Ex parte SCHUPPAN

Board of Patent Appeals and Interferences

Dec 19, 1997

07867049 (B.P.A.I. Dec. 19, 1997)

Application for patent filed April 10, 1992.1
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THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered
today (1) was not written for publication in a law
journal and (2) is not binding precedent of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ROBERT L. SCHUPPAN
________________
Appeal No. 95-0517
Application 07/867,0491
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and PAK, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-
11, all the claims in the present application. Claims 1 and 7
are illustrative:
Appeal No. 95-0517
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1. An edible wick comprising:
(a) a suspended component capable of wicking that is
fine granular or powdered, non-combustible and edible and;
(b) an edible fuel wherein said combination of
suspended component and fuel is effective to maintain a flame
in a still room.
7. A method of decorating a foodstuff comprising:
A. obtaining an admixture of:
(i) a fuel selected from the group consisting of
oil, fat, wax, alcohol, glycol and combinations thereof; and
(ii) an edible, fine granular or powdered,
wicking material wherein between about 30 and 99 percent of
said admixture consists of said fuel and between about 1 and
about 50 percent of said admixture consists of said edible,
fine granular or powdered, wicking material; and
B. applying said admixture to a foodstuff.
The examiner relies upon the following references as
evidence of obviousness:
Nisshin 61-186069 Feb. 23, 1988
Hoogeveen 8,403,182 May 16, 1986
Tong J. Lin (Lin), "Fumigating Candles," 80 Chemical Abstracts
CA80(16):87430p, p. 287 (1974).
Nobuo Beppu (Beppu), "Candles With Colored Flames," 106
Chemical Abstracts CA106(4):20292g, p. 94 (1987).
The Condensed Chemical Dictionary 864-65, 920 (10th ed.,
Van Nostrand Reinhold Co., Feb. 22, 1994).
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Appellant's claimed invention is directed to an edible
wick (claim 1) and a method of decorating a foodstuff (claim
7). The edible wick comprises two components: (a) fine
granular or powdered, non-combustible and edible material and
(b) an edible fuel, such as vegetable fat or propylene glycol.
The wick has the ability to maintain a flame in a still room.
The method of decorating foodstuff comprises obtaining a
mixture of a fuel and an edible, fine granular or powdered,
wicking material, and applying the mixture to a foodstuff.
Appellant submits at page 5 of the Brief that "claims 1-6
and 11 are separately patentable from claims 7-10."
Accordingly, claims 1-6 and 11 stand or fall together, as do
claims 7-10. In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d
1525, 1528 (Fed. Cir. 1987); Ex parte Schier, 21 USPQ2d 1016,
1018-19 (Bd. Pat. App. & Int. 1991). See also 37 CFR §
1.192(c)(7) and (c)(8) (1995). In view of appellant's
grouping of the appealed claims, we will rule on the propriety
of the examiner's prior art rejections of claims 1 and 7, with
which the remaining appealed claims stand or fall.
Appealed claim 11 stands rejected under 35 U.S.C. § 112,
first and second paragraphs. Appealed claims 1-11 stand
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Application 07/867,049
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rejected under 35 U.S.C. § 103 as being unpatentable over
either Nisshin or Hoogeveen in view of Hawley, Beppu and Lin.
We consider first the examiner's rejection of claim 11
under 35 U.S.C. § 112, first and second paragraphs. Appellant
does not contest the examiner's finding that the term
"entrudable" of claim 11 does not find descriptive support in
the specification and is indefinite. We note that appellant
offers to amend claim 11 to change "entrudable" to
"extrudable." Accordingly, we will sustain the examiner's
rejection.
We now turn to the examiner's § 103 rejection of the
appealed claims over Nisshin or Hoogeveen in view of Hawley,
Beppu and Lin. We focus first upon separately argued claim 1.
Claim 1 defines a wick comprising an edible fuel in which there
is suspended a wicking component that comprises fine granular
or powdered, non-combustible, edible material. Neither Nisshin
nor Hoogeveen discloses a wicking component that is fine
granular or powdered, non-combustible and edible. Although
Nisshin discloses an edible candle that has the same advantages
of appellant's candle, viz., edible material that can
mistakenly but safely be eaten by children which drops onto the
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Application 07/867,049
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top of cakes and the like during burning, the wicking component
of Nisshin's candle is combustible, not non-combustible, as
required by claim 1. (See page 3 of the English translation,
last paragraph, where it is disclosed "[s]aid wick (3) is
composed of a burnable, edible substance.".)
Hoogeveen is even more removed from the requirements of
claim 1 than Nisshin. Hoogeveen discloses an edible colored
pencil, not a wick or candle, which center portion does not
contain a material that is either fine granular or powdered,
or non-combustible. In addition, although the examiner states
that the crayon of Hoogeveen would inherently or obviously
maintain a flame, the examiner has not provided factual
support for this conclusion. Even though the crayon of
Hoogeveen may comprise materials that in and of themselves are
flammable, there is no teaching or suggestion in Hoogeveen
that the edible colored pencil has the necessary thickness,
configuration and composition for the casing and filling to
maintain a flame in a still room, as required by claim 1.
Indeed, Hoogeveen offers no hint that the colored pencil may
also serve as a candle. It is well settled that a
determination of inherency cannot be established by
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probabilities or possibilities, but it is incumbent upon the
examiner to establish the inevitability of the inherency
propounded. In Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326,
(CCPA 1981); In re Wilding, 535 F.2d 631, 635-36, 190 USPQ 59,
63-64 (CCPA 1976).
Consequently, we are constrained to reverse the
examiner's prior art rejection of claims 1-6 and 11.
The examiner's § 103 rejection of claims 7-10 is another
matter. Appealed claim 7 simply requires applying a mixture
of a fuel and an edible, fine granular or powdered, wicking
material to a foodstuff. Claim 7 does not require that the
wicking material be non-combustible. In our view, both
Nisshin and Hoogeveen disclose applying the claimed mixture to
a foodstuff. Nisshin's disclosure of applying wicks of rice
crackers and dried gourd shavings, which are mixtures of a
fuel, such as oil and fat, and an edible, granular material,
to a foodstuff such as cake meets the requirements of claim 7.
Hoogeveen meets the requirements of claim 7 by disclosing the
application of the pencil filling to foodstuffs such as
cookies and wafers, which fillings include edible oils and
fats which may contain crystals or small spheres such as sugar
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crystals or cocoa butter (see English translation at page 2,
first paragraph; page 3, lines 21 and 22; and paragraph
bridging pages 5 and 6). Appellant's argument at page 13 of
the Brief that "[n]othing in any of the cited art suggests a
material that a consumer can shape and which will burn in its
shape" is not germane to claim 7 on appeal, which does not
require a material that can be shaped and burn in its shape.
In conclusion, based on the foregoing, the examiner's
rejection of claim 11 under 35 U.S.C. § 112, first and second
paragraphs, is affirmed, as is the examiner's rejection of
claims 7-10 under 35 U.S.C. § 103. The examiner's rejection
of claims 1-6 and 11 under 35 U.S.C. § 103 is reversed. The
examiner's decision is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
JOHN D. SMITH ) BOARD OF PATENT
Appeal No. 95-0517
Application 07/867,049
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Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 95-0517
Application 07/867,049
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Walter Scott
Law Office of Walter Scott
P.O. Box 121
New York, NY 10025