Ex Parte Singer

Patent Trial and Appeal Board

Jan 31, 2018

14954839 (P.T.A.B. Jan. 31, 2018)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/954,839 11/30/2015 Nicholas J. Singer SINGE-002B 1033
7663 7590 01/31/2018
STETINA BRUNDA GARRED & BRUCKER
75 ENTERPRISE, SUITE 250
ALISO VIEJO, CA 92656
EXAMINER
HEGGESTAD, HELEN F
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
01/31/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NICHOLAS J. SINGER1
____________

Appeal 2017-011117
Application 14/954,839
Technology Center 1700
____________

Before CHRISTOPHER L. OGDEN, CHRISTOPHER C. KENNEDY, and
JULIA HEANEY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1 and 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM, and we designate our affirmance as a NEW GROUND
OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
BACKGROUND
The subject matter on appeal relates to a method of providing an
ingestible protein nutrient in a water-dissolvable pouch. E.g., Spec. ¶ 6;

1 According to the Appellant, the real party in interest is the named inventor,
Nicholas J. Singer. App. Br. 4.
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Claim 1. Claim 1 is reproduced below from page 25 (Claims Appendix) of
the Appeal Brief:
1. A method of providing an ingestible protein nutrient in a water
dissolvable pouch for conveniently dropping the pouch in a
disposable plastic water bottle of room temperature drinking
water to dissolve the pouch and mix the ingestible protein
nutrient with the drinking water so that a person can ingest the
protein nutrient, the disposable plastic water bottle having an
opening smaller than a width of a body of the disposable plastic
water bottle, the method comprising the steps of:
providing an ingestible hydroxypropyl cellulose water
dissolvable film that is capable of being dissolved in the room
temperature drinking water when still [in] under one (1) minute,
the drinking water having a pH greater than 6.5, the ingestible
hydroxypropyl cellulose film configured as the pouch with a
cavity so that drinkable water comes into contact with contents
enclosed within the pouch after the ingestible hydroxypropyl
cellulose film has been dissolved, the pouch being sufficiently
narrow to be inserted into the opening of the disposable water
bottle and about 2 inches to about 10 inches in length, the width
of the pouch being about ¼ inch to about ¾ inch;
providing the ingestible protein nutrient as a powder;
filling the cavity of the pouch configured hydroxypropyl
cellulose film only with ingestible material, the ingestible
material being at least a pow[d]ered ingestible protein nutrient;
sealing the pouch for holding the powdered ingestible protein
nutrient until use when a user disposes the pouch and the
pow[d]ered ingestible protein nutrient into a disposable water
bottle with drinkable water, shakes the disposable water bottle to
mix the powdered ingestible protein nutrient as the ingestible
hydroxypropyl cellulose film dissolves in the drinkable water
and drinks the entirety of the dissolved pouch and the pow[d]ered
ingestible protein nutrient.

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REJECTIONS ON APPEAL
1. Claims 1 and 2 stand rejected under 35 U.S.C. § 112, ¶ 1, for
failure to comply with the written description requirement.
2. Claims 1 and 2 stand rejected under 35 U.S.C. § 103 as
unpatentable over Stillman (US 8,642,051 B2, issued Feb. 4, 2014),2 Pearce
(US 2003/0224090 A1, published Dec. 4, 2003), Levinson (US
2005/0106266 A1, published May 19, 2005), Davidson (US 2006/0210610
A1, published Sept. 21, 2006), Roy (US 2014/0093609 A1, published
Apr. 3, 2014), and Tessmer (US 7,325,688 B1, issued Feb. 5, 2008).
ANALYSIS
Rejection 1
The Examiner determines that the Specification lacks written
description support for the claim terms (1) “filling the cavity of the pouch
configured hydroxypropyl cellulose film only with ingestible material,” and
(2) “sealing the pouch for holding the powdered ingestible protein nutrient
until use when a user . . . drinks the entirety of the dissolved pouch and the
pow[d]ered ingestible protein nutrient.” Ans. 2 (emphasis added).

2 The Examiner refers both to the ’051 patent issued to Stillman and to the
associated published application, US 2002/00122689 (published Jan. 31,
2002). See Ans. 3. Neither the Appellant nor the Examiner identifies any
difference between the relevant disclosures of the issued patent and the
published application, and the Appellant cites the issued patent. E.g., Reply
Br. 9 (identifying the correspondence between the issued patent and the
paragraph numbers of the published application cited by the Examiner). In
this decision, we cite the Stillman issued patent, and not the published
application.
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Essentially for reasons stated by the Appellant, see App. Br. 7–8, we
reverse the rejection. “[T]he test for [compliance with the written
description requirement] is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” See Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010).
“[T]he invention claimed does not have to be described in ipsis verbis in
order to satisfy the description requirement of § 112.” In re Lukach, 442
F.2d 967, 969 (CCPA 1971); see also Union Oil Co. of Cal. v. Atlantic
Richfield Co., 208 F.3d 989, 1000 (Fed. Cir. 2000). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” KSR Int’l
Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
With respect to the limitation that requires the pouch to be filled “only
with ingestible material,” the Specification repeatedly describes
embodiments comprising a nutrient and a water dissolvable shell (i.e., the
pouch itself). E.g., Spec. ¶ 7 (“The device may comprise a nutrient and a
water dissolvable shell.”), ¶ 14 (describing “a method of manufacturing a
delivery device for conveniently mixing a nutrient with water,” and listing
“the powdered nutrient”—and nothing else—as the fill material for the
shell/pouch), ¶ 49 (similar). We recognize that those paragraphs use the
word “comprise” and do not preclude the addition of other ingredients to the
pouch. See Ans. 8. However, those paragraphs also do not require the
addition of other ingredients, and a person of ordinary skill in the art,
through the use of only ordinary creativity, reasonably would have
understood those paragraphs to show possession of an embodiment in which
a nutrient, i.e., “an ingestible material” as recited by claim 1, is the only
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material in the pouch. Accordingly, we are not persuaded that the
Specification lacks written description support for the term “filling the
cavity of the pouch . . . only with ingestible material.”
We likewise are unpersuaded that the Specification lacks written
description support for the term “drinks the entirety of the dissolved pouch
and the pow[d]ered ingestible protein nutrient.” The Examiner provides
very little explanation for the basis of the rejection with respect to this term.
See Ans. 2, 8. However, it appears that the Examiner’s concern is with the
word “entirety” and is connected to the foregoing discussion regarding
“filling the cavity of the pouch . . . only with ingestible material.” See App.
Br. 7–8. In particular, it appears that the Examiner is suggesting that, if
there is no written description support for filling the pouch “only” with
ingestible material, then there is also no support for “drink[ing] the entirety”
of the dissolved pouch and its contents, because a user would not be able to
drink non-ingestible material. Given our determination above with respect
to the term “filling the cavity of the pouch . . . only with ingestible material,”
we determine that the Examiner has not persuasively shown lack of written
description support for the term “drinks the entirety of the dissolved pouch
and the pow[d]ered ingestible protein nutrient.” A person of ordinary skill
in the art, using only ordinary creativity, reasonably would have understood
that, when an edible, dissolvable pouch containing only an edible nutrient is
dissolved in water, the entirety of the drink may be consumed. See, e.g.,
Spec. ¶¶ 44, 47–49.
We reverse the § 112, ¶ 1 rejection.
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Rejection 2
The Appellant argues the claims subject to Rejection 2 as a group.
We select claim 1 as representative of the rejected claims, and claim 2 will
stand or fall with claim 1.
After review of the cited evidence and the opposing positions of the
Appellant and the Examiner, we determine that the Appellant has not
identified reversible error in Rejection 2. As set forth below, however, our
reasoning differs somewhat from the Examiner’s. Accordingly, we
designate the affirmance as a NEW GROUND OF REJECTION pursuant to
our authority under 37 C.F.R. § 41.50(b).
The Examiner finds, inter alia, that “Stillman disclose method [sic] of
making protein nutrient composition in a dissolvable pouch which can be
inserted into a bottle containing nutritious ingredients where the ingredients
are encased in a film.” Ans. 3. The Examiner finds that Pearce discloses
soluble, edible films made of hydroxypropyl cellulose (“HPC”), “which
dissolve[] quickly in the human mouth.” Id. at 3–4. The Examiner also
finds that Tessmer “discloses a water soluble pouch . . . made of
hydroxypropyl cellulose (HPC)” that “can contain powders” and “fit into the
neck of a bottle.” Id.
With respect to Pearce’s disclosure that HPC films dissolve quickly in
the human mouth, the Examiner states, “[i]t is seen that the water
dissolvable shell (film) dissolves in less than one minute in the water
containing saliva of the mouth, since the reference says that the films are
‘orally soluble.’” Id. at 4. The Examiner further finds that, “[s]ince the
[HPC] film [of Pearce] dissolves quickly in the human mouth, it is seen that
it would have also dissolved in bottled water, because HPC is a hydrocolloid
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which is water soluble, so that it would have been expected to dissolve in
any aqueous solution.” Id. The Examiner finds that Levinson and Davidson
similarly disclose the use of soluble powders, films, and tablets for the
delivery of nutritional ingredients. Id.
With respect to the requirement of claim 1 that the nutrient be a
protein, the Examiner finds that Roy “discloses a composition containing
sugars and protein to add to a water composition,” and the Examiner
determines that “it would have been obvious to add protein to a composition
to be added to water as disclosed by Roy et al. in the composition of the
combined references.” Id. at 5 (internal citations omitted).
With respect to the requirement of claim 1 that the “entirety” of the
composition be ingestible, the Examiner finds that Stillman’s disclosure of a
dissolvable, edible film enveloping an ingestible ingredient such as a flavor,
nutraceutical, dietary supplement, etc., teaches or suggests that limitation.
Id.
In view of those and other findings, the Examiner concludes that the
subject matter of claim 1 would have been obvious to a person of ordinary
skill in the art. Ans. 3–6.
In opposition to the Examiner’s rejection, the Appellant raises several
arguments, which we address in turn below:
1. The Appellant first argues that “Stillman fails to disclose ‘filling
the cavity . . . only with ingestible material.’” See App. Br. 9–18. In
particular, the Appellant argues that the Examiner fails to identify any
express teaching in Stillman that “only” ingestible ingredients are included
in its pouches, and that a person of ordinary skill in the art would have
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understood Stillman’s focus on “infusion” to suggest that the compositions
of Stillman necessarily include inedible components. Id.
Those arguments are not persuasive and appear to be inconsistent with
the Appellant’s argument concerning the Examiner’s § 112, ¶ 1 rejection on
the basis of the term “filling the cavity of the pouch . . . only with ingestible
material.” In opposing the § 112, ¶ 1 rejection, the Appellant argues that,
because the Specification discloses embodiments that “comprise” an edible
film and an ingestible material, without listing any non-ingestible materials
as required, the Specification shows possession of the “only with ingestible
material” limitation. As the Examiner explains, similar reasoning applies to
Stillman. See Ans. 10.
Stillman teaches “liquid activated infusion packet(s)/system”
“whereby the enveloping material(s) may be totally or partially dissolvable,
edible . . . ,” and “including of one or more: color(s), flavor(s), aroma(s),
pharmaceuticals(s), nutraceutical(s), dietary supplement(s), enzyme(s),
pre/pro-biotics(s), amino-acid(s), soluble-fiber(s),” etc. Stillman at Abstract
(emphasis added). Even if some of Stillman’s embodiments include non-
ingestible material in addition to ingestible material, the Abstract states that
“one or more” ingredients may be included in an edible enveloping material.
Id. A person of ordinary skill in the art would have understood that at least
some of the ingredients listed in the Abstract, such as, e.g., “flavor(s)” and
“dietary supplement(s),” constitute or at least suggest “ingestible”
ingredients, as required by claim 1. Thus, if only one ingredient were
selected to be included in Stillman’s edible enveloping material, as
suggested by Stillman, and that ingredient were ingestible, as suggested by
Stillman, the infusion packet/system of Stillman would be “fill[ed] . . . only
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with ingestible material,” and the “entirety” of the composition would be
edible, as required by claim 1.
That understanding of Stillman’s Abstract is consistent with other
portions of Stillman. For example, Stillman discloses:
An infusion packet and/or system designed to promote hydration,
by using a liquid, while simultaneously be [sic] inclusive of the
ability to deliver active and/or non-active agents/ingredients into
said liquid for one or more reasons with the possibility of adding
non-drinkable/“spoonable”, and/or edible (“swallowable”,
chewable etc.) and/or non-edible elements. An example of non-
drinkable and non-edible would be a support member.
Stillman at 16:53–60 (emphases added).
Stillman also discloses an embodiment in which, “[u]sing a water-
soluble film, it is further conceived whereby the entire infusion packet used
to enclose the ingredients may be subject to the liquid.” Id. at 70:62–71:12.
Stillman explains that, “[w]ith this application, there is no need to consider
trans-delivery through and/or across a membrane.” Id. at 70:64–65. As a
benefit of this application, Stillman teaches that, “such delivery dispenses
with the mess of the removal of the infusion packet from the liquid.” Id. at
70:66–67. That is because “all the contents will be used.” Id. at 71:4. In
other words, when a water-soluble, edible film is used to deliver an
ingredient to a beverage, there is no insoluble delivery vessel remaining that
would need to be removed from the beverage.
We recognize that Stillman repeatedly discusses “infusion” and
“infusion packets.” See App. Br. 13–14 (listing portions of Stillman that
refer to infusion). However, we are not persuaded that the concept of
“infusion,” as used by Stillman, shows reversible error in the Examiner’s
rejection. The fact that Stillman discusses tea bags and describes “[i]nfusion
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packets” as “water permeable coverings containing dried plant materials
(e.g., a tea bag),” see Stillman at 3:50–51, does not detract from the
disclosures discussed above which suggest embodiments in which a single,
edible film envelops a single, edible ingredient. See, e.g., id. at Abstract.
Likewise, the fact that Stillman’s figures “include components
intended to remain in the water and not disappear,” such as “a tag, a string,
or a straw that must be removed from the water,” see App. Br. 18 (citing
several figures of Stillman), does not detract from Stillman’s disclosure, e.g.,
of an embodiment in which “all the contents will be used” and which
“dispenses with the mess of the removal of the infusion packet from the
liquid,” see Stillman at 70:62–71:12. As the Examiner explains, “Stillman
has more than one embodiment,” and while Stillman may “spend[] a great
deal of time” discussing certain embodiments, those embodiments are “not
the whole invention, where the simpler process of adding ingredients to a
dissolvable packet and putting them in a bottle is [also] disclosed.” Ans. 9.
On this record, we are not persuaded of reversible error in the
Examiner’s determination that Stillman teaches or suggests “filling the
cavity . . . only with ingestible material.”
2. The Appellant also argues that “[i]t would not have been obvious
to use ‘hydroxypropyl cellulose’ as claimed.” App. Br. 19–20. However,
that argument is based on the argument discussed above—that Stillman
requires non-ingestible material in its infusion packets. See id. (“Since an
infusion packet [of Stillman] necessarily includes some remaining non-
dissolving solid object . . . , such object would pose a risk to rupture” a
hydroxypropyl cellulose film. (emphasis added)). Because we determine
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that Stillman does not require non-ingestible (or non-dissolvable) material in
its enveloping material, that argument is not persuasive.
Additionally, we note that Stillman expressly discloses the use of
“[s]oluble cellulosic ethers and other derivatives such as carboxymethyl
cellulose,” and it states that, “[w]hile the invention does not specifically state
that soluble fiber, from one or more sources must be present, it is to be
considered ‘a good idea’.” Stillman at 8:39–40, 9:9–11. Pearce discloses
that both hydroxypropyl cellulose and carboxymethyl cellulose can be used
as soluble film-forming agents. See Pearce ¶ 28. Davidson discloses that
both hydroxypropyl cellulose and carboxymethyl cellulose are “highly
water-soluble” film-forming ingredients that are “safe for human
consumption.” Davidson ¶ 34. Tessmer likewise discloses that both
hydroxypropyl cellulose and carboxymethyl cellulose are “suitable
materials” for making “water-soluble pouches.” Tessmer at 1:18–33.
Thus, the record establishes that hydroxypropyl cellulose was a well-
known water-soluble, edible film-forming ingredient, and that it was known
to be interchangeable with carboxymethyl cellulose. The Examiner’s
proposal of using hydroxypropyl cellulose as the edible, dissolvable
enveloping material of Stillman is simply the use of a known ingredient
according to its established function. The use of known elements according
to their established functions typically does not result in nonobvious subject
matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007)
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”);
see also id. at 416 (“[W]hen a patent claims a structure already known in the
prior art that is altered by the mere substitution of one element for another
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known in the field, the combination must do more than yield a predictable
result.”). The Appellant’s arguments do not persuade us otherwise in this
case.
3. The Appellant argues that “[t]he cited references fail to disclose a
film that is capable of being ‘dissolved in room temperature drinking water
when still [in] under one (1) minute’ as claimed.” App. Br. 21. The
Appellant submits results of a test conducted by A. Scott Connelly showing
that a 1” x 1” film strip of hydroxypropyl cellulose and pullulan took more
than ten minutes to dissolve in still water, and 1 minute and 37 seconds to
dissolve in agitated water, but only 10 seconds to dissolve in a human
mouth. Id.; see also Connelly Decl. dated Oct. 17, 2015. The Appellant
uses that data to argue that a film’s quick dissolution in the human mouth (as
disclosed by Pearce) does not necessarily mean that the film will dissolve in
still water at a rate falling within the scope of claim 1. App. Br. 21. The
Appellant also argues that, even if a film made of hydroxypropyl cellulose
alone (as opposed to hydroxypropyl cellulose and pullulan, as tested by Mr.
Connelly) were used, such a film would not necessarily and inherently fall
within the dissolution rate of claim 1 because, “[f]or instance, the thickness
of the film would also impact the time it takes to dissolve, as a thicker film
would take longer to dissolve.” Id. at 22.
We agree with the Appellant that Pearce’s disclosure of “quick[]” oral
disintegration does not establish that any given HPC film necessarily would
fall within the scope of the dissolution rate of claim 1 in room temperature
still water. We also agree with the Appellant that the Examiner has not
established that all hydroxypropyl cellulose films necessarily and inherently
will fall within the scope of the dissolution rate of claim 1. However, we are
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not persuaded of reversible error in the Examiner’s rejection because,
although the Examiner does not identify an express disclosure in the prior art
of a dissolution rate falling within the scope of claim 1, the prior art
nevertheless teaches or suggests that the dissolution rate—as achieved by the
design of the film—is a variable that affects when the beverage would be
ready for consumption. It would have been within the ordinary level of skill
in the art to optimize dissolution rate to achieve desired results. See In re
Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation.”); see also In re
Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A
recognition in the prior art that a property is affected by the variable is
sufficient to find the variable result-effective.”).
In a section on “Temperature Desirability/Dissolvability,” Stillman
discloses that, “[w]hen mixing, in other than hot water, it may be desirable
and/or necessary that the ingredients totally dissolve and dissolve rather
quickly.” Stillman at 58:56–58. In describing one of the embodiments
discussed above, Stillman states that, “[i]f so designed that the soluble film
will dissolve in room temperature water then this would be most desirable to
add to the water bottle infusion packet portion of the invention. It is also
possible, but the reaction would be much slower, for the film to dissolve in
colder water.” Id. at 70:62–71:12 (emphasis added). Thus, the art suggests
that, in at least some contexts, faster dissolution rates are desirable, and that
soluble films can be “designed” to achieve desired dissolution
characteristics. See id.; see also id. at 11:9–12 (“In some cases, the
encapsulations can be designed to simply dissolve . . . .”).
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Consistent with that disclosure, Pearce describes film thickness as an
aspect of film design that a person of ordinary skill in the art would have
modified to achieve desired film characteristics, including film solubility.
According to Pearce, “[f]ilms used in the snacks disclosed herein may be of
any desired thickness, length and width.” See Pearce ¶ 193. Pearce
discusses film thickness in the context of achieving a film that is “easily
soluble”: “An example pliable and easily soluble, edible film may be from
less than about 0.0005 inches thick to more than about 0.100 inches
thick . . . .” Id. (emphasis added).
Additionally, the prior art generally discusses immediate release
technologies as compared to extended release, e.g., Stillman at 1:29–35
(“flash” delivery); Levinson ¶¶ 128–130 (discussing “immediate release”
and “controlled release”), ¶ 145 (“It is also possible in the nutritional
composition of the present inventive subject matter for the dosage form to
combine any forms of release well known to persons of ordinary skill in the
art . . . . includ[ing] . . . immediate release, extended release, pulse release,
variable release, controlled release . . . .”), and specifically describes
immediate release and a variety of related technologies as “well known to
those of ordinary skill in the art,” see Levinson ¶ 145.
The foregoing disclosures indicate that it would have been within the
ordinary level of skill in the art to optimize film dissolution rate through the
routine selection of film parameters, such as thickness, and that a person of
ordinary skill in the art would have had a reasonable expectation of success
in achieving desired dissolution rates, including rates that fall within the
scope of claim 1. Additionally, in the context of, for example, an edible film
encompassing an edible ingredient to be inserted into a water bottle for
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consumption (such as that suggested by Stillman), a person of ordinary skill
in the art would have understood that, in at least certain circumstances, a
faster rate of dissolution would be desirable so that the user does not have to
wait a long period of time to consume the beverage. Cf. Stillman at 70:62–
71:12 (explaining that dissolution would be “much slower” in colder water).
On this record, we determine that a method including the step of
“providing an ingestible hydroxypropyl cellulose water dissolve film that is
capable of being dissolved in the room temperature drinking water when still
under one (1) minute” would have been obvious in view of the prior art.
4. The Appellant’s final argument is that the Examiner has “not
provided any explanation as to how the claimed method steps were allegedly
disclosed in the cited references.” App. Br. 22 (emphasis in original). The
Appellant focuses on the “filling the cavity of the pouch” step of claim 1,
arguing:
[T]here are many different ways to provide a pouch with a
nutrient contained therein. One way to provide for such a pouch
would be to lay a flat piece of film on a support surface.
Powdered nutrient would be poured on top of the flat piece of
film. The flat piece of film would be folded over in order to form
the pouch around the powdered nutrient. Such a method would
contradict the claimed method, which requires filling the cavity
of a pouch.
Id. at 23.
In the Answer, the Examiner responds by addressing each recited step.
See Ans. 13–14.
In the Reply Brief, the Appellant specifically disputes only the
Examiner’s identification of the “filling the cavity of the pouch” step,
elaborating on the argument block-quoted above. See Reply Br. 13–14.
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The Appellant’s argument concerning the “filling the cavity of the
pouch” step is not persuasive. Although we agree with the Appellant that
there are “different ways to provide a pouch with a nutrient contained
therein,” App. Br. 23, the Appellant provides no basis to believe that it
would not have been obvious to a person of ordinary skill in the art to form
the film into a pouch, fill it with ingestible material, and then seal it. The
prior art of record expressly discloses such a method. See Pearce ¶ 121
(“Or, the film can be formed into a pouch, the material placed into an open
end, and the pouch sealed closed.”). Thus, even if Stillman itself does not
expressly disclose how its enveloping film is filled with ingestible material,
it would have been within the ordinary level of skill in the art to select from
among known methods, including that disclosed by Pearce. We are not
persuaded that the Appellant’s argument concerning the “filling the cavity of
the pouch” step of claim 1 establishes reversible error in the Examiner’s
rejection.
The Appellant does not specifically dispute the Examiner’s
identification in the prior art of the other method steps, see Ans. 13–14, and,
therefore, has not identified reversible error in the Examiner’s analysis of
those steps. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(explaining that, even if the examiner had failed to make a prima facie case,
the Board would not have erred in framing the issue as one of reversible
error because “it has long been the Board’s practice to require an applicant
to identify the alleged error in the examiner’s rejections”).
* * *
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In summary, we have carefully considered the Appellant’s arguments,
and we are not persuaded of reversible error in the Examiner’s rejection of
claim 1.
CONCLUSION
We REVERSE the Examiner’s rejection of claims 1 and 2 under 35
U.S.C. § 112, ¶ 1.
We AFFIRM the Examiner’s rejection of claims 1 and 2 under 35
U.S.C. § 103, and we designate our affirmance as a NEW GROUND OF
REJECTION because our reasoning differs somewhat from that of the
Examiner.

37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Section 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 . . . .

AFFIRMED
37 C.F.R. § 41.50(b)