Ex parte Spencer

Board of Patent Appeals and Interferences

Sep 11, 2000

08169542 (B.P.A.I. Sep. 11, 2000)

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today was not written for publication and is not
binding precedent of the Board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. 44
UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________
Ex parte KEVIN C. SPENCER
______________
Appeal No. 1997-0151
Application 08/169,542
_______________
HEARD: AUGUST 15, 2000
_______________
Before GARRIS, OWENS and LIEBERMAN, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of
claims 25, 32 and 40, and refusal to allow claims 23, 31, 33
and 36-39 as amended after final rejection. These are all of
the claims remaining in the application.
THE INVENTION
Appellant’s claimed invention is directed toward a method
for increasing the rate of a browning reaction during the
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heating of baked goods. Claim 40 is illustrative and reads as
follows:
40. A method of increasing a rate of a browning reaction
in food during heating thereof to produce a baked good, which
comprises heating said food under an atmosphere consisting
essentially of argon, neon, krypton or xenon or a mixture
thereof at a pressure of up to about 3 atm.
THE REFERENCES
Segall 3,677,024 Jul. 18,
1972
Strobel et al. (Strobel) 4,971,813 Nov. 20,
1990
McKenna et al. (McKenna) 5,021,251 Jun. 4,
1991
THE REJECTIONS
Claims 23, 25, 31-33 and 36-40 stand rejected under
35 U.S.C. § 103 over appellant’s admitted prior art taken
together with Segall, and also over McKenna taken together
with Strobel, appellant’s admitted prior art and Segall.
Claim 36 stands rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly
point out and distinctly claim the subject matter which
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appellant regards as the invention.
OPINION
The rejection of claim 36 under 35 U.S.C. § 112, second
paragraph, is based upon the claim being indefinite due to its
dependence from a canceled claim, i.e., claim 35 (answer,
page 4). We summarily affirm this rejection because it is not
contested by appellant.
Regarding the rejections under 35 U.S.C. § 103, we have
carefully considered all of the arguments advanced by
appellant and the examiner and agree with appellant that these
rejections are not well founded. Accordingly, we reverse the
rejections under 35 U.S.C. § 103. We need to address only
appellant’s sole independent claim, which is claim 40.
Rejection under 35 U.S.C. § 103 over
appellant’s admitted prior art taken with Segall
The examiner argues that appellant acknowledges on pages
1 and 2 of the specification that it was known in the art to
use inert gases to control pressure in the process of heating
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milk (answer, page 4). Such a use of inert gas, the examiner
argues, indirectly controls browning reactions. See id. The
examiner, however, provides no evidence that the term “baked
good” in appellant’s sole independent claim encompasses milk.
Also, the examiner has not established that any control of a
browning reaction of milk caused by the inert gas would
increase the rate of the browning reaction as required by
appellant’s independent claim.
Segall discloses a method for preserving foodstuffs such
as fruits, vegetables, meats, fish and the like by placing
them in a chamber which is pressurized with an inert gas which
can be a noble gas such as neon or argon, and cooling the
chamber to about -20EC (col. 1, lines 59-65; col. 2, lines 14-
50).
The examiner argues that Segall treats foods with noble
gases to control color changes in the foods and that,
therefore, it would have been obvious to one of ordinary skill
in the art to manipulate the parameters of the process,
including pressure, by changing the gas pressure to cause an
increase in browning (answer, pages 4-5). The preservation of
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foodstuffs by the Segall process, however, appears to decrease
the rate of a browning reaction rather than increase it as
required by appellant’s claims. Furthermore, the examiner has
not explained why one of ordinary skill in the art would have
been led by the prior art to apply Segall’s preservation
method during the heating of baked goods.
For the above reasons, we conclude that the examiner has
not carried the burden of establishing a prima facie case of
obviousness of the claimed invention over appellant’s admitted
prior art in view of Segall.
Rejection under 35 U.S.C. § 103 over McKenna taken with
Strobel, appellant’s admitted prior art and Segall
McKenna discloses a method for preserving lemon juice in
the absence of a sulfiting agent by adding to the lemon juice
1) sodium benzoate, 2) one or more of ascorbic acid, sodium
acid pyrophosphate, glucose oxidase and sodium
hexametaphosphate, and 3) an inert gas (col. 1, lines 42-52;
claim 1). This treatment, McKenna teaches, inhibits browning
of the lemon juice (col. 1, lines 51-52).
Strobel discloses mashing apples and removing the juice
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in a process wherein oxygen is excluded by blanketing the
apparatus with a non-reactive, non-oxidative gas which can be
argon, so as to avoid or reduce oxidation and/or browning
reactions in the mash (col. 5, lines 52-64).
The examiner argues that although neither McKenna nor
Strobel discloses controlling the browning of baked goods, it
is well known to employ browning techniques in baked goods
(answer, page 7). In support of this argument the examiner
relies upon appellant’s acknowledgment (specification, page 1)
that the Maillard reaction is involved in the nonenzymatic
browning of foods during cooking (answer, page 7). The
examiner points out that the applied prior art does not
disclose increasing the rate of the browning reaction, but
argues that it was well known to promote browning reactions
(answer, page 8).
The examiner, however, does not explain why the applied
prior art itself would have led one of ordinary skill in the
art to heat baked goods in an atmosphere which consists
essentially of the noble gases recited in appellant’s claim
40. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143,
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147 (CCPA 1976). All of the references relied upon by the
examiner concern reducing the rate of a browning reaction
rather than increasing it as required by claim 40, and none of
the references pertain to baked goods. To arrive at
appellant’s claimed invention the examiner has used
impermissible hindsight in view of appellant’s disclosure of
the invention in his specification. See W.L. Gore & Assocs.
v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984); In re
Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331 (CCPA 1960).
Accordingly, we conclude that the examiner has not carried the
burden of establishing a prima facie case of obviousness of
appellant’s claimed invention over McKenna taken together with
Strobel, appellant’s admitted prior art, and Segall.
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DECISION
The rejection of claim 36 under 35 U.S.C. § 112, second
paragraph, is affirmed. The rejections of claims 23, 25, 31-
33 and 36-40 under 35 U.S.C. § 103 over appellant’s admitted
prior art taken together with Segall, and over McKenna taken
together with Strobel, appellant’s admitted prior art and
Segall, are reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Terry J. Owens ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Appeal No. 1997-0151
Application 08/169,542
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Paul Lieberman )
Administrative Patent Judge )

TJO/cam
Appeal No. 1997-0151
Application 08/169,542
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