Ex Parte Shuford

Board of Patent Appeals and Interferences

May 22, 2009

10966397 (B.P.A.I. May. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT SHUFORD IV
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Appeal 2009-002786
Application 10/966,397
Technology Center 1700
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Decided:1 May 22, 2009
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Before TERRY J. OWENS, PETER F. KRATZ, and
KAREN M. HASTINGS, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3-5, 8-10, and 12-19, which are all of the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002786
Application 10/966,397

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The Invention
The Appellant claims a method for baking a cake wherein chilled
filling material is added to cake batter before the cake is baked. Claim 1 is
illustrative:
1. A method for baking a cake, comprising the steps of:

mixing cake batter ingredients to form a cake batter;

placing said cake batter into a cake form;

chilling a filling material, until said filling material is between
approximately 31.5 and approximately 38.5 degrees Fahrenheit;

adding said chilled filling material to said cake batter;

baking said cake form, cake batter and filling material until said batter
is sufficiently cooked to form a finished cake; and

removing said finished cake from said form.

The Reference
Pillsbury’s Bake Off Cake Cook Book 99 (Pillsbury Publications 1969).
The Rejections
The claims stand rejected as follows: claims 1, 3-5, 8-10, and 12-19
under 35 U.S.C. § 103 over Pillsbury’s Bake Off Cake Cook Book, and
claims 17-19 under 35 U.S.C. § 112, first paragraph, written description
requirement.
OPINION
We reverse the rejection under 35 U.S.C. § 103 and affirm the
rejection under 35 U.S.C. § 112, first paragraph.

Appeal 2009-002786
Application 10/966,397

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Rejection under 35 U.S.C. § 103
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that Pillsbury’s Bake Off Cake Cook Book would have
rendered prima facie obvious, to one of ordinary skill in the art, chilling
filling material to between approximately 31.5°F and approximately 38.5°F,
adding the chilled filling material to cake batter, and baking the cake
batter/filling material to form a finished cake?
Findings of Fact
Pillsbury’s Bake Off Cake Cook Book discloses a Hideaway
Chocolate Cake recipe comprising preparing coconut-cream filling by
cooking pudding as directed on the package, stirring coconut into the
pudding, and cooling the pudding/coconut mixture (p. 99). After other
ingredients have been blended in a pan, cake batter is poured into the pan,
the filling is spooned into the cake batter, and the cake is baked. See id.
Analysis
The Appellant argues (Br. 6-7):
Because no specific temperature to “cool” the filling is cited, nor is
any time of cooling in a freezer called for, the reasonable assumption
is to cool the filling at least to the touch (since the filling was cooked).
Nothing hints or suggests “chilling” the filling to a temperature below
38.5 degrees. Furthermore, Applicant communicated directly with
Pillsbury to obtain certainty on his interpretation of the term “cool” –
he was told that this was intended to mean to cool to room
temperature.[2]

2 An email (filed Aug. 15, 2006) from General Mills’ Corporate Consumer
Response to the Appellant states, regarding the Hideaway Chocolate Cake
recipe: “Cool means to bring to room temperature.”
Appeal 2009-002786
Application 10/966,397

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The Examiner argues (Ans. 5):
The chilling temperature can vary depending on how cold one wants
the filling to be or how firm one wants the filling [to] be. The
determination of appropriate chilling temperature is a result-effective
variable which can readily be determined by one skilled in the art.

Pillsbury’s Bake Off Cake Cook Book does not disclose chilling but,
rather, discloses cooling (p. 99). The Examiner has not provided evidence
that in the cooking art, “cool” means “chill”, or that a disclosure to cool a
cooked filling would have led one of ordinary skill in the art, through no
more than ordinary creativity, to reduce the temperature to approximately
31.5ºF to approximately 38.5ºF. See KSR Int’l. Co. v. Teleflex Inc., 550 U.S.
398, 418 (2007) (In making an obviousness determination one “can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ”).
The Examiner argues that the interpretation of “cool” in the Hideaway
Chocolate Cake recipe by the person at General Mills in the email to the
Appellant as meaning “bring to room temperature” “is an interpretation from
one single source and does not represent the interpretation of the general
population” (Ans. 5).
That argument is not persuasive because the Examiner has not
provided evidence that one of ordinary skill in the art would have interpreted
“cool” differently than the person at General Mills.
The Examiner argues that “if one wants the filling to be hard and very
cold to the touch before it is placed on the batter, it would have been obvious
to freeze the filling until it reaches the desired temperature” (Ans. 6).
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The Examiner, however, has not provided evidence that Pillsbury’s
Bake Off Cake Cook Book would have led one of ordinary skill in the art,
through no more than ordinary creativity, to chill the filling in the Hideaway
Chocolate Cake recipe such that it is hard and very cold to the touch. The
only reason for chilling the filling in that manner, rather than merely letting
it cool, appears to come from the Appellant’s disclosure. Thus, the record
indicates that the Examiner used impermissible hindsight in rejecting the
Appellant’s claims. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the
invention from the prior art”).
Conclusion of Law
The Appellant has shown reversible error in the Examiner’s
determination that Pillsbury’s Bake Off Cake Cook Book would have
rendered prima facie obvious, to one of ordinary skill in the art, chilling
filling material to between approximately 31.5°F and approximately 38.5°F,
adding the chilled filling material to cake batter, and baking the cake
batter/filling material to form a finished cake.
Rejection under 35 U.S.C. § 112, first paragraph
Issue
Has the Appellant shown reversible error in the Examiner’s
determination that the Appellant’s original disclosure fails to provide
adequate written descriptive support for a chilling temperature range lower
limit of approximately 24°F?

Appeal 2009-002786
Application 10/966,397

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Analysis
For an applicant to comply with the 35 U.S.C. § 112, first paragraph,
written description requirement, the applicant’s specification must “convey
with reasonable clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the invention.” Carnegie Mellon
University v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008)
(quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
1991)).
The Appellant argues that the Appellant’s original disclosure did not
limit the temperature to which the filling can be chilled and, therefore, was
sufficient to cover all chilling temperatures below 38.5°F (Br. 9). Thus, the
Appellant argues, the Appellant should be able to claim any such
temperature. See id.
The Appellant’s Specification states that “the filling material is chilled
to approximately 32 degrees Fahrenheit 126” (Spec. 7:15) and that “[t]he
desired temperature range upon completion of the chilling 126 is between
approximately 31.5 and 38.5 degrees Fahrenheit” (Spec. 7:17-19). The
Appellant’s Specification does not indicate that the Appellant was in
possession of a chilling temperature range having a lower limit of
approximately 24°F.
The Appellant argues that “Applicant has simply chosen to claim the
lower temperature that his testing has proved is feasible” (Br. 9).
That argument is not convincing because the Appellant’s original
disclosure does not indicate that the Appellant was in possession of that
lower limit of feasibility.

Appeal 2009-002786
Application 10/966,397

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Conclusion of Law
The Appellant has not shown reversible error in the Examiner’s
determination that the Appellant’s original disclosure fails to provide
adequate written descriptive support for a chilling temperature range lower
limit of approximately 24°F.
DECISION/ORDER
The rejection of claims 1, 3-5, 8-10, and 12-19 under 35 U.S.C. § 103
over Pillsbury’s Bake Off Cake Cook Book is reversed. The rejection of
claims 17-19 under 35 U.S.C. § 112, first paragraph, written description
requirement, is affirmed.
It is ordered that 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 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

PLInitial:
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