Ex Parte Silva

Board of Patent Appeals and Interferences

Jan 9, 2008

10765193 (B.P.A.I. Jan. 9, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte GUILLERMO SILVA

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Appeal 2007-3956
Application 10/765,193
Technology Center 1700
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Decided: January 9, 2008
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Before CATHERINE Q. TIMM , JEFFREY T. SMITH, and
LINDA M. GAUDETTE, Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 7. We have jurisdiction pursuant to
35 U.S.C. § 6(b).
Appeal 2007-3956
Application 10/765,193

Claims 1 and 7 read as follows:
1. A rich creamy coconut mixture consisting of:

A) water;

B) a contained and preserved liquid base developed from mixing
water, sugar and a coconut cream powder derivative of natural coconut that
is processed from natural coconut milk through a spray drying process, said
spray drying process is a unit operation where a pumpable said coconut milk
liquid feed is finely dispersed or atomized to form droplets that are sprayed
into a heated air chamber to facilitate dehydration of said droplets, thus
forming powder particles, said powder particles are conveyed to a cyclone
where said coconut cream powder is collected;

C) sugar;

D) ice; and

E) contained in a first container and preserved young coconut meat
originating from said natural coconut at its immature stage to resemble
texture, consistency, taste, and appearance of mixing natural coconut liquid
endosperm with jelly-like meat of an immature said natural coconut recently
picked from a coconut palm tree, said coconut cream powder derivative
comprises said natural coconut and a starch hydrolysis product, said starch
hydrolysis product is maltodextrin, said young coconut meat contains mainly
water and said jelly-like meat which are collected, bleached and contained in
a second container with preservatives.

7. The rich creamy coconut mixture set forth in claim 1, further
comprising vanilla extract.

The Examiner maintains a rejection of claims 1 and 7 under 35 U.S.C.
§ 103(a) as unpatentable over Leaflet No.81 in view of Tayag (PH 26114 A

1 South Pacific Comm’n, Leaflet No. 8 – 1983 – Coconut, “Green coconut
drink” (1983).
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Application 10/765,193

published Feb. 24, 1992) and Beyerinck (US 6,763,607 B2 issued Jul. 20,
2004 to Beyerinck et al.) (Ans. 2; Supp. Ans. 3).2
Appellant contends that none of the applied references alone or in
combination teach how to produce their invention (Br. 20-24; Mar. 9, 2007
Reply Br. 1-4; Jun. 4, 2007 Reply Br. 1-4).
The issue presented for review by Appellant and the Examiner is:
Does a preponderance of the evidence support the Examiner’s conclusion
that it would have been obvious to one of ordinary skill in the art at the time
of the invention to create a rich creamy coconut mixture as claimed?
We are unable to answer the above question. This is because there are
ambiguities and inconsistencies in the claims that render the claims
indefinite. Review of the rejection under 35 U.S.C. § 103(a) would require
considerable speculation as to the scope of the claims. Such speculation
would not be appropriate. In re Steele, 305 F.2d 859, 862 (CCPA 1962)
(“[W]e do not think a rejection under 35 U.S.C. § 103 should be based on
such speculations and assumptions.”). We, therefore, procedurally reverse
the 35 U.S.C. § 103(a) rejection. We emphasize that this is a technical
reversal of the rejection under 35 U.S.C. § 103(a), and not a reversal based
upon the merits of the rejection.
We make the following new ground of rejection pursuant to our
authority under 37 C.F.R. § 41.50(b):

2 The Examiner had made a rejection under 35 U.S.C. § 112, ¶ 2 in the Final
Office Action, but does not reproduce that rejection in the Answers. We
treat that rejection as having been withdrawn by the Examiner in response to
the entered After-Final Amendment filed July 25, 2006 (see Advisory
Action).
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Appeal 2007-3956
Application 10/765,193

Claims 1 and 7 are rejected under 35 U.S.C. § 112, ¶ 2 as failing to
particularly point out and distinctly claim the subject matter which the
applicant regards as the invention.
Initially, we note that our basis for this rejection is different from the
basis previously advanced by the Examiner.
As a first matter, the preamble of claim 1 is inconsistent with the body
of the claim. According to the preamble, what is being claimed is “[a] rich
creamy coconut mixture.” However, the body of the claim recites that this
“mixture” consists of, among other things, “a contained … liquid base,”
something “contained in a first container,” and a young coconut meat
“contained in a second container.” On the one hand, the preamble seems to
be directed to the end product mixture of all the listed ingredients. On the
other hand, the body of the claim limits some of the ingredients to products
contained within containers. Products in containers are not part of a mixture
until the containers are opened and the contents mixed with the other
ingredients. A claim must be directed to something with all of its parts in
existence at the same time. The claim cannot be directed to both a “mixture”
of ingredients (the end product existing after mixing) and the separately
packaged ingredients existing before mixing. The scope of the claim is
unclear.
As a second matter, claim 1 uses the transitional phrase “consisting
of.” This phrase closes the claim and limits the “mixture” to only those
ingredients that are listed in the body of the claim. See Norian Corp. v.
Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (“‘[c]onsisting of’ is a
term of patent convention meaning that the claimed invention contains only
what is expressly set forth in the claim ... [however] it does not limit aspects
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Appeal 2007-3956
Application 10/765,193

unrelated to the invention”); In re Gray, 53 F.2d 520, 521 (CCPA 1931) (the
use of the claim term “consists” is limited to the claim's enumerated alloy
metals without other elements). However, some of the ingredients are
further defined in a way at odds with the “consisting of” transitional phrase.
Namely, part E) requires “said coconut cream powder derivative comprises
said natural coconut and a starch hydrolysis product” and “said young
coconut meat contains mainly water and said jelly-like meat ... in a second
container with preservatives.” The term “comprises” allows the claim to be
open to other ingredients in addition to those listed. CIAS, Inc. v. Alliance
Gaming Corp., 504 F.3d 1356, 1360-61 (Fed. Cir. 2007). The term
“mainly” also opens the claim to other ingredients. The claim is internally
inconsistent and its scope unclear.
Moreover, claim 7 which is dependent on claim 1, is inconsistent with
claim 1 because it attempts to add another ingredient to a “mixture” closed
to the addition of ingredients. Again, the transitional phrase “consisting of”
in claim 1 closes that claim to additional ingredients: claim 7 cannot add
another ingredient to the closed mixture of claim 1. Moreover, claim 7 uses
the transitional phrase “further comprising,” a transitional phrase opening
the claim to even more ingredients. Again, the language of the claims is
inconsistent and its scope unclear.
As a third matter, part E) opens with the recitation “contained in a first
container,” but does not state what is “contained” in that first container. Part
E) proceeds to recite “and preserved young coconut meat” which seems to
indicate that it is the young coconut meat which is to be placed in the first
container, but at the end of claim 1, part E) recites that the young coconut
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Application 10/765,193

meat is “contained in a second container.” This puts in question what is to
be contained in the first container.
For the above reasons, we determine that the claims do not reasonably
apprise one of ordinary skill in the art of the scope of the invention as
required by 35 U.S.C. § 112, ¶ 2.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .

REVERSED and NEW GROUND OF REJECTION

PL initials:
sld

ALBERT BORDAS, P.A.
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