by the examiner and appellant.
The principal issues in this appeal involve the following representative language from
independent claim 1 which specifies a property of a casing of a confectionery product and
properties of a filling of confectionery material encompassed therein:
wherein the casing is capable of forming release means upon the action of the saliva in
the mouth which acts to liberate the filling out of the casing and wherein the
confectionery material has dissolution properties effective to act together with the
release means so as to enable the casing to be left substantially as an empty shell
before it has entirely dissolved in the mouth.
The language of independent claims 27, 28 and 30 is similar.
The examiner and appellant2 do not provide an interpretation for the language “forming
release means upon the action of the saliva in the mouth which acts to liberate the filling out of
the casing” that specifies a function without defining structure which satisfies that function and
thus, the strictures of 35 U. S. C. § 112, sixth paragraph, apply. See Texas Digital Sys., Inc. v.
Telegenx, Inc., 308 F.3d 1193, 1208, 64 USPQ2d 1812, 1822-23 (Fed. Cir 2002), and cases cited

1 Claims 1 through 33 are all of the claims in the application.
2 37 CFR § 41.37(c)(1)(v) (2005) Summary of claimed subject matter provides in pertinent part:
For each independent claim involved in the appeal and for each dependent claim
argued separately under the provisions of paragraph (c)(1)(vii) of this section, every
means plus function and step plus function as permitted by 35 U.S.C. 112, sixth
paragraph, must be identified and the structure, material, or acts described in the
specification as corresponding to each claimed function must be set forth with
reference to the specification by page and line number, and to the drawing, if any by
reference characters.
See also Manual of Patent Examining Procedure § 1205.02 (8th ed., Rev. 3, August 2005;
1200-14).
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Application 10/277,697
therein. Therefore, the “means” language in this limitation must be construed as limited to the
“corresponding structure” disclosed in the written description in the specification and
“equivalents” thereof. In re Donaldson Co., 16 F.3d 1189, 1192-95, 29 USPQ2d 1845, 1848-50
(Fed. Cir. 1994) (en banc).
The “corresponding structure” is that “structure in the written description necessary to
perform that function [citation omitted],” that is, “‘the specification . . . clearly links or
associates that structure to the function recited in the claim.’ [Citation omitted.]” Texas Digital
Sys., 308 F.3d at 1208, 64 USPQ2d at 1822-23. “[A] section 112, paragraph 6 ‘equivalent[]’
. . . [must] (1) perform the identical function and (2) be otherwise insubstantially different with
respect to structure. [Citations omitted.]” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d
1352, 1364, 54 USPQ2d 1308, 1315-16 (Fed. Cir. 2000). “[T]wo structures may be ‘equivalent’
for purposes of section 112, paragraph 6 if they perform the identical function in substantially
the same way, with substantially the same result. [Citations omitted.]” Kemco Sales, 208 F.3d at
1364, 54 USPQ2d at 1315. “[T]he ‘broadest reasonable interpretation’ that an examiner may
give means-plus-function language is that statutorily mandated in [35 U.S.C. § 112,] paragraph
six,” and in this respect, the examiner should not confuse “impermissibly imputing limitations
from the specification into a claim with properly referring to the specification to determine the
meaning of a particular word or phrase in a claim. [Citations omitted.]” Donaldson, 16 F.3d at
1195, 29 USPQ2d at 1850; see also In re Morris, 127 F.3d 1048, 1055-56, 44 USPQ2d 1023,
1028 (Fed. Cir. 1997) (explaining Donaldson).
The principal disclosure of “release means” formed “upon the action of the saliva in the
mouth which acts to liberate the filling out of the casing” in the written description in the
specification is “[w]hen zones of reduced thickness are provided in the casing, the passage
means are formed after the confectionery product has been maintained in contact with the saliva
during a few seconds” (page 5, l. 33, to page 6, l. 2; see also page 6, ll. 2-4). The “zones of
reduced thickness” are illustrated by “zones of reduced thickness” 70 in FIGs. 2 and 4 (id., page
17, ll. 13-24). It is further disclosed that “the zone(s) of reduction may be flattened slits . . .
[and] [t]he resulting passage(s) may be formed after a certain time lag between the introduction
of the product in the mouth and the beginning of the release of the filling . . . depending upon the
initial thickness of the reduction, melting properties of the . . . casing, etc.” (id., page 17, ll. 1-8).
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Thus, we determine that “zones of reduced thickness” in the casing, including flattened
slits,” constitute the corresponding structure in the written description necessary to perform the
function of opening the casing upon the action of saliva which acts to liberate the filling out of
the casing. While “holes” can enlarge “upon the action of saliva in the mouth” (see id., page 17,
ll. 8-9), there is no disclosure that such action also “acts to liberate the filling out of the casing,”
that is, enlarges the “holes” so as “to liberate the filling out of the casing.” Indeed, appellant
discloses in the written description that the size of the “hole can be linked to the amount of the
filling” and “release [the filling] upon short contact with the saliva” (e.g., page 17, l. 25, to page
18, l. 8; FIGs. 5 and 6, “holes” 720,721 and 750,751, respectively). Thus, on this record,
“holes” are not “equivalent” to the “corresponding structure” because they do not perform the
identical function in substantially the same manner to obtain substantially the same result and are
otherwise substantially different in structure.
We interpret the further claim requirement “wherein the confectionery material has
dissolution properties effective to act together with the release means so as to enable the casing
to be left substantially as an empty shell before it has entirely dissolved in the mouth” to plainly
specify that once the saliva in the mouth has opened the shell at a zone or zones of reduced
thickness, the confectionery material filling the shell will be “substantially” dissolved via action
of the saliva which has entered the shell through said “release means” before the thus
“substantially” empty casing is entirely dissolved by the saliva. We find no definition or general
guidelines and examples in the written description in the specification sufficient as a standard to
enable a person of ordinary skill in the art to determine the degree to which the confectionery
material is “substantially” released from the casing before the casing is dissolved in the mouth.
Thus, we give the term “substantially” its ordinary meaning of “largely but not wholly,” and
therefore, the dissolution properties of the confectionery material must be such that it will largely
but not wholly dissolve in the saliva from the time that the “release means” is formed by the
action of the saliva and before the casing is dissolved by the same action. See Morris, 127 F.3d
at 1054-55, 44 USPQ2d at 1027; York Prods., Inc. v. Central Tractor Farm & Family Ctr.,
99 F.3d 1568, 1572-73, 40 USPQ2d 1619, 1622-23 (Fed. Cir. 1996) (“In this case, the patent
discloses no novel use of claim words. Ordinarily, therefore, ‘substantially’ means ‘considerable
in . . . extent,’ American Heritage Dictionary Second College Edition 1213 (2d ed. 1982), or
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‘largely but not wholly that which is specified,’ Webster’s Ninth New Collegiate Dictionary
1176 (9th ed. 1983).”); Seattle Box Co., Inc. v. Industrial Crating & Packing, Inc., 731 F.2d 818,
826, 221 USPQ 568, 573-74 (Fed. Cir. 1984) (“Definiteness problems often arise when words of
degree are used in a claim. That some claim language may not be precise, however, does not
automatically render a claim invalid. When a word of degree is used . . . [it] must [be
determined] whether the patent’s specification provides some standard for measuring that
degree.”); In re Mattison, 509 F.2d 563, 564-65, 184 USPQ 484, 486 (CCPA 1975)
(“substantially increase the efficiency of the compound as a copper extractant”); cf. In re Marosi,
710 F.2d 799, 802-03, 218 USPQ 289, 292 (Fed. Cir. 1983) (“essentially free of alkali metal”).
We pointed out above that the examiner has not determined the “corresponding structure”
disclosed in the written description in the specification and “equivalents” thereof with respect to
the claim language. The interpretation of this language is necessary to the interpretation of the
remainder of the subject claim language. Thus, in the absence of the examiner’s determinations
in these respects, the basis for the ground of rejection under § 102(b) based on Forester and all of
the grounds of rejections under § 103(a) essentially based on Forester and Maddox is not
apparent from the record. We agree with appellant (brief, page 14; reply brief, pages 1-2) that
the examiner does not state the factual basis in Forester for the claim language we interpreted
above in rejecting independent claims 27, 28 and 30 under § 102(b) (see answer, paragraph
bridging pages 3-4, second sentence, last clause). Indeed, while the examiner cites col. 1, ll. 16-
25 and 27-31, of Forester in this respect, there is no identification of the claimed “release means”
or the interaction of this property of the casing with the dissolution properties of the
confectionery material, and the examiner further admits as much with respect to both claim
requirements (answer, paragraph bridging pages 5-6, first sentence).
With respect to the grounds of rejection under § 103(a), we also agree with appellant that
the examiner has not explained the teachings in Forester and in Maddox which would have
suggested to one of ordinary skill in this art to combine the same, and would have further
motivated this person to modify Forester by the teachings of Maddox to arrive at the claimed
invention encompassed by independent claims 1 and 30, as we have interpreted these claims
above (brief, pages 15-16; reply brief, pages 2-3). Indeed, the record is silent with respect to a
scientific explanation or objective evidence supporting the examiner’s position that “the Office
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Application 10/277,697
interprets” the placing of the Maddox capsule in “hot water,” that is, “95° C.” to dissolve the
gelatin capsule (e.g., col. 4, ll. 13-15), “to include placing the [capsule] in the mouth with saliva”
(answer, page 6; see also pages 11-12).
Therefore, the examiner has not established a prima facie case of anticipation under
§ 102(b) or a prima facie case of obviousness under § 103(a), and accordingly, we reverse these
grounds of rejection. See generally, In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Spada, 911 F.2d 705, 707 n.3, 15 USPQ2d 1655, 1657 n.3. (Fed. Cir.
1990); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
The examiner’s decision is reversed.
Other issues
Dependent claim 5 is apparently intended to further limit the confectionery product of
claim 1 as follows:
wherein the release means comprises at least one hole and/or zones of reduced
thickness provided in the casing which is capable of eventually forming at least one
outside passage communicating with the filling.
We note that there is no corresponding claim dependent on any of the other independent claims.
We interpret claim 5 to plainly specify that “release means comprise at least” one hole or
zone of reduce thickness, wherein the open-ended term “comprises” opens the claim to
additionally include any other manner of “release means . . . capable of eventually forming at
least one outside passage communicating with the filling.” See generally, Exxon Chem. Pats.,
Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35 USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The
claimed composition is defined as comprising - meaning containing at least - five specific
ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As
long as one of the monomers in the reaction is propylene, any other monomer may be present,
because the term >comprises= permits the inclusion of other steps, elements, or materials.”).
Since claim 5 specifies structure for the “release means,” is not subject to interpretation under
§ 112, sixth paragraph.
Thus, claim 5 is at odds with claim 1 on which it depends. This is because we interpreted
“release means” under § 112, sixth paragraph, above as being limited to the corresponding
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Application 10/277,697
structure “zones of reduced thickness” and equivalent structure, and claim 5 specifies that this
term can separately and severally include the structure “hole” and any other additional structure.
Accordingly, upon further prosecution of the appealed claims subsequent to the
disposition of this appeal, the examiner should consider whether claim 5 complies with
35 U.S.C. § 112, second paragraph. See In re Moore, 439 F.2d 1232, 1235, 169 USPQ 236,
238 (CCPA 1971); cf. Donaldson Co., 16 F.3d at 1194-95, 29 USPQ2d at 1850 (“[I]f one
employs means-plus-function language in a claim, one must set forth in the specification an
adequate disclosure showing what is meant by that language. If an applicant fails to set forth an
adequate disclosure, the applicant has in effect failed to particularly point out and distinctly
claim the invention as required by the second paragraph of section 112.”).

Reversed

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Appeal No. 2006-1211
Application 10/277,697

EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
BEVERLY A. FRANKLIN )
Administrative Patent Judge )

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