Ex Parte Stenvik

Patent Trials and Appeals Board

May 30, 2019

14575686 - (D) (P.T.A.B. May. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/575,686 12/18/2014
106306 7590 06/03/2019
DIEDERIKS &WHITELAW, PLC
13885 Hedgewood Dr., Suite 317
Woodbridge, VA 22193-7932
FIRST NAMED INVENTOR
Ralph A. Stenvik
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.
8039US02 7717
EXAMINER
COX,AMBERM
ART UNIT PAPER NUMBER
1793
NOTIFICATION DATE DELIVERY MODE
06/03/2019 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):
mail@dwpatentlaw.com
gmi.mail@dwpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RALPH A. STENVIK
Appeal2018-002260
Application 14/575,686
Technology Center 1700
Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
This is in response to a Request, filed April 3, 2019, for
reconsideration of our Decision, mailed February 4, 2019, wherein, inter
alia, we sustained the Examiner's rejections (I), (II), and (IV).
With respect to rejection (I), Appellant argues that the Board's
construction did not properly consider the Specification's disclosure that the
terms "embedded" and "embedding," as recited in claims 1 and 31,
respectively, "involve the secondary filling being pushed into the primary
filling ... such that the primary filling changes shape to surround and fix the
secondary filling firmly in the primary filling" (Reh'g Req. 5; see also Spec.
,r 21 ). Though Appellant concedes that Murray's co-extrusion requires
Appeal2018-002260
Application 14/575,686
pushing or force, Appellant argues that the claimed methods require
"directional and force extrusion differences between the two fillings ... to
meet the 'embedding' and 'push into' limitations of' the disputed claims,
whereas Murray's co-extrusion "forces are in parallel directions to obtain"
one cheese product laterally adjacent to a fruit filling (Reh'g Req. 5, 6; see
Murray Fig. 2K).
Appellant argues that the Board "seemingly overlooked" the
Specification in affirming the Examiner's construction of the disputed claim
terms as encompassing a secondary filling merely existing within the
primary filling (Reh'g Req. 4; see also Reply Br. 3). Appellant further
argues that the Board's construction of the terms "embedded" and
"embedding" is not the broadest reasonable interpretation because the
Federal Circuit, in In re Smith International, Inc., 871 F.3d 1375 (Fed. Cir.
201 7), has held that such an interpretation must be consistent with the
Specification (Reh'g Req. 3-5; see also Reply Br. 3).
Contrary to Appellant's arguments, the present application is
distinguishable from Smith on its facts. In Smith, the Federal Circuit held
that the claim term "body" could not be understood to include other
components in the prior art because the specification consistently described
and depicted the body as a component distinct from other separately
identified components. Smith, 871 F.3d at 1382-83.
In contrast, Appellant relies on the written description of a single
embodiment of a method to support the position that the claim terms
"embedded" and "embedding" each require that the secondary filling is
pushed into the primary filling such that the latter changes shape (see Spec.
,r 21; compare with id. ,r,r 1, 4, 5, 15, 20). The Federal Circuit, however,
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Application 14/575,686
"has expressly rejected the contention that if a patent describes only a single
embodiment, the claims of the patent must be construed as being limited to
that embodiment." Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 906
(Fed. Cir. 2004).
Moreover, the present application is further distinguished from Smith
because there is no depiction of Appellant's proffered claim construction.
Contrary to Appellant's arguments (Reply Br. 3), Figure 5 of the
Specification does not show any pushing of the secondary filling into the
primary filling. Rather, Figure 5 shows "secondary filling 34 ... embedded
in primary filling 32, yet externally exposed and visible" (Spec. ,r 21)
( emphasis added). This depiction of one filling embedded in the other
shows that "primary filling 32 has a depth established between a top surface
160 and a bottom surface 162," and that "secondary filling 34 is
substantially flush with top surface 160 and extends to a point between top
surface 160 and bottom surface 162, such as one-half or more of the depth of
primary filling 32" (id.; see id. at Fig. 5; compare with Murray Fig. 2K
(showing a secondary fruit filling similarly embedded in a primary
cheesecake filling)).
Consequently, the disputed claim terms are sufficiently broad that
each can be read to encompass features not described in the single
embodiment described in the Specification. See Liebel-Flarsheim, 358 F.3d
at 906. Namely, the claim terms "embedded" and "embedding" can be read
to encompass instances in which the secondary filling exists, is fixed, or
secured deep within the primary filling. Therefore, we decline Appellant's
invitation to read limitations from the Specification into either claims 1 or
31. In re Zletz, 893 F.2d 319,321 (Fed. Cir. 1989).
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Appeal2018-002260
Application 14/575,686
In light of Appellant's arguments presented in this Rehearing Request,
we reconsider the meaning of the phrase "pushed into" in claim 1 and
"pushing the secondary filling into the primary filling" in claim 3 1. As
explained in our Decision, the Examiner finds that Murray's co-extrusion
necessarily teaches pushing the secondary filling into the primary filling
because Murray teaches a co-extrusion process with the requisite pressure
and force (Dec. 6 ( citing Ans. 21 )). The Examiner finds that one of ordinary
skill in the art would have expected the secondary or inner filling to be
pushed into the primary or outer filling through the process of co-extrusion
(Dec. 5 (citing Ans. 5, 7)). In our Decision, we relied upon the Examiner's
analysis that, based upon both Rapaport's Figure 2B and Murray's Figure
2K displaying bars wherein the secondary filling fits securely within the
primary filling, one of ordinary skill would have concluded that the
secondary filling was pushed into the primary filling (Dec. 5). We found
that Appellant did not direct us to any evidence that Murray's co-extruded
fillings are merely placed alongside each other without any pressure from
the secondary filling onto the primary filling (id. at 6).
Though Appellant concludes that Murray's co-extrusion "forces are in
parallel directions to obtain" one cheese product laterally adjacent to a fruit
filling (Reh'g Req. 5), we are not persuaded as Appellant has not presented
evidence of that other than attorney argument. Moreover, Appellant's
arguments are premised on conjecture-Murray does not disclose the shape
or configuration of the extruder die used to make the bar shaped product (see
Murray ,r,r 32, 33, Fig. 2K). Accordingly, we adhere to our determination
that: (i) the Examiner's interpretation based upon the plain meaning of
"embedded" as existing, fixed, or secured deep or within something is
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Appeal2018-002260
Application 14/575,686
reasonable (Dec. 7) and (ii) the terms "embedded" and "embedding"
encompass Murray's disclosed fixing and securing of a secondary fruit
filling deeply within an outer cream cheese filling (id. at 8-9). 1
With respect to rejections (II) and (IV), Appellant argues that the
Board has overlooked that Appellant addressed the Examiner's proposed
combination of teachings. Specifically, Appellant argues that the combined
teachings were addressed in the arguments for claims 6 and 26 because
Appellant asserted in the Appeal Brief that "'in the combination, it would
appear the extruders for both the primary and secondary filling would need
to oscillate in order to meet the claim limitations without destroying the
product of Rapaport"' (Reh' g Req. 6; see also Appeal Br. 19-21 ). With
respect to claim 34, Appellant argues that the Board has similarly
overlooked that Appellant "did indeed address ... the combination of
teachings" (emphasis added) (Reh'g Req. 7; see also Appeal Br. 21).
Appellant's arguments, however, ignore and thus do not adequately
rebut the Examiner's findings that Thomas teaches oscillating an extrusion
nozzle during the extrusion of fillings to produce a non-linear repeating
pattern (see Appeal Br. 19-21 ). An appellant has the burden on appeal to
the Board to demonstrate error in the Examiner's position. See Ex parte
1 Appellant asserts that the Examiner's interpretation of the claims as
encompassing a secondary filling merely existing within the primary filling
is not consistent with the Specification (Reh' g Req. 5, 6). Because we are
not persuaded by Appellant's assertion, Appellant requests that "the Final
Decision explicitly reiterate that this definition ... is considered to be
consistent with the written description, and that no different directions or
forces of extrusion need exist to meet the claim limitations" (id. at 6). For
the reasons set forth above, however, we decline Appellant's invitation to
read limitations from the Specification into either claims 1 or 31. Zletz, 893
F.2d at 321.
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Application 14/575,686
Yamaguchi, 88 USPQ2d 1606, 1614 (BPAI 2008) (on appeal, applicant must
show examiner erred). Moreover, the Federal Circuit has held that the
Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Thus, in
this instance, Appellant has not met his burden of identifying error in the
rejections of claims 6, 26, and 34 on appeal, as they have not identified
reversible error in the Examiner's reasons for combining the specific
teachings of Thomas with the teachings of Rapaport and Murray (see Ans.
12-13, 16-17). Rather, Appellant has attacked Rapaport individually by
merely stating that "there is no reason to oscillate extruders in making the
product of Rapaport" and "no mention is made of a non-linear pattern for the
groove or the primary filling in Rapaport" (see Appeal Br. 20, 21 ). 2
For these reasons, we adhere to our decision. Appellant's request for
rehearing is granted to the extent that we have considered the arguments, but
the request is denied to the extent that the decision will not be modified.
DENIED
2 To the extent Appellant argues that, in the Examiner's combination of
Rapaport, Murray, and Thomas, "it would appear that extruders for both the
primary and secondary fillings would need to oscillate in order to meet the
claim limitations without destroying the product of Rapaport" (id. at 20),
Appellant has not provided substantive argument establishing why both
extruders would need to oscillate to meet the claim limitations or how
Rapaport's product would be destroyed without such dual-extruder
oscillation.
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