Ex Parte Silenzi et al

Patent Trials and Appeals Board

Jun 20, 2019

12080068 - (D) (P.T.A.B. Jun. 20, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/080,068 03/31/2008
24041 7590 06/24/2019
SIMPSON & SIMPSON, PLLC
5555 MAIN STREET
WILLIAMSVILLE, NY 14221-5406
FIRST NAMED INVENTOR
N ando Silenzi
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.
SBIPlOlUS 3483
EXAMINER
GWARTNEY, ELIZABETH A
ART UNIT PAPER NUMBER
1791
NOTIFICATION DATE DELIVERY MODE
06/24/2019 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):
patentEFS@idealawyers.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NANDO SILENZI and DEAN O'BRIEN 1
Appeal2018-007472
Application 12/080,068
Technology Center 1700
Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
MARK NAGUMO, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-12 and 14--16. We have jurisdiction under
35 U.S.C. § 6.
We AFFIRM.
1 Skinny's Best, LLC is identified as the real party in interest (Br. 3).
Appeal2018-007472
Application 12/080,068
Appellants claim a food composition mimicking peanut butter
comprising peas and a viscosity controlling component such as palm oil
(independent claim 1) as well as a sweetener such as brown sugar and white
bleached sugar (remaining independent claim 16).
A copy of representative claim 16, taken from the Claims Appendix of
the Appeal Brief, appears below.
16. A food composition mimicking peanut butter,
comprising peas, at least one viscosity controlling component
selected from palm oil, palm kernel oil and mixtures thereof,
and a sweetener selected from the group consisting of brown
sugar, white bleached sugar, com syrup, dextrose, glucose,
maltodextrin and mixtures thereof.
The Examiner rejects claims 1-12 and 14--16 under 35 U.S.C.
§ 112(b) or pre-AIA 35 U.S.C. § 112, second paragraph, as being indefinite
(Final Action 2-3).
According to the Examiner, the independent claim recitation "[a] food
composition mimicking peanut butter" renders the claims indefinite
"because it is not clear what properties or uses are encompassed by
'mimicking'" (id.).
Appellants quote the Specification disclosure that their composition
"looks, smells and tastes like commercial[l]y available common peanut
butter" (Spec. 1 :4--5) and "has a very strong resemblance in color,
appearance, flavor, taste and smell of peanut butter" (id. at 6: 1-3) (see, e.g.,
Br. 9). Appellants argue that, in light of these disclosures, "one having
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Application 12/080,068
ordinary skill in the art at the time of invention would know that the term
'mimicking' means that the composition 'looks, smells and tastes like
commercially available common peanut butter' ... [and] has a very strong
resemblance in color, appearance, flavor, taste, and smell to peanut butter"
(id.).
Appellants' argument persuades us that one having an ordinary level
of skill in this art would understand the claims to define with reasonable
precision a composition having the properties and uses of peanut butter as
described in their Specification. See In re Packard, 751 F.3d 1307, 1313
(Fed. Cir. 2014) ("[H]ow much clarity is required necessarily invokes some
standard of reasonable precision in the use of language in the context of the
circumstances."). While the claims define the composition broadly as
"mimicking peanut butter," such breadth does not violate the definiteness
requirement. See In re Gardner, 427 F.2d 786, 788 (CCPA 1970) ("Breadth
is not indefiniteness.").
For these reasons, we do not sustain the Examiner's rejection of
claims 1-12 and 14--16 as being indefinite.
The Examiner also rejects claims 1-12 and 14--16 under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over National Post (National Post,
Hey Skippy, Spread the Word, CANADA.COM (June 19, 2011, 5:08 PM),
http://www.canada.com/story_print.html?id=f31dcfe1-3a2b-4757-a620-
dfffcdde653d&sponsor= ("National Post")) (Final Action 4--5).
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Application 12/080,068
The Examiner finds that National Post discloses a peanut butter
alternative having the claimed ingredients except the alternative composition
includes (i) vegetable oil broadly rather than, for example, palm oil as
claimed and (ii) icing sugar (i.e., powdered sugar) rather than, for example,
brown sugar or white bleached sugar as claimed (id.). The Examiner finds
that "palm oil is a type of vegetable oil" (id.) and concludes that it would
have been obvious to use palm oil as the vegetable oil of National Post's
alternative composition (id.). The Examiner finds that "[ w ]hile powdered
sugar is known to be used in icing, it is also known to use brown sugar and
white bleached sugar" (id.) and concludes that it would have been obvious to
use brown sugar or white bleached sugar as the sugar sweetener in the
alternative composition (id.).
Appellants argue "there is no teaching, suggestion, or motivation for
one having ordinary skill in the art to use palm oil, palm kernel oil or
mixtures thereof, in view of the vegetable oil disclosed in National Post"
(see, e.g., Br. 25). Similarly, Appellants argue "there is no teaching,
suggestion, or motivation for one having ordinary skill in the art to use
brown sugar, white bleached sugar, com syrup, dextrose, glucose,
maltodextrin or mixtures thereof in National Post to arrive at the present
invention" (id. at 26).
We observe that Appellants do not dispute the Examiner's above-
quoted findings that palm oil is a type of vegetable oil and that the use of
brown sugar and white bleached sugar is known. These undisputed findings
support the Examiner's obviousness conclusions. Based on the record of
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Application 12/080,068
this appeal, the proposed use of palm oil as National Post's vegetable oil and
brown sugar or bleached white sugar as National Post's sugar sweetener is
nothing more than the predictable use of prior art ingredients according to
their established functions. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
417 (2007) (In assessing obviousness for a claimed combination of prior art
elements, the question to ask is "whether the improvement is more than the
predictable use of prior art elements according to their established
functions.").
Because Appellants reveal no harmful error on the Examiner's part,
we sustain the§ 103(a) rejection of claims 1-12 and 14--16 as being
unpatentable over National Post.
We affirm the Examiner's decision rejecting claims 1-12 and 14--16.
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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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