Ex Parte Swart et alDownload PDFPatent Trial and Appeal BoardDec 20, 201612812634 (P.T.A.B. Dec. 20, 2016) Copy Citation 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. 12/812,634 09/08/2010 Jan Philippus Jakobus Swart VONS-OOOl 9558 23550 7590 12/22/2016 HOFFMAN WARNTOK T T C EXAMINER 540 Broadway 4th Floor YOO, HONG THI ALBANY, NY 12207 ART UNIT PAPER NUMBER 1793 NOTIFICATION DATE DELIVERY MODE 12/22/2016 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): PTOCommunications@hoffmanwarnick.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAN PHILIPPUS KAKOBUS SWART, TIEMEN RYPSTRA, and CHARL WYNAND THERON Appeal 2015-005102 Application 12/812,634 Technology Center 1700 Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL and MONTE T. SQUIRE, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2015-005102 Application 12/812,634 Appellants appeal under 35 U.S.C. § 134 the final rejection of claims 1—4, 6, and 16—18. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). We AFFIRM. Appellants’ invention is directed to methods of producing wood infused liquid consumables (Spec. 1:7—11). Claim 1 is illustrative: 1. A method of producing a wood infused liquid consumable, the method comprising: contacting a liquid consumable in a container with one or more wooden components so that a uniform wood infusion process occurs, wherein the one or more wooden components have been cut so that: (i) wood cells of the one or more wooden components have a uniform orientation; and (ii) ray parenchyma tissue, which is permeable, extends longitudinally across a thickness of the wooden components, wherein the permeable ray parenchyma tissue extending longitudinally across the thickness of the wooden components provides the liquid consumable with enhanced access to extractive wood storing tissues during the infusion process relative to wooden components cut using other techniques; wherein the uniform cell orientation of the wooden components results in uniformity of infusion during contact with the liquid consumable and uniformity of different wooden components, thus enabling consistency and reproducibility of results from batch to batch; and wherein the one or more wooden components are severed parts of an intermediate wooden sheet cut from a log of wood by rotary peeling the intermediate wooden sheet tangentially from an outer surface of the log of wood in veneer fashion such that the intermediate wooden sheet has a thickness corresponding generally to a radial direction ("R") with respect to the log of wood from which the intermediate wooden sheet 2 Appeal 2015-005102 Application 12/812,634 was cut and each wooden component substantially excludes juvenile wood associated with a central core of the log of wood. Appellants appeal the following rejections:1 1. Claim 16 is rejected under 35U.S.C. § 112,11, as failing to comply with the written description requirement. 2. Claims 1—4, 6, and 16—18 are rejected under 35 U.S.C. § 103(a) as unpatentable over Spoljaric (US 2006/0191419 Al, published Aug. 31, 2006) in view of Amsterdam(Erol van Amsterdam “Construction Materials or Civil Engineering, Juta & Co. Ltd., 212—213 (2000), Herzfeld (US 3,942,423, issued Mar. 9, 1976), Applicants’ Admitted Prior Art (AAPA) as evidenced by Ek (Monica Ek et al., Pulp and Paper Chemistry and Technology Wood Chemistry and Wood Biotechnology, 55—56 (2009)). Regarding rejection (2), Appellants argue the subject matter of claim 1 only (App. Br. 4—6). Claims 2-4, 6, and 16—18 will stand or fall with our analysis of the rejection of the sole independent claim 1. FINDINGS OF FACT & ANALYSIS REJECTION (1): § 112,11 Claim 16 depends from claim 1 and recites “wherein contacting the liquid consumable with the one or more wooden components comprises introducing the liquid consumable into the container and maintaining the 1 The Examiner withdrew the 35 U.S.C. §112,12 rejection and the 35 U.S.C. § 112,11 (enablement) rejection of claims 1—4, 6, and 16—18 (Ans. 2). 3 Appeal 2015-005102 Application 12/812,634 liquid consumable in the container with the wooden components for a pre determined residence time of at least 10 days.” Appellants argue that page 12 of the Specification describes that the liquid consumable exhibits wood character over 10 days of organoleptically testing the liquid consumable (App. Br. 3). Appellants contend that any additional residence time of the liquid consumable in the container would increase the infusion of wood character. Id. Appellants contend that one of ordinary skill would have understood that increased infusion of the wood character would continue for residence times longer than 10 days. Id. The Examiner finds that Appellants’ disclosure on page 12, lines 24— 25 that “the wines were organoleptically evaluated (by tasting) regularly over a period of 10 days” fails to provide written descriptive support for the entire range of “at least 10 days” (Ans. 3, 11—12). In other words, the Examiner finds that Appellants have not shown written descriptive support or possession of the entire range recited in claim 16. Appellants do not respond to the Examiner’s finding that the Specification disclosure of tasting over a 10 day period fails to provide written descriptive support for the open-ended range of “at least 10 days” (Reply Br. generally). Appellants have not shown that they were in possession of the open-ended range of “at least 10 days.” We affirm the Examiner’s § 112,11, rejection of claim 16 as lacking written descriptive support. REJECTION (2): § 103 The Examiner’s findings and conclusions regarding claim 1 are located on pages 5 to 9 of the Answer. The Examiner finds, in relevant part, 4 Appeal 2015-005102 Application 12/812,634 that Spoljaric as modified by Amsterdam, AAPA and Ek teaches the subject matter of claim 1, except for the exclusion of juvenile wood associated with the central core of the log wood (Ans. 5—8). The Examiner finds that Herzfeld teaches using heartwood of white oak for aging wine (Ans. 8). The Examiner finds that Herzfeld teaches that heartwood provides a proper diffusion rate in the process of aging wine (Ans. 8). The Examiner finds that Herzfeld teaches that wood that is too porous is not desired because a proper evaporation rate cannot be achieved. Id. The Examiner finds that juvenile wood is well known as a porous soft wood region of a wood log. Id. The Examiner concludes that it would have been prima facie obvious to use heartwood as taught by Herzfeld in Spoljaric’s method because Herzfeld teaches that heartwood has the desired diffusion rate in a wine aging process (Ans. 8). Appellants argue that the proposed combination of Herzfeld and Spoljaric fails to teach excluding juvenile wood associated with the central core of the log wood (App. Br. 5). Appellants contend that their Specification discloses that the invention uses heartwood but excludes sapwood associated with the outer region of the log of wood and the juvenile wood associated with the central core of the log of wood. Id. Appellants argue that there is no basis for the Examiner’s conclusion that Herzfeld is considered to exclude juvenile wood (App. Br. 5). Appellants do not contest the Examiner’s finding that juvenile wood is well known to be a porous soft wood region of a wood log (Ans. 8; Reply Br. 2-4). We accept the Examiner’s reasonable and uncontested finding as fact. In re Kunzmann, 326 F.2d 424, 425 n.3 (CCPA 1964) (Any finding not specifically shown to be erroneous may be taken as fact.). 5 Appeal 2015-005102 Application 12/812,634 Herzfeld teaches to use heartwood that produces tyloses in the heartwood when the sap wood is converted to heartwood (Herzfeld col. 2, lines 16—19). Herzfeld discloses that “any other type of wood is too porous and proper evaporation or diffusion rate cannot be obtained” {Id. col. 2,11. 19—21). In other words, Herzfeld recognizes that a particular portion of the heartwood (i.e., the portion formed by converting the sap wood into heartwood) is acceptable for use. Herzfeld’s teachings in combination with the Examiner’s uncontested finding that juvenile wood is porous soft wood suggests that use of porous softwood (e.g., juvenile wood) is not desired and is to be avoided. In other words, Herzfeld teaches that it is desirable to use only a particular portion of the trunk wood that is where the sapwood (i.e., the outer portion of the log) meets the heartwood and is being turned into heartwood. In our view, the preponderance of the evidence favors the Examiner’s finding that Herzfeld teaches to avoid porous, soft juvenile wood. Appellants make additional arguments that are presented for the first time in the Reply Brief. For example, Appellants argue that Spoljaric fails to teach cutting the wood in the same manner as claimed by Appellants (Reply Br. 3). Appellants argue that no motivation to combine Amsterdam’s cutting technique with Spolajaric’s method. Id. Appellants argue unexpected advantages from using their particularly cut wood sheets (Reply Br. 4). None these arguments were made in the principal brief and the Examiner’s Answer did not invite such additional argument. There is no reason why these new arguments were not made in the principal brief. We shall not consider these untimely arguments. 37 CFR §41.41(b)(2). On this record, we affirm the Examiner’s § 103 rejection. 6 Appeal 2015-005102 Application 12/812,634 DECISION The Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). ORDER AFFIRMED 7 Copy with citationCopy as parenthetical citation