Ex parte Spector

Board of Patent Appeals and Interferences

Sep 27, 2000

08574279 (B.P.A.I. Sep. 27, 2000)

Claims 6 and 7 were also finally rejected. However, in an AFTER FINAL AMENDMENT1
(Paper No. 20), claims 6 and 7 were canceled by appellant. That amendment has been entered by the
1
The opinion in support of the decision being entered today was not written for publication and is not
binding precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte DONALD SPECTOR
_____________
Appeal No. 1998-2531
Application 08/574,279
______________
ON BRIEF
_______________
Before KIMLIN, HANLON, and DELMENDO, Administrative Patent Judges.
HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the final rejection of claims 1 and 3-5, all of the
claims pending in the application. The claims on appeal are directed to a candy-coated raisin1
Appeal No. 1998-2531
Application 08/574,279
examiner. See Answer, p. 2.
2
produced by a particular process which forms a thin and brittle coating on the raisin. Claim 1 is
illustrative and reads as follows:
1. A candy-coated raisin having "al dente" characteristics comprising a chewy, fat-free raisin
formed from a dried grape having a fleshy interior containing natural sugar, minerals and vitamins, and a
candy coating including sweetening agents formed on the exterior of the raisin and adhering thereto
which is substantially fat free, the coating being thin and brittle whereby when the coated raisin is
masticated, the coating is crunched into small particles which intermingle with the flesh of the raisin to
impart a crunchy sensation to the eating experience, said candy-coated raisin being produced by
depositing raisins to be coated and a heated liquid sweetening agent and dry ingredients which compose
the coating in a spinnable panning pot, and spinning the pot until the liquid cools and hardens to form a
thin, brittle and uniform solid candy coating on said raisin, said coating having a polishing agent applied
to its surface to impart a shine thereto.
The references relied upon by the examiner are:
Daum et al. (Daum) 3,554,767 Jan. 12, 1971
Brown et al. (Brown) 5,558,890 Sept. 24, 1996
(filed Oct. 27, 1994)
Bernard W. Minifie (Minifie), "Chocolate, Cocoa and Confectionery: Science and Technology Second
Edition", pp. 450-51 (Avi Publishing Company, Inc. 1980).
The following rejections are at issue in this appeal:
(1) Claims 1 and 3 are rejected under 35 U.S.C. § 103 as being unpatentable over Daum
in view of Minifie.
(2) Claims 4 and 5 are rejected under 35 U.S.C. § 103 as being unpatentable over Daum
in view of Minifie as applied to claims 1 and 3, and further in view of Brown.
Appeal No. 1998-2531
Application 08/574,279
3
Discussion
The claims on appeal are directed to a candy-coated raisin produced by a particular process
which forms a thin and brittle coating on the raisin. Specifically, the candy-coated raisin is produced by
the steps of (1) depositing raisins to be coated and the coating ingredients comprising a heated liquid
sweetening agent and dry ingredients into a spinnable panning pot and (2) spinning the pot until the
liquid cools and hardens to form a thin, brittle and uniform solid candy coating on the raisin.
Daum discloses a method for producing coated confectioneries including coated raisins. See
col. 1, lines 43-46. The method includes the steps of (1) pouring a liquid coating suspension directly
onto raisins tumbling in an angularly oriented rotating kettle, (2) rotating the kettle until the coated raisins
roll freely and (3) drying the coated raisins under continuous rotation, preferably with the aid of a warm
air stream or an infrared lamp. See col. 4, lines 13-22. According to Daum, an "essential advantage of
this invention consists in that all of the process steps can be conducted at ambient temperature" (col. 4,
lines 29-31).
Minifie also discloses processes for producing sugar coated confectioneries, particularly
sugared almonds. Like Daum, Minifie discloses that hot air may be used to dry the coating once it is
applied to the confectionery. See Answer, p. 4; Minifie, p. 450. Finally, Brown discloses a
multilayered puffed, ready-to-eat cereal.
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Application 08/574,279
The examiner further asserts that the coating of a candy-coated raisin produced by the Daum2
process would necessarily be thin. See Answer, p. 5 ("no definition is seen as to what 'thin' is"); see
also Daum, col. 4, lines 31-34. Based on the record before us, we agree with the examiner that a
coating produced by the Daum process would be "thin."
4
At the outset, we note that the claims on appeal are in product-by-process format.
Accordingly, a determination of patentability is based on the product itself. As the Court in
In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966 (Fed. Cir. 1985), explains:
If the product in a product-by-process claim is the same as or obvious from a product
of the prior art, the claim is unpatentable even though the prior art product was made
by a different process.
Thus, the sole issue in this appeal is whether the examiner has established that the claimed candy-
coated raisins are the same as or obvious from candy-coated raisins produced by the Daum process.
See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (the examiner bears
the initial burden of presenting a prima facie case of patentability).
The process disclosed in Daum and the process of the claimed invention are different. The
examiner recognizes as much. See Answer, p. 4 ("Claim 1 differs from the reference [(Daum)] in the
use of a heated liquid."). Nevertheless, the examiner maintains that the coating of a candy-coated raisin
produced by the Daum process would necessarily be brittle due to the cooling step and the sugar
concentration. See Answer, pp. 4-5. However, there is simply nothing in the record to support the2
examiner's conclusion. Although Daum does disclose several properties of the coating produced by the
disclosed process, Daum is nevertheless silent as to whether the coating produced thereby would be
Appeal No. 1998-2531
Application 08/574,279
5
brittle. See col. 4, lines 49-55. Therefore, based on the record before us, it is just as likely that the
coating produced by the Daum process would be chewy.
According to appellant, the use of a heated liquid and its subsequent cooling is the key to
producing a brittle candy coating as claimed (Brief, p. 3):
It is important to note that coating raisins with liquid candy will normally not
produce a thin and brittle coating unless the coating is carried out in the manner set forth
in claim 1 in which raisins and a heated liquid candy are deposited in a spinning pot, the
liquid cooling and hardening as the pot spins to produce the thin and brittle candy
coating.
The nature of the spinning action is such as to create a centrifugal force resulting
in a very thin coating. And the concurrent cooling and hardening of the heated liquid
candy produces a thin coating that is brittle.
Apparently, in an attempt to establish that the claimed candy-coated raisin would have been
obvious in view of the teachings in Daum, the examiner maintains that "it would have been obvious to
heat or not in the process of Daum et al to achieve a mixture of the ingredients." See Answer, p. 4. As
pointed out above, Daum discloses that an "essential advantage of this invention consists in that all of
the process steps can be conducted at ambient temperature" (col. 4, lines 29-31). Therefore,
regardless of whether or not it would have been obvious to heat the coating ingredients initially to obtain
a uniform mixture, absent appellant's disclosure, there would have been no reason to deposit the heated
mixture onto the raisins in the Daum process. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984) ("The mere fact
Appeal No. 1998-2531
Application 08/574,279
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that the prior art could be so modified would not have made the modification obvious unless the prior
art suggested the desirability of the modification.").
The examiner has failed to establish that the claimed candy-coated raisin is the same as or
obvious from candy-coated raisins produced by the Daum process. The teachings of Minifie and
Brown further fail to cure the deficiencies of Daum. Therefore, based on the record before us, we are
constrained to reverse the decision of the examiner.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )
Appeal No. 1998-2531
Application 08/574,279
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KEITH D. NOWAK
LIEBERMAN & NOWAK, LLP
350 FIFTH AVE.
NEW YORK, NY 10118
ALH/dal
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Application 08/574,279
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